Montres Charmex S.A. v.
Montague USA Corporation
Claim Number: FA0707001049282
PARTIES
Complainant is Montres Charmex S.A. (“Complainant”), represented by Harry
Jacobs, of DomainStatute.com,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <swissmilitary.com>, registered with Network
Solutions, Inc. (“Respondent’s Domain
Name”).
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Kendall C. Reed as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 31, 2007; the
National Arbitration Forum received a hard copy of the Complaint on July 31, 2007.
On July 31, 2007, Network Solutions, Inc. confirmed by e-mail to
the National Arbitration Forum that the <swissmilitary.com> domain name is
registered with Network Solutions, Inc.
and that the Respondent is the current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement
and has thereby agreed to resolve domain-name disputes brought by third parties
in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On August 7, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of August 27, 2007 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent via e-mail,
post and fax, to all entities and persons listed on Respondent’s registration
as technical, administrative and billing contacts, and to postmaster@swissmilitary.com by e-mail.
A timely Response was received and determined to be complete on August 24, 2007.
A timely Additional Submission was received from Complainant on August
29, 2007.
A timely Additional Submission was received from Respondent on
September 5, 2007.
A further Additional Submission was submitted by Complainant on
September 6, 2007, and was determined to be deficient. The Panel has chosen not to consider this
Additional Submission in its Decision.
On August 31, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Kendall C. Reed as Panelist.
RELIEF SOUGHT
Complainant requests that the <swissmilitary.com> domain name (the “Diputed Domain Name”) be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is the owner of the following Swiss trademark
registrations: SWISS MILITARY (Swiss Reg. No. P-426567 issued July 6, 1996,
“…based on its common law rights dating back to July 17, 1992…”), CHARMEX SWISS
MILITARY (Swiss Reg. No. P-425789 issued May 22, 1996 and WIPO International
Reg. No. 701,717 dated October 7, 1998), SWISS MILITARY FORCES (Swiss Reg. No.
459,800 issued March 24, 1999, WIPO International Reg. No. 710,892 dated April
7, 1999), and SWISS MILITARY WATCH (Swiss Reg. No. 466,851 issued November 2,
1999, WIPO International Reg. No. 714,891 dated November 22, 1999)
(collectively “Complainant’s Trademarks”).
The Disputed Domain Name is identical or confusingly similar to
Complainant’s SWISS MILITARY trademark because it differs only with respect to
the addition of “.com,” which addition is irrelevant for purposes of the
Policy.
Respondent has no rights or legitimate interest in respect of the
Disputed Domain Name for a number of reasons:
1. Complainant has
never authorized Respondent to use any of Complainant’s Trademarks;
2. Respondent is not a distributor or licensee
of Complainant;
3. Respondent is using the Disputed Domain Name
as an identical mirror for another domain name (<swissbike.com>) to catch
type-in traffic – “the traffic of people looking for Complainant”;
4. Respondent is intentionally attempting to
capitalize on the good will of Complainant and divert Complainant’s customers
because it is using the Disputed Domain Name, which is identical to
Complainant’s SWISS MILITARY trademark, in connection with words contained on
its website describing its bicycles as having “the shifting precision of a
swiss [sic] watch”;
5. Respondent is using the Disputed Domain Name
in connection with words on its website describing its bicycles as having “the
shifting precision of a swiss [sic] watch” and thereby is using the Disputed
Domain Name in a trademark sense in direct violation of Complainant’s trademark
rights, and such a use cannot constitute use in connection with a bona fide offering of goods;
6. Respondent’s use of the Disputed Domain Name
in connection with the words on its website describing its bicycles as having
“the shifting precision of a swiss [sic] watch” is causing dilution of
Complainant’s SWISS MILITARY trademark through blurring, and such a use cannot
constitute a use in connection with a bona
fide offering of goods; and
7.
Respondent has not been commonly known by the Disputed Domain Name.
Respondent’s use of the Disputed Domain Name is in bad faith. Firstly, Respondent’s use of the Disputed
Domain Name in connection with the statement that Respondent’s bicycles have
“the shifting precision of a swiss [sic] watch” is an intentional attempting to
have a free-ride on the goodwill of Complainant’s famous marks. Secondly, Respondent’s unauthorized use of
Complainant’s marks, originally associated with watches, to sell Respondent’s
bicycles, is causing dilution of Complainant’s marks. Thirdly, Respondent registered Respondent’s
Domain Name for the purpose of preventing Complainant from reflecting its mark
in a corresponding domain name, and further, Respondent has engaged in a
pattern of such conduct as demonstrated by its use of the domain name
<swissbike.com>, which is the subject of a certain rights of a third
party. And Fourthly, by registering a domain name incorporating Complainant’s
entire mark, and using it to sell Respondent’s own product while including a
specific reference to Swiss watches, Respondent has intentionally attempted to
attract, for commercial gain, Internet users to Respondent’s web site by
creating a likelihood of confusion with the Complainant’s mark as to the
source, sponsorship, affiliation or endorsement of Respondent’s website or
location or of a product on Respondent’s web site or location.
B. Respondent
Respondent registered the Disputed Domain Name on June 20, 1996, with
the intention of using it in connection with the marketing and sale of its
bicycles. Respondent has used the
Disputed Domain Name in connection with the marketing and sale of its bicycles.
The Disputed Domain Name is not confusingly similar to Complainant’s
alleged trademarks because Complainant has failed to establish that it has
trademark rights for purposes of the Policy.
Firstly, Complainant has not attached evidence that its trademark rights
date back to 1992. Secondly, Complainant
has not provided evidence of any use of its mark anywhere in the world. Thirdly, Complainant provides evidence that
it holds a Swiss trademark registration and International Trademark
Registrations, and the International Trademark Registrations have not been
extended to the
Respondent has rights or legitimate interests in respect to the
Disputed Domain Name. Firstly,
Respondent uses the Disputed Domain Name to market and sell its bicycle. Secondly, at the time Respondent registered
the Disputed Domain Name, it also applied for the SWISS MILITARY mark in the
Respondent registered the Disputed Domain Name in good faith. Firstly, the Respondent did not register or
acquire the Disputed Domain Name with the purpose of selling or transferring it
to the Complainant for any price.
Secondly, Respondent did not register the Disputed Domain Name to
prevent Complainant from reflecting the mark in a corresponding domain name;
rather, Respondent registered the Disputed Domain Name to market and sell bicycles and in fact did use it in that way.
Respondent’s use of the Disputed Domain Name is in good faith. Firstly, Respondent is using it in connection
with its specialized bicycles, and has done so for over ten years. Secondly, Respondent is not using it to
attract Complainant’s customers; the parties respective customer pools are
completely separate – those for watches and those for bicycles.
Complainant’s claim that Respondent was on
actual and constructive notice of Complainant’s SWILSS MILTARY trademark is not
supported by any evidentiary showing.
Complainant’s focus on Respondent’s assertion that the gears of its
bicycles are as precise as a Swiss watch is misplaced, as nothing in this
statement suggests a connection to Complainant or Complainant’s alleged
trademarks.
Complainant’s reference to the <swissbike> domain name and its
assertion that a third party possesses certain rights therein is not correct. The referenced third party trademark could
not apply to Respondent’s <swissbike> domain name.
C. Complainant’s Additional Submission
First UDRP Element:
Respondent’s argument that Complainant waited too long to bring this
action is incorrect. The right to bring
this action arose when Respondent began to use the Disputed Domain Name in a
trademark sense to promote its bicycles, and this began in 2005 when Respondent
began to make the connection between watches and its bicycles. This connection was accomplished by way of
Respondent’s use on Respondent’s website of the expression “the shifting
precision of a swiss [sic] watch.”
Respondent is incorrect to assert that Complainant’s Trademarks do not
confer trademark rights on Complainant.
The geographic location of Complainant’s Trademarks and the scope of
goods and/or services for which they are registered are irrelevant for purposes
of the Policy.
Respondent is incorrect that Complainant has disclaimed the words in
issue here. Complainant’s disclaimer in
a
Respondent is not correct that Complainant must show evidence of its
common law rights to support its claimed Date of First Use of July 17,
1992. Complainant did support this date
before the Swiss Trademark Office with a sworn declaration, specimens, and
subsequent examination by said Office.
Second UDRP Element:
Respondent is incorrect that it has rights and legitimate interest in
the SWISS MILITARY mark in the
Complainant did not grant Respondent rights to use Complainant’s
Trademarks. Intending to use
Complainant’s registered marks, in Complainant’s country, without obtaining
license from Complainant, is not a bona
fide offering.
Respondent’s assertion that its use is a noncommercial or fair use is
incorrect. Respondent is a for profit
enterprise. Secondly, the words of the
Disputed Domain Name are not in any way descriptive.
The term “Swiss Military” is used nowhere in the text on Respondent’s
website, “…event thought the website pages have been spidered and cached by
Google.”
Respondent has not provided any evidence that it has used the expression
“Swiss Military” as a trademark. No
evidence has been provided that demonstrates that the expression has been used
on products. The advertisement provided
by Respondent as an exhibit shows use of the expression on a bicycle, but this
advertisement is undated. Further, the
advertisement does not present use of the expression in connection with any
claim of trademark rights, such as the “tm” symbol. This is in contrast to other marks appearing
in the same advertisement; these other marks do use either the “tm” or “®”
symbols, which demonstrates that Respondent was not using this expression in
any branded sense.
The Respondent did attach two of its invoices as exhibits to its
response, and these invoices do show use of the expression “Swiss Military” in
connection with the sale of bicycles, but these invoices were dated two years
after Complainant’s initial date of first use for its SWISS MILITARY
registration and further does not support a finding of continuous use since the
Complainant’s SWISS MILITARY trademark was issued.
Whereas some panels have accepted the concept of common law usage to
establish a Respondent’s trademark rights, in this instance Respondent in fact
filed an intent to use application and has not to this
day filed an amendment of use, which is inconsistent with a finding of prior
common law rights.
Respondent did file an intent to use trademark
application in the
Arguments as to restrictions on the territorial scope of a
complainant’s trademarks are irrelevant given the worldwide coverage of the
Internet.
Third UDRP Element:
“Respondent, who is using the disputed domain name
<swissmilitary.com> to promote its ‘Swissbike’ brand, manufactures the
bike in
The Respondent uses the Disputed Domain Name to market and sell its
“Swissbike.” Respondent uses the Dispute Domain Name to refer to its real
website at <swissbike.com>, and as such, the Disputed Domain Name is used
for its type-in traffic value, which is a bad faith use.
D.
Respondent’s
Supplemental Submission
Complainant Does not Have Exclusive Rights in
SWISS MILITARY for watches
Respondent provides printouts as exhibits establishing that third parties
use, register and have filed trademark applications incorporating SWISS MILTARY
for watches. This evidence establishes
that Complainant does not have exclusive rights in SWISS MILITAY for watches.
Even among watch manufacturers there is a dispute as to who has the
right to use the SWISS MILITARY mark on watches.
Complainant only uses SWISS MIILTARY in connection with the letters
“CX” as part of an entire mark, which letters Respondent does not use.
Complainant submits no evidence of continuous use of its alleged marks
and certainly no use from 1992.
Respondent attaches information from the Swiss Trademark Office which
shows that in order to obtain registration in
Respondent attaches a number of copies of full text records
demonstrating that the words “swiss military” are used in a number of trademark
registrations with the Swiss national authority with respect to watches. This is evidence that these Swiss watch manufacturers
do not believe that the public is confused by these numerous uses for competing
goods.
The evidence supplied by Complainant to demonstrate use is defective
and therefore does not so demonstrate.
Complainant’s rights are undermined by the existence of a number of
registered domain names that incorporate SWISS MILITARY.
Respondent Has Rights and Legitimate
Interests in <swissmiltary.com>
Respondent filed a
Respondent’s legitimate interest and rights to
<swissmilitary.com> is established by Respondent’s filing, 11 years ago,
of a trademark application for the SWISS MILITARY mark for bicycles and
Respondent use of this mark on bicycles.
Complainant argues that Respondent’s sale of bicycles in
Respondent Registered
the <swissmilitary.com> Domain Name in Good Faith
Respondent had never heard of Complainant when Respondent filed its
intent to use application for SWISS MILITARY in the
Complainant, as of 1996 and still today, does not have rights in SWISS
MILITARY for watches in the UNITED STATES or a domain name in its name.
Respondent did not and could not have registered the Disputed Domain
Name in bad faith 11 years ago.
The cases that Respondent cites in support of its position are all
distinguishable.
Respondent uses the <swissmilitary.com> Domain Name in Good faith.
Complainant bases its bad faith use argument on Respondent’s use of the
wording “Swiss Watch” on its website.
Complainant does not hold any rights in “Swiss watch.” A search of Google and Thomson Compumark
shows a large number of uses for the expression “Swiss watches.” In
FINDINGS
Complainant is the owner of the following trademarks with the following
registration dates:
SWISS MILITARY (Swiss Reg. No. P-426567 issued July 6, 1996, “…based on its
common law rights dating back to July 17, 1992…”);
CHARMEX SWISS MILITARY (Swiss Reg. No. P-425789 issued May 22, 1996 and WIPO
International Reg. No. 701,717 dated October 7, 1998);
SWISS MILITARY FORCES (Swiss Reg. No. 459,800
issued March 24, 1999, WIPO International Reg. No. 710,892 dated April 7,
1999); and
SWISS MILITARY WATCH (Swiss Reg. No. 466,851
issued November 2, 1999, WIPO International Reg. No. 714,891 dated November 22,
1999).
All of these trademark registrations are with
the
Respondent registered the Disputed Domain
Name, <swissmilitary.com>, on June 20, 1996.
Respondent uses the Disputed Domain Name in
connection with the marketing and sale of its bicycles.
The Disputed Domain Name operates to direct
Internet traffic to a website owned by Respondent, and this website operates
under the <swissbike.com> domain name.
On the <swissbike.com> website, Respondent
makes a comparison between its Swissbike bicycle and a Swiss watch with the
following expression: “The world’s most advanced bicycle folds to fit in a car
trunk or closet, yet climbs through the Swiss Alps with the shifting precision
of a swiss [sic] watch.”
The Disputed Domain Name is identical to
Complainant’s SWISS MILITARY trademark.
Respondent uses the Disputed Domain Name in
connection with a bona fide offering
of goods.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of law that it deems
applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1) the domain name registered by the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and is being
used in bad faith.
Policy ¶ 4(a)(i) requires that the Disputed Domain Name be “identical or confusingly similar to a trademark or service mark in which the complainant has rights.”
For purposes of deciding whether the Disputed Domain Name is identical or confusingly similar to Complainant’s trademark, the top-level domain names (“gTLD”) are removed. See Nev. State Bank v. Modern Limited-Cayman Web Development , FA 204062 (Nat. Arb. Forum Mar. 22, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”); see also Isleworth Land Co., v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[i]t is a well established principal that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”)
Here, Complainant’s trademark is SWISS MILITARY, pursuant to Swiss registration number P-426567. The Disputed Domain Name is <swissmilitary.com>, and after stripping off the gTLD, it is “swissmilitary.” This Panel has no trouble finding that the Disputed Domain Name is identical to Complainant’s trademark SWISS MILITARY.
Respondent argues that Complainant has not demonstrated that it had trademark rights that predated Respondent’s registration of the Disputed Domain Name, and that this precludes a finding of identically or similarity. See Razorbox, Inc. v. Torben Skjodt, FA 150795 (Nat. Arb. Forum May 9, 2003) (“…Respondent’s registration of the <raxorbox.com> domain name predates Complainants alleged rights. Complainant admits in this complaint that …Complainant’s trademark application indicates a first use in commerce of January 15, 2002. However, Respondent registered the disputed domain name on December 10, 1999, more than two years prior to Complainant’s stated first use in commerce. Under these facts, the Panel must find in favor of Respondent because it would be impossible for Complainant to prove Respondent’s bad faith registration subsequent to Complainants establishing any rights in the RAZORBOX mark.”). Complainant’s Swiss trademark registration for its SWISS MILITARY mark was issued on June 11, 1996. Respondent registered the Disputed Domain Name on June 20, 1996, and as such, Complainant has demonstrated that its trademark rights predate Respondent’s registration.
Respondent argues that Complainant
has provided no evidence of any use of this mark on any goods or services at
all or for any length of time, and therefore Complainant has not established
any use of its mark anywhere in the world.
Respondent further argues in its Supplemental Response that Claimant’s
mark is defective for a number of reasons, including that the requirements for
obtaining a trademark registration are less stringent in the Swiss IGE than
under the laws of the
Further, insofar as this is an attack on the validity of Complainant asserting its trademark rights in this proceeding because Complainant does not prove use in addition to registration, this argument is misplaced. The existence of a trademark registration is sufficient to establish trademark rights for purpose of the Policy. See Vicorp Rests., Inc., v. Trantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005) (“Complainant has established rights in the BAKERS SQUARE mark by registering it with the United States Patent and Trademark Office (“USPTO”).”); see also Miller Brewing Co. v. the Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant has established rights to the MILLER TIME mark through its federal trademark registrations.
Respondent argues that
Complainant’s trademark SWISS MILITARY is a Swiss registration and has not been
extended to the
Respondent argues in its Supplemental Submission that Complainant’s argument as to dilution does not lie here as Complainant’s SWISS MILITARY mark is already weak and diluted. However, this argument is off point because the focus under Policy ¶ 4(a)(i) is whether a Complainant has trademark rights, not the strength of those rights in a trademark sense.
Finally, Respondent argues that
Complainant has disclaimed in the context of a
Complainant owns other trademark registrations as noted above. This Panel has not mentioned or analyzed them here because the noted Swiss registration for SWISS MILITARY is identical to the Disputed Domain Name and was registered prior to the Disputed Domain Name. Complainant’s other trademarks would be, at best, similar to the Disputed Domain Name. The inclusion of these additional trademarks would not alter any analysis in this decision.
As such, Complainant has
established this element of the Policy.
Guidance is provided by Policy ¶ 4(c) as to what
constitutes “rights or legitimate interests.”
Three non-exclusive examples are given, to wit:
(i) before notice to you of the dispute, your use
of, or demonstrable preparations to use, the domain name or a name
corresponding to the domain name in connection with a bona fide offering of
goods or services; or
(ii) you (as an individual, business, or other
organization) have been commonly known by the domain name, even if you have
acquired no trademark or service mark rights; or
(iii) you are making a
legitimate noncommercial or fair use of the domain name, without intent for
commercial gain to misleadingly divert consumers or to tarnish the trademark or
service mark at issue.
This Panel finds that the latter two examples,
Policy ¶¶ 4(c)(ii) and (iii) are not at issue in this
matter. It is clear from the evidence
provided by both parties that Respondent is using the Disputed Domain Name in
connection with the marketing and sale of its bicycles, which is a commercial
enterprise and incompatible with a finding of a noncommercial use. Further, there is no indication in any of the
submissions that Respondent has been known by the Disputed Domain Name.
The question for this Panel is whether Respondent’s
use of the Disputed Domain Name falls within the scope of the first example,
Policy ¶ 4(c)(i).
The Complainant asserts that this is not the case, and Respondent
asserts that it is.
In analyzing Policy ¶ 4(c)(i),
this Panel must examine the factors listed there: whether Respondent used the
domain name in connection with a commercial offering of goods and did so before
notice of the dispute.
In addition, many panels, including this Panel,
have interpreted Policy ¶ 4(c)(i) as including the concept that a respondent
may not use a domain name that is identical or similar to a claimant’s
trademark if the respondent and the complainant are competitors and the
respondent is doing so intentionally to profit from the claimant’s goodwill,
including an intentional or reasonably inevitable diversion of the claimant’s
actual or potential customers, even when the respondent is otherwise using the
domain name in connection with an actual offering of goods and services. See Am.
Online, Inc., v. Fu, D2000-1374 (WIPO Dec. 12, 2000) (“it would be
unconscionable to find a bona fide offering of services in a Respondent’s
operation of a website using a domain name which is confusingly similar to
Complainant’s mark and for the same business.”); see also Pfizer, Inc.
v. Internet Gambiano Prods., D2002-0325 (WIPO June 20, 2002) (finding that
because the VIAGRA mark was clearly well-known at the time of the Respondent’s
registration of the domain name it can be inferred that the Respondent is
attempting to capitalize on the confusing created by the domain name’s
similarity to the mark); see also MBS Computers Ltd., v. Workman,
FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate
interest when the Respondent is using a domain name identical to the Complainant’s
mark and is offering similar services).
For purposes of an analysis under Policy ¶ 4(c), the Complainant has the initial burden to make a prima facie case that Respondent does not have rights or legitimate interests, which burden is light, and if the Complainant carries its burden, then the burden shifts to the Respondent to demonstrate that it does have rights or legitimate interests. See Hanna-Barbara Prod., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interest in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interests in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
In the instant matter, Complainant argues that
Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods for the
following reasons:
1. Complainant has
never authorized Respondent to use any of Complainant’s Trademarks;
2. Respondent is not a distributor or licensee
of Complainant;
3. Respondent is using the Disputed Domain Name
as an identical mirror for another domain name (<swissbike.com>) to catch
type-in traffic – “the traffic of people looking for Complainant”;
4. Respondent is intentionally attempting to
capitalize on the good will of Complainant and divert Complainant’s customers
because it is using the Disputed Domain Name, which is identical to
Complainant’s SWISS MILITARY trademark, in connection with words contained on
its website describing its bicycles as having “the shifting precision of a
swiss [sic] watch”;
5. Respondent is using the Disputed Domain Name
in connection with words on its website describing its bicycles as having “the
shifting precision of a swiss [sic] watch” and thereby is using the Disputed
Domain Name in a trademark sense in direct violation of Complainant’s trademark
rights, and such a use cannot constitute use in connection with a bona fide offering of goods; and
6. Respondent’s use of the Disputed Domain Name
in connection with the words on its website describing its bicycles as having
“the shifting precision of a swiss [sic] watch” is causing dilution of
Complainant’s SWISS MILITARY trademark through blurring, and such a use cannot
constitute a use in connection with a bona
fide offering of goods.
In analyzing whether these arguments and
supporting evidence satisfy Complainant’s burden, it is important to first
separate out the latter two arguments concerning direct trademark infringement
and infringement by way of dilution.
These must be dismissed from further consideration by this Panel because
this Panel does not have the authority to decide issues of trademark
infringement. This Panel operates on an
expedited basis under the Policy and is not equipped to make the detailed
inquires that can be necessary to resolve questions of trademark
infringement. If Complainant wishes to pursue these
arguments, it must do so in another forum.
See Auto Nation Holding Corp. V.
Rabea Alawneh, D2002-0581 (WIPO May 2, 2002) (“[A]ssertions [of trademark
infringement] are entirely misplace and totally inappropriate for resolution
through an ICAN proceeding. The scope of an ICANN proceeding is extremely narrow: it only targets abusive cybersquatting, nothing
else.”); see also Gerber
Childrenswear, Inc., v. Webb, D2007-0317 (WIPO Apr. 24, 2007) (“Issues
concerning trademark liability…are clearly not within the purview of any UDRP
proceeding and are best left for administrative and/or judicial
adjudication. Not only is doing so outside
the very limited and focused jurisdiction afforded to ICANN panels under the
Policy but moreover the summary and rather abbreviated nature of UDRP
proceedings totally precludes the establishment of a fully developed factual
record that underlies such a question.
UDRP panels cannot and hence do not asses the validity for any federally
registered trademark”).
This Panel may also dismiss the first two noted arguments, that the
Complainant did not give authorization to Respondent and that Respondent is not
a distributor or licensee. These arguments
may be profitably raised in a complaint in a preemptive sense, but they have no
purpose where a respondent does not in fact raise them as a defense.
With respect to Complainant’s argument that Respondent is intentionally
attempting to catch type-in traffic intended for Complainant because the
Disputed Domain Name is a mere identical mirror for another website under a
different domain name (<swissbike.com>), this Panel is not persuaded that
this is Respondent’s intention. This
Panel is not persuaded that the use of a domain name to refer to a website that
is operated under another domain name is, by itself, evidence that Respondent
is attempting to catch Complainant’s type-in traffic. The use of multiple domain names to cast a
wide net is a common and legitimate practice.
Complainant’s argument is not strengthened by Respondent’s statement on
its website to the effect that its bicycle can climb through the Swiss Alps
with the shifting precision of a Swiss watch.
This expression would necessarily be unknown to an Internet user before
he or she arrived at Respondent’s website and for this reason cannot be a
factor in any diversion of an Internet user looking for Complainant’s website
in the first instance. To the extent
that Complainant’s argument here is to be interpreted that Respondent’s use
would cause Respondent’s website to be unfairly identified in an internet
search using the key words “swiss watch,” this Panel would still not be
persuaded. As Respondent points out in
its Supplemental Response, the expression “swiss watch” is a commonly used
expression, and such an effort on the part of Respondent would be so ill
conceived as to be very unlikely.
Complainant’s next and remaining argument contains a similar flaw. As has been stated, it is not the rule that
the use of a domain name that is identical to another’s trademark requires, ipso facto, a finding that the domain
name is not used in connection with a bona
fide offering of goods and services; other factors must be present as noted
above. The only additional evidence
added by Complainant to support the requested finding is that Respondent is
using on its website the expression that its bicycle climbs through the Swiss
Alps with the shifting precision of a Swiss watch. As has been said, this expression on the
website cannot be a reason for Complainant’s actual or potential customers to
be diverted.
Further, this Panel is not persuaded that this expression (“The world’s
most advanced bicycle folds to fit in a car trunk or closet, yet climbs through
the Swiss Alps with the shifting precision of a swiss [sic] watch.”) when used
in conjunction with the Disputed Domain Name is evidence of an intent on
Respondent’s part to create a likelihood of confusion as to the source,
sponsorship, affiliation or endorsement of Respondent’s website or goods. This is a possible explanation for such a
concordance, but another explanation is more likely. The comparison being drawn by Respondent is
between two precise mechanical systems, the gears of its bicycle and a Swiss
watch. The idea that a Swiss watch is a
precise mechanical device, and indeed a paradigm of a precise mechanical
device, is within our common cultural heritage.
As such, Respondent can make this comparison without any intent to
invoke Complainant as the source, sponsorship, affiliation or endorsement of
Respondent, its website, or its bicycles.
As such, this Panel finds that Complainant has
failed in its initial burden to establish a prima
facia case that Respondent’s use of the Disputed Domain Name does not
constitute a use in connection with a bona
fide offering of goods and services.
However, even if this Panel found otherwise on
this point, it would not change the outcome, as this Panel believes that
Respondent has carried its burden of demonstrating that its use of the Disputed
Domain Name is in connection with a bona
fide offering of goods.
Respondent argues and
provides supporting evidence that it is using the Disputed Domain Name to
“market, promote and sell its goods.” Complainant
agrees with this. In its Complaint,
Complainant states that Respondent’s website is designed to promote
Respondent’s products. As such,
Respondent is using the Disputed Domain Name for its own commercial purpose.
Respondent demonstrates
through copies of its website content and copies of several invoices, both
attached as exhibits to its Response, that its goods are bicycles. Complainant agrees with this. In its Complaint, Complainant states that
Respondent’s “use of Complaint’s Trademarks” in connection with the sale of
bicycles operates to dilute Complainant’s trademarks, which relate to
watches. This Panel finds that for
purposes of the Policy, bicycles do not compete with watches, and as such, the parties’
commercial activities do not compete. See Quest Commc’ns Int’l,
Inc., v. QC Publ’g Group, Inc., FA 286032 (Nat. Arb. Forum, July 23,
2004) (Finding rights or legitimate interests on the part of a respondent that
used a domain name confusingly similar to the complainant’s trademark and where
the complainant’s mark was limited to its application in the telecommunications
industry and respondent’s use of the domain name related to respondent’s
publishing activities).
With respect to
Respondent’s use of the Disputed Domain Name prior to notice of the dispute,
the record does not state when Respondent received notice of the dispute. Absent a showing on this point, the Panel can
only infer that notice was given when the Complaint was served, which was very
recently and certainly well after Respondent registered the Disputed Domain
Name in 1996, and well after 2005, which is when Complainant asserts that
Respondent began making the comparison on its websites between bicycles and
Swiss watches.
Finally, this Panel believes that Respondent’s
use of the Disputed Domain Name was initiated in an effort to market and sell
its bicycles and not to reference Complainant, its goods, or trademark, as
discussed above.
As such, Respondent has established that it
is using the Disputed Domain Name in conjunction with a bona fide sale of goods.
As such, Complainant has failed to establish
this element under the Policy.
As such, Complainant cannot establish that
Respondent has violated the Policy because Policy ¶ 4(a) requires that the
Complainant establish each of the three elements listed in 4(a).
The Panel need not analyze this element of
the Policy for the reason stated immediately above.
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
Kendall C. Reed, Panelist
Dated: September 25, 2007
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