WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

SUVA v. Fertility Records Inc.

Case No. D2014-1573

1. The Parties

The Complainant is SUVA of Luzern, Switzerland, represented by Fuhrer Marbach & Partners, Switzerland.

The Respondent is Fertility Records Inc. of Las Vegas, Nevada, United States of America, represented internally.

2. The Domain Name and Registrar

The disputed domain name <suvaunfall.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2014. On September 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 15, 2014, the Registrar transmitted by email to the Center its verification response, but could not confirm the identity of the registrant of the disputed domain name. In a later email to the Center the Registrar stated that “[n]o information for the registrant company or name was parsed when the [disputed] domain name transferred into GoDaddy. Our WhoIs currently does not list a party as the registrant.” In response to notifications by the Center that the Complaint was administratively deficient, the Complainant filed two amended Complaints, the first on September 30, 2014 and the second on October 1, 2014.

The Center verified that the Complaint together with the amended Complaints satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 2, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 22, 2014. By reason of party agreement, the Center extended the Response due date until October 30, 2014. The Response was filed with the Center on October 30, 2014. The Response was filed by the entity named in Complaint as the Respondent.

The Center appointed Johan Sjöbeck as the sole panelist in this matter on November 10, 2014. 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 Rules, paragraph 7.

4. Factual Background

The Complainant maintains that it is the owner of a number of trademark registrations containing the term “suva” but has not submitted any copies of valid trademark certificates. The Complainant has, however, provided a list of trademark registrations, including:

SUVA, Swiss trademark with registration No. 2P-417849 and registration date August 31, 1994.

The disputed domain name <suvaunfall.com> was registered on August 5, 2012.

5. Parties’ Contentions

A. Complainant

The Complainant has been active since 1918 and has a workforce of around 2,300 employees in Switzerland. The Complainant insures around 120,000 companies and 1.9 million employees against the consequences of accidents and occupational diseases. Unemployed people in Switzerland are automatically insured with the Complainant.

Since 2005, the Complainant is responsible for military insurance by government mandate. The Complainant generates premiums to the approximate amount of CHF 4.2 billion. The Complainant’s range of services encompasses prevention, insurance and rehabilitation. The Complainant has a considerable reputation both in Switzerland and abroad and is the holder of trademarks, domain names and company names with the name SUVA.

The disputed domain name is used for a blog containing information about accident insurance and degrading information about the Complainant. The Complainant’s trademark SUVA with registration number 2P-417849 is registered for accident control products, accident insurance, services in the field of prevention of accidents, etc. Since the content of the Respondent’s website is similar to the goods and services protected by the trademark, the disputed domain name is used in connection with insurance services.

The first part of the disputed domain name contains the SUVA trademark in its entirety. The addition of the generic term “unfall”, which is the German word for “accident”, does not influence the overall impression of the mark. In fact, the addition of the term “unfall” increases the connection with the Complainant because the Complainant’s core business is to provide insurance against accidents.

The Respondent has no legal or economic relation to the Complainant. The Respondent has no legitimate interest in the registered trademark SUVA. By using the SUVA trademark the Respondent specifically targets existing and potential customers of the Complainant. Although the Respondent does not seem to market goods or services via the disputed domain name, the Respondent uses it to mislead consumers who are likely to expect that the blog and the information it contains originates from the Complainant or that it is published with the Complainant’s consent. The information published on the Respondent’s website appears to be written by a Swiss individual.

The Respondent registered and used the disputed domain name for the purpose of disrupting the business of the Complainant. By using the SUVA trademark, the Respondent intentionally attempted to attract Internet users to its website by creating a risk of confusion with the Complainant’s trademark, domain name and company name as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. Thus, the registration of the disputed domain name was made in bad faith.

The Respondent’s website contains not only degrading statements regarding the Complainant but also photographs of the members of its board of directors.

B. Respondent

The Respondent is a music related entertainment company which engages in the recording of musical artists, commercials, voice overs, publishing, live concert performances, night club engagements and other related activities on behalf of its clients. The Respondent is not engaged in any business activities in Switzerland or any other European country. There has not been any actual confusion in the marketplace and no consumers or vendors have complained over confusion caused by the Respondent’s website. The disputed domain name is not similar to the Complainant’s trademark other than the first four letters.

The Complainant claims an absolute right to the term “suva”. The Respondent maintains that the Complainant does not have an exclusive right to the term “suva” everywhere in the world. For example, “Suva” is the name of the capital and second most populated municipality of Fiji. As a rhetorical question the Respondent asks if the Complainant is “going to enjoin the sovereign nation of Fiji from issuing domain names in the name of its capital city?” The Respondent also points out that the Complainant has not registered any trademarks for “suva” in the United States.

The Complainant does not like the information that the Respondent publishes on its website. The Respondent is of the opinion that the Respondent’s publications do not affect the Complainant’s brand. The Complainant simply wants to deny the Respondent the rights of free speech. Everyone has the right to complain.

Before the Respondent received any notice of the dispute, the Respondent used the disputed domain name and made preparations for the use of the disputed domain name in its music business. The Respondent is going to distribute a music CD titled “Suva Dreams” and clothing under the name “Suva Wear” which will feature the art from the CD cover as a bona fide offering of goods and services. The Respondent is in the process of obtaining a trademark registration for the musical group “Suvaunfall”.

The Respondent is commonly known by the disputed domain name <suvaunfall.com> which has acquired a substantial presence and reputation sufficient for it to engage in serious entertainment ventures and bookings.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Based on the submitted evidence, the Panel is satisfied that the Complainant is the owner of the registered trademark SUVA. The disputed domain name <suvaunfall.com> incorporates the Complainant’s trademark in its entirety with the addition of the generic word “unfall” which is the German word for “accident”. The Panel agrees with the Complainant’s contention that the ability for such a descriptive word to distinguish the disputed domain name from the trademark of the Complainant is limited.

The Complainant has argued that the SUVA trademark is registered for accident control products, accident insurance services and services in the field of prevention of accidents. It has been expressed in prior similar decisions that confusion may be heightened when a generic word added to a domain name coincides with the goods or services for which the trademark is registered. See for example Harrods Limited v. Peter Pierre, WIPO Case No. D2001-0456and Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888.

Having the above in mind, the Panel concludes that the disputed domain name <suvaunfall.com> is confusingly similar to the Complainant’s SUVA trademark and that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(i) that it has made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) that it is commonly known by the disputed domain name, even if it has not acquired any trademark rights; or

(iii) that it makes a legitimate, noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Panel has noted that the Respondent’s description of its intended use of the disputed domain name does not correspond to the use demonstrated by the Complainant’s submissions. It has been argued by the Respondent that the disputed domain name will be used for its music business (e.g., for the sale of its forthcoming album “Suva Dreams”), but the Respondent has not submitted any evidence to support this claim. The Panel finds that the Respondent’s unsupported allegations of its intended future use of the disputed domain name are insufficient to give rise to rights or legitimate interests in the disputed domain name.

The evidence submitted by the Complainant clearly demonstrates that the Respondent is using the disputed domain name for a German-language website containing criticism of the Complainant’s business. This criticism appears to the Panel to be of an essentially noncommercial nature (in the sense that it appears to be from a disgruntled customer or patient, rather than for example from a commercial competitor of the Complainant).

The Panel considers the merits of this case under the second element to be closely balanced. On the one hand, there is evident use of the disputed domain name as a criticism site, and such use does not strike the Panel as obviously pretextual. On the other hand, the Respondent has chosen a domain name that is confusingly similar to the Complainant’s trademark for that purpose, and has not (in the present proceeding at least) advanced a persuasive case for holding a present right or legitimate interest in the disputed domain name. In previous cases it has been held that in order to fully exercise free speech rights, it is not permissible to use a domain name which is identical or confusingly similar to another's trademark. See for example The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez, WIPO Case No. D2003-0166.

The Panel therefore finds that Respondent has no rights or legitimate interests in respect of the disputed domain name, according to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include, in particular but without limitation:

(i) circumstances indicating the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant, or to a competitor of the Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name; or

(ii) circumstances indicating that the disputed domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding disputed domain name, provided there is a pattern of such conduct; or

(iii) circumstances indicating that the disputed domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the disputed domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on that website or location.

As stated above, the website to which the disputed domain name resolves contains criticism of the Complainant’s business. It has been argued by the Complainant that the Respondent is using the disputed domain name <suvaunfall.com> to tarnish the Complainant’s trademark SUVA. Can tarnishment of a trademark form a basis for finding bad faith? In paragraph 3.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) it is stated that “[i]ntentional tarnishment of a complainant’s trademark may in certain specific circumstances constitute evidence of registration and/or use of a domain name in bad faith. However, mere conclusory allegations by a complainant are generally insufficient, with supporting proof of such claim typically being required. Tarnishment in this context normally refers to such conduct as linking pornographic images or wholly inappropriate information to an unrelated trademark. While it would not normally extend to the mere posting of information about a complainant, or to the posting of genuine, noncommercial criticism regarding the trademark holder, it may extend to commercially motivated criticism by (or likely on behalf of) a competitor of such trademark holder.” Considering the above, the Panel finds that the submitted evidence in the present case in relation to tarnishment of the Complainant’s trademark is insufficient to support a finding of registration or use in bad faith.

Moreover, there is no evidence before the Panel establishing that the disputed domain name <suvaunfall.com> was registered primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name. There is no evidence in the case demonstrating that the Respondent directly or indirectly requested any financial remuneration in order to transfer the disputed domain name. Consequently the provision in paragraph 4(b)(i) of the Policy is not met.

Furthermore, there is no evidence in the case indicating that the disputed domain name was registered by the Respondent in order to prevent the Complainant from reflecting the mark in a corresponding domain name. Consequently the provision in paragraph 4(b)(ii) of the Policy is not met.

Although it has been established by the Complainant that the Respondent may have registered and used the disputed domain name in order to disrupt the Complainant’s business by criticizing it, there is no evidence in the case establishing that the Respondent itself is a “competitor” of the Complainant and consequently the provision in paragraph 4(b)(iii) of the Policy is not met.

In addition to the above, there is no persuasive evidence in the case before the Panel that the Respondent has used the disputed domain name with intent for commercial gain, in the sense stated in paragraph 4(b)(iv) of the Policy. It has not, for example, been shown by the Complainant that the disputed domain name is used by the Respondent to obtain click-through commissions from the diversion of Internet users.

The overall impression given by the submitted screenshots of the Respondent’s website is that the disputed domain name is being used to criticize the Complainant. The Panel is not persuaded on balance that the Respondent registered and is using the disputed domain name in order to profit itself from likely confusion with the Complainant’s SUVA mark. It seems more likely to the Panel on the available record that the Respondent registered and is using the domain name for the purpose of expressing its dissatisfaction with the Complainant.

Had the Respondent been a competitor, its behavior would have come within the terms of paragraph 4(b)(iii) of the Policy. Had the Respondent been acting for commercial gain its behavior would have come within the terms of paragraph 4(b)(iv) of the Policy. In this Case, the Respondent is neither a competitor of the Complainant nor is it acting for commercial gain as described in the Policy. While the circumstances described in paragraphs 4(b)(i) – (iv) of the Policy do not apply in this case, the Panel recognizes that these circumstances are not exclusive and that previous panels have found that situations analogous the one in this case have supported findings of registration and use in bad faith in the past. See, e.g., Strike Holdings LLC v. Domains by Proxy, LLC/Reap Sow/Daniel Paden, WIPO Case No. D2013-1772, Banque Cantonale de Genève v. Primatex Group S.A., WIPO Case No. D2001-0477 and Triodos Bank NV v. Ashley Dobbs, WIPO Case No. D2002-0776.

As mentioned above, the evidence in this case indicates that the Respondent registered and used a domain name in order to criticize the Complainant. Considering that the disputed domain name is confusingly similar to the Complainant’s registered trademark, Internet users intending to reach the Complainant’s website are likely to visit the Respondent’s website by mistake. Although the Panel recognizes the Respondent’s right to use the Internet to criticize the Complainant, registering and using a misleading domain name is not necessary for that purpose.

Having the above in mind, the Panel concludes that the disputed domain name <suvaunfall.com> was registered and is being used in bad faith and that the Complainant has satisfied the requirement under paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <suvaunfall.com> be transferred to the Complainant.

Johan Sjöbeck
Sole Panelist
Date: November 24, 2014