ARBITRATION

AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

BERNINA International AG v. Domain Administrator, Name Administration Inc.
(BVI)
Case No. D2016-1811

1. The Parties
The Complainant is BERNINA International AG of Steckborn, Switzerland, represented by PYTHON,
Switzerland.
The Respondent is Domain Administrator, Name Administration Inc. (BVI) of Grand Cayman, Cayman
Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by John
Berryhill, Ph.d., Esq., United States of America.

2. The Domain Name and Registrar

The disputed domain name <bernette.com> is registered with Uniregistrar Corp (the Registrar).

3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) on
September 6, 2016. On September 7, 2016, the Center transmitted by email to the Registrar a request for
registrar verification in connection with the disputed domain name. On September 8, 2016, 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 September 12, 2016. In accordance with the Rules,
paragraph 5, the due date for Response was October 2, 2016. The Respondent filed a request for an
additional four calendar days to file the Response. In accordance with paragraph 5(b) of the Rules, the
Center granted the extension of time. The Response was filed with the Center October 6, 2016.
The Center appointed Adam Taylor, David H. Bernstein and Richard G. Lyon as panelists in this matter on

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October 26, 2016. The Panel finds that it was properly constituted. Each member of 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, incorporated in Switzerland, has been selling sewing machines branded Bernette
since 1985.
The Complainant owns numerous trade marks worldwide for the term BERNETTE including, by way of
example, Swiss trade mark no. 328231, filed February 5, 1979 in class 7 and international trade mark no.
542659, dated September 7, 1989, in classes 7, 8, 9, 10, 11, 16, 20, 21, 23, 24, 26 and 28.
The Respondent acquired the disputed domain name in 2007 in an Internet auction.
Screenshots provided by the Complainant show that, since at least 2010, the disputed domain name has
been used for a landing page with the following subject headings: Baby, Change Name, Domain, First
Names, Genealogy, Infant, Internet Domain Name, Internet Name, Name Label and Name Ring. A
purchase enquiry link has also appeared on the site since at least 2013.
The Complainant made purchase enquiries for the disputed domain name in 2010 and 2015. On the second
occasion, the Respondent responded with a price of USD 26,000.
On August 16, 2016, following a further purchase enquiry by the Complainant, this time using a pseudonym,
a broker acting for the Respondent emailed in response on behalf of its client saying that based on this
being both a surname and female first name, along with other criteria, they have determined a value of
$29,000 USD.
On August 17, 2016, the Complainants lawyer sent an enquiry using his personal email address saying I
would like to buy the domain name bernette.com. A broker responded with a quote of USD 29,000.
Although the record is not entirely clear, it appears that, over the next few days, the lawyer made similar
enquiries and received similar responses from different brokers each time.
Ultimately, using his professional email address, the Complainants lawyer emailed the Respondent on or
about August 19, 2016, asserting his clients trade mark rights. He said that his client did not have a budget
in the region USD 29,000 but was prepared to pay a reasonable amount in order to cover your clients
expenses.
On August 19, 2016, the Respondents lawyer emailed in response reiterating that the disputed domain
name had been registered and used for nine years due to its primary significance as a surname and female
first name and drawing attention to the fact that the website advertising results related to personal names.
He observed that the Respondents use of the disputed domain name was unrelated to sewing machines.
He highlighted the history of enquiries relating to the disputed domain name emanating from the
Complainant, none of which included any assertion of trade mark rights. He pointed out the Respondent had
never solicited any purchase offer from the Complainant and asserted that the Complainant was engaged in
a crude entrapment strategy of the kind which generally failed under the UDRP and drew attention to some
supporting UDRP decisions. He pointed out that one of these cases, involving the Respondent,
demonstrated that the Respondent owned and offered for sale a substantial number of domain names
corresponding to personal names. He invited the Complainant to either negotiate to buy the disputed
domain name or to file a UDRP proceeding.

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5. Parties Contentions
A. Complainant
A summary of the Complainants contentions is as follows:
The Complainant is virtually the exclusive owner of trade mark registrations for BERNETTE worldwide.
The disputed domain name is identical to the Complainants trade mark.
The Complainant is not aware of any rights or legitimate interests of the Respondent in respect of the
disputed domain name.
The Respondent has no registered trade mark for BERNETTE.
The Respondent claims that it registered the disputed domain name as a surname and female first name but
the Respondents own name is Name Administration Inc.
The Respondents only use of the disputed domain name has been to offer it for sale.
The disputed domain name was registered and is being used in bad faith.
The disputed domain name was acquired primarily for the purpose of sale to the Complainant in accordance
with paragraph 4(b)(i) of the Policy.
The Respondent must have been aware of the Complainants trade mark at the time of acquisition of the
disputed domain name in 2007 as the Complainant is a world-leading manufacturer of sewing machines and
owns many trade marks worldwide for BERNETTE, dating back to 1978.
The Respondent obtained the disputed domain name from apparently dubious Asian sources.
The Respondents only clear use of the disputed domain name has been to offer it for sale. While the site
includes links to other websites, those topics, such as Domain, Internet Domain Name, Change Name
and Name Label, also relate to the sale of domain names. The links constitute token use designed to give
the impression that the Respondent possesses legitimate interests.
Use of a privacy or proxy service can constitute bad faith. The Respondent claimed to act for a client but has
not revealed the clients identity. In particular, the Complainant received emails from brokers at
Uniregistry.com and DomainNameSales.com claiming to represent the current owner of bernette.com. The
concealment of the owners identity indicates bad faith.
The Respondents proposed sale price of USD 29,000 exceeds the Respondents out-of-pocket expenses
directly related to the disputed domain name.
The Respondent attempted to attract Internet users to its website, for commercial gain, by creating a
likelihood of confusion with the Complainants mark in accordance with paragraph 4(b)(iv) of the Policy.
Google Switzerland searches bring up many websites relating to the Complainants products. Due to the
well-known nature of the Complainants trade mark, Internet users will be attracted and confused by the
disputed domain name, which is identical to the Complainants trade mark and does not include any
additional elements to avoid the risk of confusion and dilution.
It would have been easy for the Respondent to include a disclaimer on its website but it has not done so.
The Respondent owns over 240,000 domain names. The Respondent and the Registrar are affiliated
entities. They are stockpiling domain names via a network of companies at an offshore location without

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disclosing the beneficial owners identity. Such circumstances indicate bad faith. The Respondents only
interest is in selling domain names and by operating offshore the Respondent is trying to hide by erecting
legal hurdles against trade mark owners.
B. Respondent
A summary of the Respondents contentions is as follows:
The Complainant has demonstrated registered trade mark rights in the term Bernette for sewing machines.
Screenshots show the disputed domain name being used for advertising links suggestive of personal names
and naming subjects since well before the Complainant raised any dispute.
Evidence shows that Bernette is a common female first name and a surname, having its origin in the
Germanic Bern for bear. It is also used by various businesses unrelated to the Complainant.
Many Internet users type in their own name or a proposed baby name as a .com name out of curiosity. The
purpose of the Respondents personal name lander, used by the Respondent for many personal name
domain names, is to highlight commercial resources about names, naming, genealogy, and so on and the
enquiry link also signals that the name is available for purchase for the reasons collectively suggested by the
search topics posted to the page.
The effectiveness of the strategy is shown by the fact that the disputed domain name has attracted enquiries
from some 14 parties unconnected with the Complainant.
The Complainant has spammed the Respondents enquiry form with multiple enquiries for several years,
never asserting any trade mark rights.
The Complainants trade mark does not prevent the Respondent from using the disputed domain name in
connection with its significance as a personal name. The Respondent does not use or offer the disputed
domain name for sale in relation to sewing machines.
Accordingly, the Complainant has failed to carry its burden of establishing the second element of the Policy.
The Respondent is very well known to UDRP panels, its business having been extensively discussed in
numerous UDRP decisions and it has been properly and consistently identified as the registrant of the
disputed domain name.
The Respondent, and the Registrar, are owned by Frank Schilling, a well-known member of the Cayman
business community. These businesses are not offshore in the pejorative fashion suggested by the
Complainant and there is no concealment of identity.
The disputed domain name was registered to a Korean registrant before the Respondent acquired it via an
expired domain names auction. The Respondent had no dealings with any prior registrant in acquiring the
disputed domain name. The Complainants assertions are untrue. The language used is also inappropriate.
The correspondence elicited by the Complainants counsel from different brokers was a consequence of
repeated sales enquiries to the Respondent. Such Plan B tactical use of the Policy is a regular and
frowned-upon feature of proceedings under the Policy.
Despite the Respondents pre-dispute correspondence, the Complaint did not include the Complainants
purchase enquiries, and merely submitted the alleged offers of sale obtained in response.
This type of Plan B approach using the Policy as a backup when solicited negotiations are deemed
unsatisfactory by a mark owner is evidence of reverse domain name hijacking.

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6. Discussion and Findings
A. Identical or Confusingly Similar
It is not in dispute that the Complainant has acquired rights in the mark BERNETTE by virtue of its registered
trade marks for that term.
The disputed domain name is identical to the Complainants trade mark, disregarding the generic Top-Level
Domain.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the
Policy.
B. Rights or Legitimate Interests
It is unnecessary to consider this element in light of the Panels conclusion below under the third element.
C. Registered and Used in Bad Faith
In the Panels view, the Complainant has fallen well short of establishing registration and use in bad faith.
The Complainant relies principally on paragraph 4(b)(i) of the Policy, which requires registration 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.
While some of the Complainants trade mark registrations predate the Respondents acquisition of the
disputed domain name in 2007, there is nonetheless no evidence that the Respondent knew or was likely to
have been aware of the Complainants mark on acquisition of the disputed domain name.
The Complainant has produced some Google Switzerland searches in which the Complainant features
prominently as well as some brochures but there is nothing demonstrating the scale of its activities or the
extent of its alleged worldwide reputation. The Complainant declined to produce evidence of its sales
figures, saying that they were confidential, but it indicated that it would nonetheless submit them if
considered essential by the Panel. However, if the Complainant wanted the Panel to consider certain
evidence, then it should have produced it in conjunction with its pleading. It should not rely on the possibility
that the Panel might decide to request further evidence (which it declines to do). In any case, the
Complainant could surely have produced other non-confidential evidence of scale or reputation had it wished
to so. That said, it is unlikely that such evidence would have tipped the balance in the Complainants favour,
given the other matters set out below.
The Respondent has established that the term Bernette is used both as a female first name and a
surname, albeit a comparatively rare one.
The Respondent has provided evidence that its registration and use of the disputed domain name is part of a
pattern whereby it has registered many other domain names comprising personal names and then offered
them for sale via a website at the relevant domain name in conjunction with a landing page with subject
headings similar to those used in this case, which are broadly relevant to personal names.
In any case, as mentioned above, there is nothing suggestive of use by the Respondent of the disputed
domain name in a manner related to sewing machines which might have indicated relevant knowledge on
the part of the Respondent.
The Complainant relies on what it describes as the proposed sale price of USD 29,000. However, selling
property or a contractual right to which one has rights is not necessarily bad faith; context is key. Here,
there is no evidence that the Respondent was purposefully trying to sell the disputed domain name to the
Complainant to take advantage of the Complainants trade mark rights. Nor was this offer, made in response

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to a general, anonymous inquiry, evidence that the Respondents acquisition of the disputed domain name,
some nine years earlier, was for the purpose of sale to the Complainant which is a fact that the
Complainant must establish if the Complainant wants to prove bad faith registration as to its trade mark
rights under paragraph 4(b)(i) of the Policy.
The Complainants argument based on paragraph 4(b)(iv) of the Policy also fails, not least because there is
nothing to show that the Respondent created a likelihood of confusion, intentionally or otherwise. For
reasons explained above, there is no evidence indicating that the Respondent was likely to have been aware
of the Complainant at any relevant time and there is also a lack of evidence of use of the disputed domain
name in connection with sewing machines or in any other way likely to have created confusion on the part of
the Complainants customers. There is no obvious reason why the Respondent ought to have included a
disclaimer on its website, as the Complainant has claimed.
The Complainants claim that the Respondent acquired the disputed domain name from a dubious source
does not help the Complainants case. If the Complainant wanted to put forward such a claim, it ought to
have backed it up with evidence demonstrating (a) the exact nature of the allegedly dubious conduct of the
previous registrant and (b) exactly how the Respondent is allegedly implicated in such conduct. Here, the
Complainant has provided no such evidence and its assertions are thus no more than speculation or an
effort to suggest some unspecified impropriety. The Policy and Rules demand evidence, not unsupported
implication. In fact the Respondent has confirmed that it simply acquired the disputed domain name by
auction following its expiry and that it never dealt with the previous registrant.
The Panel also rejects the Complainants claim that the Respondent and/or its brokers somehow sought to
conceal the Respondents identity. The brokers simply stated that they were acting for the current owner of
the disputed domain name and that owner is the Respondent, which is named as the registrant in the WhoIs.
The fact that the Respondent owns many domain names is, of itself, irrelevant, as is the fact, if true, that the
Respondents only interest is in selling domain names. Trafficking in domain names is, of itself, entirely
legitimate if the Respondent has rights or legitimate interests in the domain names and/or is not trafficking in
the domain names in bad faith.
The Respondent has established that it is genuinely located in the Cayman Islands and that it is not based
offshore in the sense of an illicit manoeuvre to evade trade mark owners.
The Panel therefore concludes the Complainant has failed to establish the third element of paragraph 4(a) of
the Policy.
D. Reverse Domain Name Hijacking (RDNH)
The Respondent argues that the Complainant has been guilty of RDNH.
Paragraph 15(e) of the Rules provides that, if after considering the submissions the panel finds that the
complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was
brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint
was brought in bad faith and constitutes an abuse of the administrative proceeding. RDNH is defined under
the Rules as using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a
domain name.
The Panel considers that the Complainant has been guilty of RDNH for the following reasons:
1.

The Complainant has failed by a large margin. In the Panels opinion, the Complainant knew or at
least should have known that it could not prove one of the essential UDRP elements. For example, it
is a well-settled Policy precedent that some proof of targeting (i.e., using the disputed domain name to
take advantage of the Complainants marks in whatever manner) is required to establish bad faith. As
explained above, there was no such evidence in this case. Furthermore, the Complainant relied
heavily on the mere fact that the Respondent trafficked in domain names, whereas it is again well-

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established under the Policy that such activity of itself may well be entirely legitimate, depending on
the circumstances.
2.

The Complaint lacks candour. In particular:

a.

The Complainant relies on a proposed sale price of US$ 29,000 and exhibits various broker
communications in August 2016 putting forward this price. But its submissions are misleading
because it nowhere provides details of the sales enquiries on behalf of (though not in the name of) the
Complainant which prompted such offers or even mentions that the Respondents offers were
solicited. Nor does the Complainant refer to its earlier offers in 2010 or 2015. The Panel would add
that the Respondents account of the relevant purchase enquiry history is also somewhat incomplete.

b.

The Complainants description of the Respondents business structure is highly inaccurate. The
Complainant is represented by counsel, who ought to know better and who is under an obligation
imposed by paragraph 3(b)(xiii) of the Rules to undertake at least minimal due diligence before filing a
complaint. The Panel sees no excuse for not recognising Frank Schilling and his businesses, which
have been involved in many previous UDRP cases or, if not familiar with them, doing a basic Internet
search.

3.

In the Panels view, this is a classic Plan B case, i.e., using the Policy after failing in the marketplace
to acquire the disputed domain name. This stratagem has been described in several earlier UDRP
cases as a highly improper purpose and it has contributed to findings of RDNH. See, e.g., Patricks
Universal Export Pty Ltd. v. David Greenblatt, WIPO Case No. D2016-0653 (holding Plan B
approach as a basis for a finding of RDNH) and Nova Holdings Limited, Nova International Limited,
and G.R. Events Limited v. Manheim Equities, Inc. and Product Reports, Inc., WIPO Case No.
D2015-0202 (use of UDRP proceeding to increase bargaining leverage in sale negotiations called a
highly improper purpose).

4.

Many of the above points were specifically drawn to the Complainants attention in the Respondents
pre-action letter, mentioned in section 4 above. This should have given the Complainant serious
pause for thought but it ploughed on regardless.

7. Decision
For the foregoing reasons, the Complaint is denied and the Panel finds that the Complainant has been guilty
of RDNH.

Adam Taylor
Presiding Panelist

David H. Bernstein
Panelist

Richard G. Lyon
Panelist
Date: November 7, 2016