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Swissvoice ag v. Chan chin sung [2004] GENDND 1371 (8 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Swissvoice ag v. Chan chin sung

Case No. D2004-0672

1. The Parties

The Complainant is Swissvoice ag, Hägendorf, Switzerland, represented by Rutz & Partner, Switzerland.

The Respondent is Chan chin sung, Pan Chiao City, Taipei County, Taiwan, Province of China.

2. The Domain Name and Registrar

The disputed domain name <swissvoice.com> is registered with Register.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2004. On August 25, 2004, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On August 25, 2004, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 August 27, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September 16, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 20, 2004.

The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on September 24, 2004. 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

Complainant is involved in the electronics and telecommunications industry and is the owner of the Swiss and the IR trademark SWISSVOICE, registered for the classes 9, 37, 38, 41 and 42. See e.g. Swiss trademark application no. 492495 dated October 4, 2001, and IR application no. 772985 dated December 10, 2001.

The domain name <swissvoice.com> was registered on May 27, 2000, by Respondent.

5. Applicable rules

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

(i) the domain name at issue is identical or confusingly similar to a trademark in which Complainant has rights; and

(ii) the Respondent has no rights or legitimate interest in respect of the domain name; and

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

Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of the domain name in bad faith for the purpose of Paragraph 4(a)(iii) above.

Paragraph 4(c) of the Policy sets out, by way of example, three circumstances, each of which, if proven by Respondent, shall demonstrate Respondent’s rights or legitimate interest to the domain name for the purpose of Paragraph 4(a)(ii) above.

6. Parties’ Contentions

A. Complainant

Complainant states that the domain name <swissvoice.com> is identical or confusingly similar to Complainant’s trademark SWISSVOICE.

Complainant states that the Respondent has no rights or legitimate interest in respect of the domain name <swissvoice.com>. Respondent has not used the domain name <swissvoice.com> since its registration on May 27, 2000. Respondent is not known by the domain name. The disputed domain name incorporates the geographical term “Swiss” which undoubtedly is indicating that the information published under the domain name is of Swiss origin. Since the domain name at issue indicates Swiss origin, but is held by a non-Swiss domain name holder with a place of living in Taiwan it is incorrect, misleading and deceptive to use the domain name at issue. Therefore Respondent has no legitimate interests in respect of the disputed domain name.

The domain name at issue was registered in bad faith. The use of geographical terms in a manner which wrongly indicates the pace of origin, is dishonest use which in other words is use in bad faith. The use of Swiss national signs, images or words by a non-Swiss citizen, whose place of residence is not Switzerland, is misleading and deceptive.

The term “Stimme der Schweiz”, “Voice of Switzerland” or “Swissvoice” is of special importance to the inhabitants of the area characterized by this geographical term. Publications for Switzerland or in the name of Switzerland or their authors are traditionally named or referred to as “Stimme der Schweiz”.

Since Respondent obviously knew that his use of the geographical term or indication Swiss would be or will be misleading and constitutes dishonest use and unfair conduct, the registration of the disputed domain name was done in bad faith.

B. Respondent

The Respondent did not reply to Complainant’s contentions.

7. Due Process

Where, as in this case, Respondent does not submit a response, the rules of due process require the panel to verify, to the extent possible, that Respondent is aware of the present proceedings. The Panel is satisfied on basis of the file documentation, that this is the case. The Panel therefore assumes that the Respondent has chosen not to respond.

8. Discussion and Findings

Complainant must provide evidence of all elements of paragraph 4(a) of the Policy. As the decision to transfer or cancel a domain name may have serious consequences for the domain name holder, the evidence should be sufficient in all respects to support such a decision. The absence of a response from Respondent, as in this case, does not discharge the Panel from its duty to establish that the evidence is sufficient.

A. Trademark Rights

Complainant has provided sufficient evidence of its rights to the trademark SWISSVOICE.

B. Identical or Confusingly Similar

The domain name <swissvoice.com> is identical to Complainant’s trademark SWISSVOICE with the only difference being the addition of the suffix “.com”. This suffix only indicates that the domain name is registered in the “.com” gTLD.

C. Rights and Legitimate Interests

Since Complainant has provided insufficient evidence to meet the requirements of Paragraph 4(c) of the Policy, the Panel does not have to go into the question whether or not the Respondent has a right or a legitimate interest to the domain name at issue.

D. Registered and Used in Bad Faith

The Panel finds that Complainant has not provided sufficient evidence for its contention that Respondent has registered and used the domain name at issue in bad faith.

The domain name at issue was registered at an earlier date than the trademarks Complainant is relying on. Complainant has not provided any evidence that it was using the indication “SWISSVOICE” as an unregistered trademark before the registration of the domain name at issue by Respondent. Furthermore, there is no evidence that Respondent was aware that a right in the name “Swiss Voice” was about to arise and that he intended to abuse that right. See ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669.

Complainant has submitted that Otto Steiger, a Swiss writer, is and was known as “die Stimme der Schweiz” or ‘Swiss Voive”. Complainant has however not provided any evidence of a relevant relation between Otto Steiger and Complainant’s company.

Complainant’s submission that the fact that the domain name at issue contains the element SWISS, whereas the Respondent is not a Swiss resident or national, does not constitute bad faith of Respondent’s registration and use of the domain name at issue. Even assuming that, as Complainant contends, users will conclude that information published under this domain name is of Swiss origin, contrary to Complainant’s contention the element SWISS in the domain name at issue cannot (per se) be considered as a (protected) geographical identifier. Although it might be unsatisfactory for Complainant that the domain name at issue contains the element SWISS whereas the Respondent appears to be unconnected to Switzerland, no internationally agreed legal basis exists for ruling out the use of such terms as illegitimate1. Therefore according to the Panel this argument is insufficient to constitute bad faith on Respondent’s part.

Complainant has failed to provide any other evidence which may indicate bad faith on Respondent’s side.

Therefore the Panel finds that the Panel has not met its burden of proof under Paragraph 4(c) of the Policy.

9. Decision

For all the foregoing reasons, the Complaint is denied.

Wolter Wefers Bettink
Sole Panelist

Dated: October 8, 2004

1 This has already been pointed out in the Second WIPO-report “The Recognition of Rights and the Use of Names in the Internet Domain Name System” in paragraph 245 :”in order to deal with this problem, new law would need to be created in view of the inadequate reach of existing law”.