GFPI S.A. v. Michael Meyer et al.
Claim Number: FA1702001716444
Complainant: GFPI S.A. of La Chaux-de-Fonds, Switzerland.
Complainant Representative: SOPRINTEL S.A. of La Chaux-de-Fonds, Switzerland.
Respondent: Michael Meyer of Biel, International, CH.
Dario Baumgartner / Hostpoint AG of Rapperswil-Jona, SG, International, CH.
Sicherheitsbeauftragter Flughafenpolizei of Biel, Unknown, Switzerland.
REGISTRIES and REGISTRARS
Registries: Sand Shadow, LLC
Registrars: Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Examiner in this proceeding.
Petter Rindforth, as Examiner.
Complainant submitted: February 8, 2017
Commencement: February 8, 2017
Response Date: February 20, 2017
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Findings of Fact:
The Complainant is the owner of the trademark GF GREUBEL FORSEY (combined), registered in Switzerland as Reg. No. P-516451 on November 25, 2003, and renewed on May 8, 2013, covering goods in Intl Class 14, the said registration being the base for the Complainant's International Registration No 828152 of March 26, 2004, covering more than 70 countries and regions world wide.
The Complainant has provided evidence of use of the trademark, by Certificate of Validation from the Trademark Clearinghouse.
The disputed domain name <greubel-forsey.watch> was registered on January 10, 2017.
Legal Findings and Conclusion:
URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended:
IDENTICAL OR CONFUSINGLY SIMILAR
The Complainant met the standard sets out in 1.2.6.1. of the URS Procedure since the Complainant has proved its right to the valid Swiss Trademark registration No. P-516451 GF GREUBEL FORSEY (combined), and International Registration No 828152 GF GREUBEL FORSEY. Further, the Complainant has proved that the said trademark is in current use by presenting Certificate of Validation from the Trademark Clearinghouse.
The relevant part of the disputed domain name is
<greubel-forsey.watch> as the added top-level domain – being a required element of every domain name – is generally irrelevant when assessing whether or not a mark is identical or confusingly similar and in this case does nothing to distinguish the disputed domain name from the Complainant’s trademark.
However, in this case the added top-level domain clearly relates to the goods covered by the Complainant's trademark, and therefore in fact increase the similarity. The disputed domain name thereby consists of the dominant word part of the Complainants trademark GREUBEL and FORSEY - although the two words here combined with a hyphen.
The Examiner concludes that the disputed domain name is confusingly similar to the Complainant's trademark GF GREUBEL FORSEY.
NO RIGHTS OR LEGITIMATE INTERESTS
The Respondent does not have any rights in <greubel-forsey.watch>, as the Complainant has not authorized the Respondent to register a domain name containing its registered and used trademark GF GREUBEL FORSEY.
As GF GREUBEL FORSEY is a distinctive and well known trademark, especially for watches, the Examiner also draw the conclusion that the Complainant has shown that the Respondent cannot have any legitimate interests in registering and using <greubel-forsey.watch>.
The Examiner further notes that the Respondent has not contested the Complainant's allegations in this part.
To summarize, the Examiner find that the Complainant has established that the Respondent has no rights or legitimate interests in
<greubel-forsey.watch>.
BAD FAITH REGISTRATION AND USE
According to the URS Procedure 1.2.6.3, examples of circumstances that demonstrate bad faith registration and use by the Registrant/Respondent include:
a. Registrant has registered or acquired the 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 documented out-of pocket costs directly related to the domain name; or
b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.
In this case, the Complainant has shown that the Respondent has linked the disputed domain names to a web site simply stating (in French):
"Bonjour, ce domaine vient d´être acheté...", meaning "Hello, this domain has just been bought...", and then followed by some general information (in French) of what the domain name holder can do by using the domain name services offered by a company called Hostpoint.
The Respondent states that the disputed domain name is parked and not in use, that a domain name is not the same as a trademark, and that therefore "the mere registration of a domain name is not considered a breach of trademark rights".
The Examiner is however not convinced by the Respondent's limited arguments. The Respondent is form the same country as the complainant - Switzerland. The Respondent has shown no legitimate interest in the disputed domain name - only pointed out that the Respondent "was just faster than [the Complainant] to register <greubel-forsey.watch>.
These facts and statement further clearly indicates that the Respondent registered the disputed domain name in bad faith.
The use, even if it is not traditionally active use, to point
<greubel-forsey.watch> to a parking site, with just general information on what a holder of a domain name can do with activating e-mail, creating web sites, etc, are further indications and messages to the Complainant that this domain name - clearly referring to the goods provided by the Complainant - can or will shortly be used in some way. The Examiner cannot see this in any other way than a "hidden" message to the Complainant to quickly buy <greubel-forsey.watch> from the Respondent - likely for valuable consideration in excess of documented out-of pocket costs directly related to the domain name.
Thus, the Examiner concludes that the Complainant has established that the Respondent has registered and used <greubel-forsey.watch> in bad faith.
The Respondent has alleged that the Complaint was brought in an abuse of the URS Policy, referring to that the disputed domain name is parked and therefore not in use.
As stated above, the Examiner notes that "parking sites" may well be considered as use, as the domain name in fact relates to a web site with some information and/or messages to the visitors, seeking for information on the Complainant and their trademark and goods.
As the Examiner finds that the Complainant has established that the Respondent has registered and used <greubel-forsey.watch> in bad faith, the Examiner cannot find any evidence of abuse.
After reviewing the parties’ submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name be SUSPENDED for the duration of the registration :
<greubel-forsey.watch>
Petter Rindforth, Examiner
Dated: February 21, 2017
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