According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The Respondent did not reply to the Complainant’s contentions. However, the consensus view of panelists is that a Respondent’s default does not automatically result in a decision in favor of the Complainant. Although, the Panel may draw appropriate inferences from a Respondent’s default, paragraph 4 of the UDRP requires the Complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.
In order to obtain the transfer of the Disputed Domain Names and according to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
“(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;
(iii) The Disputed Domain Name has been registered and is being used in bad faith”.
At the same time, in accordance with paragraph 14(b) of the Rules:
“(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”.
The Panel finds that in this case there are no such exceptional circumstances. Consequently, failure on the part of the Respondent to file a response to the Complaint permits an inference that the Complainant’s reasonable allegations are true. It may also permit the Panel to infer that the Respondent does not deny the facts that the Complainant asserts.
There are two parts to the inquiry under the first element of the Policy. The Complainant must first demonstrate that it has rights in a trademark and secondly that the Disputed Domain Names are identical or confusingly similar to such trademark.
The Panel is satisfied that the Complainant is the owner of a registered Community trademark for the “BDSWISS” sign.
The Complainant registered its Trademark on July 21, 2014, while the Disputed Domain Names had been registered between November 7, 2012, and January 24, 2014.
Registration of the Disputed Domain Names before the Complainant acquires its trademark rights in the name BDSWISS does not prevent a finding of identity or confusing similarity under the UDRP.
Indeed, the question of priority of the Complainant's trademark rights is not an issue to be dealt with under paragraph 4(a)(i) of the Policy, as registration of the Disputed Domain Names before the Complainant acquires corresponding trademark rights, does not prevent a finding of identity or confusing similarity.
However in such circumstances, it may be difficult to prove that the Disputed Domain Names were registered in bad faith under the third element of the UDRP (see in this regard the following developments).
The Panel therefore turns to the second part of the inquiry.
Regarding the addition of the gTLD “.com” to the Disputed Domain Names, it is well-established that gTLDs may typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy.
Indeed, “a principle which applies to all the domain names is that the addition of generic top level domains (gTLDs) or country code top level domains (ccTLDs) does not affect the confusing similarity or identity between the domain name and the trade mark(s) in issue. This has been clearly established from the beginning of the UDRP process, and now is no longer an issue. Thus, the addition of various types of gTLDs to the domain names (".com", ".net") does not change the assessment of confusing similarity” (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
1/ Regarding the domain name <bdeswiss.com>
This Disputed Domain Name incorporates the Complainant’s trademark with the mere addition of the letter “e” between “bd” and “swiss”.
The Panel finds it clear that altering the Complainant’s trademark by one letter is strongly evocative of typosquatting, which “consists of registering misspelled trademarks as domain names, and then deriving profits from Internet users seeking the rightful owners of those trademarks as revenues can be generated by web links and pop-up advertisements on the websites to which those domain names point or on the websites on which those domain name are parked” (see Thomson Broadcast and Media Solution, Inc., Thomson v. Alvaro Collazo, WIPO Case No. D2004-0746).
The Disputed Domain Name which contains a common or obvious misspelling of the Trademark normally will be found to be confusingly similar to such Trademark, where the misspelled Trademark remains the dominant or principal component of the Disputed Domain Name.
In the present case, the Panel considers that the addition of the letter “e” in the Disputed Domain Name is a purposeful type of misspelling. “This appears to be a case of ‘typosquatting’ conduct which creates a virtually identical and/or confusingly similar mark to the Complainant’s trademark for the purpose of paragraph 4(a)(i) of the Policy” (see Corcom, Inc. v. Jazette Enterprises Limited, WIPO Case No. D2007-1218).
In these circumstances, the Panel finds that the Disputed Domain Name <bdeswiss.com> is confusingly similar to the trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
2/ Regarding the domain name <bdsswiss.com>
This Disputed Domain Name incorporates the Complainant’s trademark with the mere addition of the letter “s” between “bd” and “swiss”.
The Panel finds it clear that altering the Complainant’s trademark by one letter is strongly evocative of typosquatting.
In these circumstances, the Panel finds that the Disputed Domain Name <bdsswiss.com> is confusingly similar to the trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
3/ Regarding the domain name <bdswis.com>
This Disputed Domain Name reproduces the Complainant’s trademark with the mere suppression of the letter “s” at the end of the Disputed Domain Name.
The Panel finds it clear that altering the Complainant’s trademark by one letter is strongly evocative of typosquatting.
In these circumstances, the Panel finds that the Disputed Domain Name <bdswis.com> is confusingly similar to the trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
4/ Regarding the domain name <bd-swiss.com>
This Disputed Domain Name reproduces the Complainant’s trademark with the mere addition of a hyphen between “bd” and “swiss”.
The addition of a hyphen does not sufficiently distinguish the Disputed Domain Name from the Complainant’s trademark.
In these circumstances, the Panel finds that the Disputed Domain Name <bd-swiss.com> is confusingly similar to the trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
5/ Regarding the domain name <bdswisss.com>
This Disputed Domain Name incorporates the Complainant’s trademark with the mere addition of the letter “s” at the end of the Disputed Domain Name.
The Panel finds it clear that altering the Complainant’s trademark by one letter is strongly evocative of typosquatting.
In these circumstances, the Panel finds that the Disputed Domain Name <bdswisss.com> is confusingly similar to the trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
6/ Regarding the domain name <wwwbdswiss.com>
This Disputed Domain Name incorporates the Complainant’s trademark with the mere addition of the letters “www” at the beginning of the Disputed Domain Name.
The Panel considers that the addition of the “www” prefix was very likely intended to draw in Internet users who mistyped the Complainant’s website address by omitting the period (or full stop) between “www” and “bdswiss.com”.
In these circumstances, the Panel finds that the Disputed Domain Name <wwwbdswiss.com> is confusingly similar to the trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
7/ Regarding the domain name <banc-de-swiss.com>
This Disputed Domain Name only reproduces the geographic term “swiss” from the Complainant’s trademark while the distinctive part of this Disputed Domain Name is not identical or substantially similar to the Complainant’s trademark.
In these circumstances, the Panel finds that the Disputed Domain Name <banc-de-swiss.com> is not confusingly similar to the trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy have not been satisfied.
Because the Panel has determined that the Disputed Domain Name <banc-de-swiss.com>at issue is not identical or substantially similar to the Complainant’s trademark, there is no need to determine whether the Respondent has rights or legitimate interests in respect of this particular Disputed Domain Name. The following developments will therefore focus on the six other Disputed Domain Names.
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