WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wenger S.A. v. Нелепов Владислав Юрьевич / Nelepov Vladislav

Case No. DUA2020-0013

1. The Parties

The Complainant is Wenger S.A., Switzerland, represented by Isler & Pedrazzini AG, Switzerland.

The Respondent is Нелепов Владислав Юрьевич / Nelepov Vladislav, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <swissgear.com.ua> (the “Disputed Domain Name”) is registered with Hosting Ukraine LLC (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2020. On April 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 29, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 7, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 7, 2020.

On May 7, 2020, the Center transmitted an email communication in English and Russian regarding the language of the proceeding to the Parties indicating that the registration agreement for the Disputed Domain Name is Russian, and invited the Parties to submit their preference as to the language of the proceeding. On May 7, 2020, the Complainant submitted its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. However, on May 15, 2020, the Respondent sent various email communications to the Center, expressing a willingness to transfer the Disputed Domain Name to the Complainant.

The Center verified that the Complaint and the amended Complaint satisfied the formal requirements of the .UA Domain Name Dispute Resolution Policy (the “.UA Policy”) the Rules for .UA Domain Name Dispute Resolution Policy (the “.UA Rules”), and the WIPO Supplemental Rules for .UA Domain Name Dispute Resolution Policy (the “WIPO Supplemental Rules”).
In accordance with the .UA Rules, paragraph 4(c), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 26, 2020. In accordance with the .UA Rules, paragraph 5(a), the due date for Response was June 15, 2020. The Respondent did not submit a formal response. Accordingly, on June 16, 2020, the Center informed the Parties that it would proceed to appoint a panel.

The Center appointed Mariya Koval as the sole panelist in this matter on June 25, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the .UA Rules, paragraph 7.

4. Factual Background

The Complainant is a Swiss manufacturer of watches as well as travel and business gear. The Complainant is a part of the Victorinox Group, which distributes and provides Swiss army knives, watches, and travel gear on a global scale.

The Complainant owns numerous SWISSGEAR trademark registrations around the world (the “SWISSGEAR Trademark”), including Ukraine, among which are:

- International Registration No. 978731, registered on August 20, 2008, in respect of goods in classes 9, 12, 14, 16, 18, 20, 22, 25;

- International Registration No. 1241212, registered on October 29, 2014, in respect of goods in classes 14, 18, 21;

- International Registration No. 1321437, registered on August 9, 2016, in respect of goods in class 18;

- Swiss Registration No. P-479380, registered on December 7, 2000, in respect of goods in class 18;

- Swiss Registration No. 680267, registered on November 9, 2015, in respect of services in classes 41, 44, 45;

- Canadian Registration No. TMA943717, registered on July 19, 2016, in respect of goods in class 9 and 18.

The Complainant operates a domain name, incorporating the SWISSGEAR Trademark, for sale and promotion of its goods - <swissgear.com> (registered on October 20, 1999).

The Disputed Domain Name was registered on July 14, 2019. At the date of this Decision, the website under the Disputed Domain Name is inactive. However, according to the evidence presented by the Complainant (Annex 5 to the Complaint) the Disputed Domain Name previously resolved to a website in Russian offering various alleged one-to-one counterfeits of the Complainant's products for sale.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Disputed Domain Name is identical to its SWISSGEAR Trademark and highly similar to others in which the Complainant has rights.

The Complainant asserts that due to the extensive use and registration of the SWISSGEAR and/or WENGER EMBLEM Trademarks around the world, there is no doubt that the aforementioned trademarks would be considered well known and/or famous.

The Complainant further contends that the Respondent does not have any rights or legitimate interests in respect of the Disputed Domain Name. Particularly, the Respondent has never received an authorization to use the Complainant’s trademark or to register domain names containing the SWISSGEAR Trademark in any form.

Moreover, the Respondent used the Disputed Domain Name to direct to a website on which it illegally offered various one-to-one counterfeits of the Complainant's products for sale, and, with the entire appearance of the website, suggested to be a licensed distributor of such products or the right holder itself, which was obviously not the case.

The Complainant further alleges that the Respondent has registered and is using the Disputed Domain Name in bad faith. It is obvious that the Respondent operated the website under the Disputed Domain Name for the sole purpose to illegally exploit the reputation of the Complainant by illegally marketing counterfeits of its products and that the Disputed Domain Name was registered without any legitimate interest and in bad faith. On the website under the Disputed Domain Name various one-to-one counterfeits of the Complainant's products were illegally offered for sale, and, with the entire appearance of the website, it was suggested that the operator was an authorized distributor of such products or the right holder itself, which is obviously not the case.

B. Respondent

The Respondent sent several informal email communications to the Center, where he indicated that he tried to delete the Disputed Domain Name and that he was ready to give the Disputed Domain Name to the Complainant, but he could not do it because the Complainant started the administrative proceeding and the Disputed Domain Name was under Registrar lock. The Complainant offered a settlement agreement to the Respondent, to which the Respondent did not reply.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, for the Complainant to succeed it must satisfy the Panel that:

(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name was registered and is being used in bad faith.

Taking into consideration the many similarities between the .UA Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and, where appropriate, will decide consistent with the consensus views captured therein.

6.1. Preliminary Issue: Language of Proceedings

The Complaint was submitted in English. The Registrar confirmed that the language of the Registration Agreement for the Disputed Domain Name is Russian.

In accordance with paragraph 11(a) of the .UA Rules unless otherwise agreed by the Parties, the language of the administrative proceeding shall be the language of the Registration Agreement (which shall be in English, Russian or Ukrainian), subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

The Complainant has filed the Complaint in English and requests that English to be the language of this proceeding due to the following reasons:

- the Disputed Domain Name refers to the English word “swissgear”. The original SWISSGEAR products are being sold in many English speaking countries, including the United States of America. Moreover, the Complainant’s original website is in English;

- the Complainant is not familiar with Russian as it is domiciled in Delémont, a French speaking region of Switzerland;

- in view of the Respondent using the Google’s email service and a privacy protection service which operates on an international scale, the Respondent has no significant problems to understand English as an international language.

The Disputed Domain Name is in Latin script. Having received the Center’s communication regarding the language of the proceeding, both in English and Russian, the Respondent did not comment on the language of the proceeding. In addition, all communications received by the Center from the Respondent were in English.

Paragraph 10(c) of the .UA Rules sets out that the Panel shall ensure that the administrative proceeding takes place with due expedition.

The Panel considered all circumstances of this case, namely, the failure of the Respondent’s objection to English as the language of the proceedings; the Respondent’s decision not to respond to the Complaint, although being notified both in English and Russian; the Respondent’s informal email communications in English; and, the Respondent’s choice of English words- for the Disputed Domain Name. In light of the above, the Panel concludes in accordance with paragraph 11(a) of the .UA Rules that English shall be the language of this proceeding. Translation of the Complaint and other materials would cause unnecessary delay of this proceeding.

6.2. Substantive Issues

A. Identical or Confusingly Similar

In accordance with paragraph 4(a)(i) of the .UA Policy it should be established that the disputed domain name is identical or confusingly similar to a mark in which the complainant has rights.

The Complainant has properly asserted its rights in the SWISSGEAR Trademark due to the long use and number of registrations globally, including in Ukraine.

The Disputed Domain Name incorporates the SWISSGEAR Trademark in its entirety, combined with the country code Top-Level Domain (“ccTLD”) “.com.ua”. In accordance with prior decisions under the .UA Policy, the applicable ccTLD in a domain name is viewed as a standard registration requirement and as such is generally disregarded under the first element confusing similarity test. See AB Electrolux v. Захаров Евгений, WIPO Case No. DUA2020-0006. The Panel considers it is appropriate to apply the same rules in this proceeding regarding ccTLD “.com.ua”. Therefore, the addition of the ccTLD “com.ua” to the Disputed Domain Name in this case does not prevent a finding of identity or confusing similarity between the Complainant’s Trademark and the Disputed Domain Name.

Accordingly, the Panel holds that the Disputed Domain Name, disregarding the ccTLD “.com.ua”, is identical to the Complainant’s SWISSGEAR Trademark in which the Complainant has rights.

Therefore, the Panel finds that the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

In accordance with paragraph 4(a)(ii) of the .UA Policy the complainant has to establish that the respondent has no rights or legitimate interests in the disputed domain name.

According to prior decisions under the .UA Policy, while the overall burden of proof in .UA proceedings is on the Complainant, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. If such prima facie case is made, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name. If the Respondent fails to come forward with such relevant evidence, the Complainant is generally deemed to have satisfied the second element. See, e.g., Google LLC v. Aлександр Дмитрович Бутенко, WIPO Case No. DUA2020-0009

Noting the facts and arguments set out above, the Panel finds that the Complainant has made a prima facie case. The Respondent registered the Disputed Domain Name more than 18 years after the SWISSGEAR Trademark had been registered. Moreover, there is no evidence that the Respondent owns any SWISSGEAR trademarks, nor is the Respondent commonly known by the Disputed Domain Name. The Complainant also contends that the Respondent has never received an authorization to use the Complainant’s trademarks or to register domain names containing the SWISSGEAR Trademark in any form. The Respondent has failed to come forward with any evidence to rebut such prima facie case.

Furthermore, the Panel concludes that in view of the global fame of the SWISSGEAR Trademark it is highly unlikely that anybody could legitimately adopt the Disputed Domain Name for commercial use other than for an intent to create confusion with the Complainant.

Moreover, the Disputed Domain Name completely incorporates the Complainant’s world-known Trademark with no additional elements. According to prior decisions under the .UA Policy, domain names identical to a complainant’s trademark carry a high risk of implied affiliation. See, e.g., AB Electrolux v. Захаров Евгений, WIPO Case No. DUA2020-0006.

Also, taking into consideration the reputation of the Complainant’s Trademark and that the Disputed Domain Name previously resolved to a website in Russian offering various alleged counterfeits of the Complainant's products for sale, it is obvious that the Respondent was well aware of the Complainant's brand and business at the time of registration of the Disputed Domain Name. Moreover, under these circumstances, the Panel finds that the Respondent is not involved in a bona fide offering of goods or services or a legitimate noncommercial or fair use.

In light of the above, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Therefore, the second element in paragraph 4(a) of the .UA Policy has been satisfied by the Complainant.

C. Registered or Used in Bad Faith

Paragraph 4(b) of the .UA Policy sets out a non-exhaustive list of circumstances that indicate bad faith conduct on the part of the respondent, namely:

(i) circumstances indicating that the respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

The Panel finds that the Complainant’s first registration for the SWISSGEAR Trademark predates the registration of the Disputed Domain Name by almost 19 years. The SWISSGEAR Trademark has been in commercial use from its first registration until now. Past .UA panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith (see Google LLC v. Aлександр Дмитрович Бутенко, WIPO Case DUA2020-0009). In this case the Disputed Domain Name is identical to the Complainant’s well-known SWISSGEAR Trademark and was likely registered with the primary intention to disrupt the Complainant’s business or confuse consumers. The Disputed Domain Name, identically reproducing the Complainant’s Trademark, is obviously deceptive for the consumers: entering the website under the Disputed Domain Name the Internet users will most likely believe that they are entering a website related to the Complaint’s business in Ukraine.

In the Panel’s view, the fact that the Respondent knew about the Complainant’s Trademark at the time of the registration of the Disputed Domain Name is undisputable in view of that the Disputed Domain Name completely reproducing the Complainant’s Trademark. Furthermore, the Respondent was using the Disputed Domain Name for a website, which contained the Complainant’s Trademark and various alleged counterfeits of the Complainant's products. It should also be noted that the website under the Disputed Domain Name contained no information about the Respondent’s relation to the Complainant (or lack thereof). As a result, the Panel finds that the Respondent had the Complainant’s Trademark in mind and intentionally targeted the Complainant when he registered and used the Disputed Domain Name.

In view of the foregoing, the Panel finds that paragraph 4(a)(iii) of the .UA Policy has been satisfied by the Complainant and accordingly, the Disputed Domain Name has been registered and is being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the .UA Policy and 15 of the .UA Rules, the Panel orders that the Disputed Domain Name <swissgear.com.ua> be transferred to the Complainant.

Mariya Koval
Sole Panelist
Date: July 9, 2020