#Swiss trademark : Bolex.com #domain lost in #UDRP after 21 years

Bolex.com, a domain name registered in 1998, has been lost via the UDRP process; the Respondent did not respond.

When such a lack of response fails to deliver the Respondent’s angle, the fact that 21 years passed since the registration of Bolex.com mattered little.

It appears that the BOLEX mark belongs to a Swiss camera manufacturer, and is not a Rolex typo. Still, it’s troubling seeing that after more than two decades, a company can step in to get the matching .com, Bolex.com.

Full details on the decision follows:

WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bolex International SA v. Kurt Hall & Nathan Lafionatis
Case No. D2019-2650

1. The Parties

The Complainant is Bolex International SA, Switzerland, internally represented.

The Respondent is Kurt Hall & Nathan Lafionatis, United States of America.

2. The Domain Name and Registrar

The disputed domain name <bolex.com> is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 4, 2019.

The Center appointed Assen Alexiev as the sole panelist in this matter on December 11, 2019. 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

The Complainant is a Swiss company established in 1970. It is active in the manufacturing and repair of cinema cameras and projectors.

The Complainant is the owner of the trademark BOLEX with registration No. 2P-302766, registered in Switzerland on February 29, 1980, for goods in International Class 9 (the “BOLEX trademark”).

The disputed domain name was registered on September 18, 1998. It resolves to a webpage that contains various links related to cameras, projectors, and related equipment and accessories.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, and refers to the BOLEX trademark in this regard.

According to the Complainant, the Respondent does not have rights and legitimate interests in the disputed domain name. The Complainant points out that the Respondent exploits the popularity of the BOLEX trademark for advertising purposes for commercial gain without being authorized by the Complainant to use the BOLEX trademark and to register a domain name that incorporates it. The website at the disputed domain name contains advertising links containing keywords related to the business of the Complainant, which damages the reputation of the Complainant.

The Complainant contends that the Respondent has registered and used the disputed domain name in bad faith. According to the Complainant, the Respondent intentionally attempts to attract for commercial gain Internet users to the website at the disputed domain name by creating a likelihood of confusion with the BOLEX trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the products and services on the Respondent’s website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(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; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]”

The Respondent has however not submitted a Response and has thus not disputed the Complainant’s statements and evidence in this proceeding.

A. Identical or Confusingly Similar

The Complainant has provided evidence of and has thus established its rights in the BOLEX trademark.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD of the disputed domain name.

The relevant part of the disputed domain name is therefore the element “bolex”. It is identical to the BOLEX trademark.

In view of the above, the Panel finds that the disputed domain name is identical to the BOLEX trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent has not been authorized by the Complainant to use the BOLEX trademark and/or to register a domain name that incorporates it, and uses the disputed domain name for a website that contains advertising links with keywords that relate to the Complainant’s products and activities. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has not alleged that it has rights or legitimate interests in the disputed domain name and has not disputed the statements of the Complainant and the evidence provided by it.

The disputed domain name is identical to the distinctive BOLEX trademark. As summarized in section 2.5.1 of the WIPO Overview 3.0, a domain name that is identical to a complainant’s trademark carries a high risk of implied affiliation. Previous UDRP panels have held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. In addition, the disputed domain name resolves to a website that contains pay-per-click links related to photographic cameras and projectors – the very products that Complainant manufactures and repairs.

In view of the above, and in the lack of any evidence to the contrary, it appears to the Panel as more likely than not that the Respondent, being aware of the attractiveness of the BOLEX trademark, has registered and used the disputed domain name in an attempt to exploit the trademark’s goodwill for commercial gain by confusing Internet users and attracting them to the Respondent’s website. In the Panel’s view, such conduct does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use, and therefore does not give rise to rights and legitimate interests of the Respondent in the disputed domain name.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

As discussed above, the disputed domain name is identical to the Complainant’s BOLEX trademark and resolves to a website that contains pay-per-click links related to the products that the Complainant manufactures and repairs. The Complainant contends that the Respondent has not received any authorization for its activities by the Complainant, and that the Respondent does not dispute the statements of the Complainant and does not provide any plausible explanation about the registration and use of the disputed domain name.

Taking the above into account, the Panel accepts that the Respondent has registered and used the disputed domain name with knowledge of the Complainant and targeting the BOLEX trademark. It is likely that by creating a likelihood of confusion with the Complainant’s BOLEX trademark, the Respondent has attempted to attract traffic to the disputed domain name and confuse Internet users that they are reaching an online location of the Complainant and then expose them to various pay-per-click links related to products that are identical or related to the products of the Complainant, for commercial gain.

Therefore, the Panel finds that the disputed domain name has been registered and used in bad faith.

The Panel notes that the disputed domain name was registered in 1998, while the Complaint was filed in 2019. Despite this period of time having passed, as noted in section 4.17 of the WIPO Overview 3.0, panels have widely recognized that the mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits.

The present Panel shares this view, and since the Respondent has not argued and shown to have relied on the Complainant’s delay in any manner, the Panel concludes that this delay does not prevent the Complainant from prevailing on the merits.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <bolex.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: December 16, 2019

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