GFPI S.A. v. Michael Meyer et al.
Claim Number: FA1702001716444
Appellant (hereinafter referred to as “the Complainant”): GFPI S.A. of La Chaux-de-Fonds, Switzerland.
Complainant Representative: SOPRINTEL S.A. of La Chaux-de-Fonds, Switzerland.
Appellee (hereinafter referred to as “the 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 or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
Mr. Peter Müller, as Examiner.
Complainant submitted: February 8, 2017
Commencement: February 8, 2017
Response Date: February 20, 2017
Appeal submitted: March 6, 2017
Appeal Response submitted: March 8, 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").
The Respondent requests the overruling of the Final Determination and the Remedy ordered and to return the Domain Name to the control of the Respondent.
Clear and convincing evidence.
URS Procedure 12.1 provides that each party shall have the right to seek a de novo appeal of the Determination based on the existing record within the URS proceedings. The appellant must identify the specific grounds on which the party is appealing.
Grounds of Appeal:
The Respondent again points to the fact that the disputed domain name was registered but not used in connection with a website by the Respondent. The Respondent argues that, consequently, no trademark rights are infringed. It also questions the URS proceeding and the FORUM's role per se and argues that the Complainant targets the Respondent. The Respondent states that it is willing to consider reasonable offers for the disputed domain name.
Reply of Appeal:
The Complainant submitted additional evidence, which, however, does not pre-date the filing of the Complaint. Therefore, the Examiner will not refer to such additional evidence. In addition, the Complainant again states that all three elements of the URS are demonstrated and requests that the disputed domain name shall remain suspended.
Findings of fact and law:
URS Procedure 1.2.6, requires the Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.
[URS 188.8.131.52.] The registered domain name is identical or confusingly similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
The Complainant has provided evidence that it is registered owner of a Swiss trademark for GF GREUBEL FORSEY. The Examiner concludes that the disputed domain name is confusingly similar to the Complainant's trademark as the specific top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name and as the disputed domain name reproduces the Complainant’s trademark with the exception of the acronym “GF”.
Therefore, the Complainant satisfied the elements of URS Procedure 184.108.40.206.
[220.127.116.11.] The Registrant has no legitimate right or interest to the disputed domain name.
The Complainant has substantiated that the domain owner has no rights or legitimate interests in the disputed domain name. The Respondent did not deny the Complainant’s assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain name. In fact, the disputed domain name resolves to a placeholder website with no real or relevant content.
The Examiner finds that the Respondent has no rights to or legitimate interests in the disputed domain name and that the Complainant satisfied the elements of URS Procedure 18.104.22.168.
[22.214.171.124.] The disputed domain name was registered and is being used in bad faith.
The disputed domain name corresponds to the Complainant’s highly distinctive trademark GF GREUBEL FORSEY. Furthermore, the top level of the disputed domain name clearly refers to the Complainant’s products, namely watches. It is inconceivable that the Respondent registered the disputed domain name unaware of the Complainant and its rights in the trademark GF GREUBEL FORSEY.
As to bad faith use, the Examiner is convinced that the disputed domain name was used in bad faith as well. At present, the disputed domain name is inactive. Previous URS decisions have held that the passive holding of a domain name could support, by clear and convincing evidence, that a domain name is being used in bad faith. However, passive holding does not per se lead in a finding of bad faith use. See Netflix, Inc. v. Masterclass Media et al., FA 1639527 (Forum Oct. 2, 2015); Allianz SE v. Registrant of xn--49s296f.xn--3ds443g / Rich Premium Limited / Domain Administrator, FA 1579170 (Forum Oct. 1, 2014). On the contrary, passive holding is equal to active use in bad faith only under specific circumstances. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
In the present case, the Examiner finds that the overall examination of the following facts of this case justify a finding of passive holding:
1. The top level of the disputed domain name corresponds to the Complainant’s main product and therefore, the disputed domain name clearly refers to the Complainant;
2. The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use;
3. There does not appear to be any possible or conceivable good faith use of the disputed domain name that would not be illegitimate.
Furthermore, the Complainant also contends that the disputed domain name prevents it from reflecting its trademark in a corresponding domain name and that the disputed domain name was registered by the Respondent “in the hope to be contacted by the Complainant and in order to be able then to request the Complainant to buy it”. Even though the Complainant has not provided supporting evidence in this regard, these motives seem to be very likely.
As a result, the Examiner finds that the Complainant has also satisfied the elements of URS Procedure 126.96.36.199.
No abuse or material falsehood.
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 names be SUSPENDED for the duration of the registration.
Mr. Peter Müller, Examiner
Dated: March 22, 2017
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