WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nathalie and Jacques Ariggo, Coutellerie du Petit-Chêne et Heidi-Shop v. Gerard Praplan
Case No. D2003-0672
1. The Parties
The Complainants are Nathalie and Jacques Ariggo, Coutellerie du Petit-Chêne et Heidi-Shop, of Lausanne, Switzerland, represented by , Switzerland.
The Respondent is Gerard Praplan, of Meyrin, Switzerland, represented by Hirsch Kobel, Switzerland.
2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 28, 2003. On August 28, 2003, the Center transmitted by email to Network Solutions, Inc. a request for registrar verification in connection with the domain name at issue. On September 2, 2003, the Center received an amended Complaint.
On September 3, 2003, Network Solutions, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amended Complaint on September 9, 2003. The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 9, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was September 29, 2003. The Response was filed with the Center on September 26, 2003.
The Center appointed Anne-Virginie La Spada-Gaide as the sole panelist in this matter on October 17, 2003. 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
Complainants run a souvenir shop in the city of Lausanne, Switzerland.
"Coutellerie du Petit-Chêne et Heidi-Shop" is the registered owner of a Swiss trademark registration in colors brown and white for various goods of international classes 8, 14, 15, 16, 18, 20, 21, 24, 25, 26 and 28 (no. 484'597). The trademark was filed on November 7, 2000.
The trademark is a composite of the stylized words HEIDI-SHOP and of a logo representing a smiling girl's head with pigtails. Words and logo are depicted in white against a brown square background.
Respondent registered the Domain Name on September 11, 1995. In June 2002, Respondent founded together with Mr. Andreas Doering and Mr. Willy Fantin a limited liability company under the name "H Sàrl", which was registered in the Swiss Registry of Commerce on June 28, 2002.
At the beginning of the year 2003, Mr. Doering and Mr. Fantin started to offer T-Shirts on a website to which the Domain Name was connected. On the front of the T-Shirts were displayed the words "H", under a logo representing a child's head with round eyes but no mouth. This activity was the subject of two press articles, published respectively on May 30, 2003, and July 9, 2003.
On June 3, 2003, Complainants sent an e-mail to the Respondent, stating that the trademark HEIDI-SHOP was registered and that their business was registered in the Registry of Commerce since October 1994 in relation to the trade of Swiss craft articles and gifts. Complainants requested that the exploitation of the Domain Name for the sale of Swiss souvenir articles and T-Shirts using the component HEIDI cease immediately.
5. Parties� Contentions
A. Complainants
Complainants contend as follows in the amended Complaint received by the Center on September 9, 2003:
The mark HEIDI-SHOP & design has been in use since October 1994.
The Domain Name is confusingly similar to the registered mark HEIDI-SHOP & design, as there is no significant difference between HEIDI-SHOP and .
The web site "www." takes advantage of the fame of Complainants, by using a similar name, a similar logo (face of Heidi) and similar colors, and by selling the same products (Swiss products such as T-shirts, music boxes, knives, bags�), thus confusing consumers into believing that they buy products of the registered HEIDI-SHOP brand.
Respondent has no rights or legitimate interests in the Domain Name, because Complainants have not permitted him to use their trademark or to apply for a domain name incorporating such mark, and because Respondent has not been known under that name, nor is he making a legitimate fair use of the Domain Name.
The Domain Name was registered and used in bad faith. Taking into consideration the fame of Complainants' mark, it may be reasonably assumed that Respondent knew of the Complainants and their trademark when the Domain Name was activated on July 20, 2002. Respondent therefore knowingly chose a name identical to the trademark of Complainants, thereby creating a situation at odds with the registered rights of Complainants. By using the Domain Name, Respondent intentionally attempted to attract for commercial gain Internet users to his web site, thus creating a likelihood of confusion with Complainants' mark as to the source, sponsorship, affiliation or endorsement of Respondent's web site or of a product or service on Respondent's web site. Finally, Respondent registered and activated the Domain Name in order to prevent Complainants from reflecting the mark in a corresponding domain name.
Complainants request the transfer of the Domain Name.
B. Respondent
Respondent contends as follows:
"Heidi" is the title of the novel written by Johanna Spyri in 1880 and the first name of the main character depicted in the book. Various translations, adaptations of that novel were made, including movies, comics, a famous Japanese cartoon (produced in 2000 by Zuiyo Ltd.) as well as numerous Japanese mangas. Invariably, the main character is a chubby little girl with red cheeks, inspired from the original character.
Over time, Heidi became a mythical figure conveying various values such as ingenuousness, simplicity, health and innocence. In the course of the nineties, as a result of a new trend for kitsch in design, branding and advertising, Heidi became fashionable again. Commercially, the character was typically used in relation to tourism, dairy food and the sale of souvenirs or arts and crafts items, of confirmed or alleged Alpine origins. There are numerous web sites using Heidi as part of their domain name and there are numerous companies in the world using Heidi as part of their brands.
In short, the Complaint should be dismissed for the following reasons:
- The disputed domain name was registered by Respondent in 1995 already;
- The disputed domain name became active in 1999 with information about Heidi;
- A free e-mail service was created in 2000 using as portal;
- The Respondent created a limited liability company officially registered in the Swiss public registry of companies on June 28, 2002, under the company name " Sàrl" (Sàrl stands for Société à responsabilité limitée);
- The Respondent knew that many web sites include Heidi as part of their domain name (currently there are approximately 7,575 such web sites);
- Until he received an e-mail from the Complainants on June 3, 2003, the Respondent was completely unaware of the Complainants' existence and alleged trademark rights over the name HEIDI-SHOP.
Given the difference between the disputed domain name registered by the Respondent and the trademark HEIDI-SHOP alleged by the Complainants, the Respondent denies that the disputed domain name is confusingly similar to the alleged trademark in the meaning of the Policy, paragraph 4(a)(i). The Respondent initially registered the disputed domain name for legitimate noncommercial purposes in the meaning of the Policy, paragraph 4(c)(iii) and then used it for a bona fide offering of goods in the meaning of the Policy, paragraph 4(c)(i), through a small legal entity founded in Switzerland. Registration and use of the disputed domain name were made in good faith.
The Respondent believes that the present case is a case which should fall within the jurisdiction of regular State courts and not a UDRP Panel. This is a local dispute between two Swiss nationals over complex issues pertaining to trademark and trade name rights. This, and the rightful position of the Respondent are clear indications that the Complaint was filed in bad faith.
Respondent requests a finding of reverse domain name hijacking in the meaning of the Rules, paragraph 1.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, Complainants must show that:
i) The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainants have rights; and
ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainants own the Swiss trademark HEIDI-SHOP & design. This trademark is a combination of the verbal elements HEIDI-SHOP and of several graphical elements, consisting in: the slightly stylized writing of the words HEIDI-SHOP, the head of the little girl with pigtails, the square brown background.
The Domain Name, which comprises only the word HEIDI, is obviously not identical to the trademark of Complainants. To decide whether it is substantially similar to the trademark at issue, it is necessary to examine how the influence of the word HEIDI on the overall impression produced by the mark compares with the influence of the other - verbal or non verbal - elements. If the overall impression produced by the mark is influenced mostly by the other elements not reproduced in the Domain Name, there shall be no confusing similarity.
The verbal element SHOP is a generic term, so that is clearly not apt to impress much the memory of consumers. The brown background is also banal and cannot be seen as a dominant element. On the other hand, the little girl's head, which is fairly big, is certainly an important element of the mark. The Panel tends to consider here that visually, the head logo and the word HEIDI influence the impression produced by the mark in equal parts, even if the first name "Heidi" is encountered quite frequently in Switzerland, either as a given name or as the name of the literary heroine created by Johanna Spyri. In such circumstances, and taking into account the fact that graphic elements may not be reproduced in a domain name, the Panel is of the opinion that the Domain Name may be considered as substantially similar to Complainants' trademark.
The Panel wishes to point out here that the existence of other domain names or web sites containing the term "heidi" is not relevant to judge the identity or substantial similarity between the disputed domain name and a trademark. Such a circumstance is on the other hand relevant when determining whether registration was effected in bad faith.
Respondent also argues that the name HEIDI conveys values that are so typical of the trade in souvenirs, knives, cuckoo-clocks, watches, T-shirts, etc., that it should not be monopolized by one provider. However, as Respondent correctly concludes, this question is one for the national courts, and not for this Panel. For the limited purpose of this proceeding, the Panel considers that the name HEIDI, which is not a generic term, is not excluded from trademark protection.
Complainants have thus satisfied the first condition set forth in paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Respondent alleges that the Domain Name was activated in 1999 in relation to a web site displaying information on Heidi, and was used as a portal for a free e-mail service since 2000. The Panel doubts however of the sufficiency of the submitted evidence in this respect: the "Internet Archive Wayback Machine" results do not provide information on the contents of the web site, and the "user demographics" do not mention the Domain Name. This is in any case of no material importance, as the Panel finds for reasons set out below that Respondent has a legitimate interest in the Domain Name.
The Respondent is a partner in a limited liability company whose name is "H Sàrl", founded before Complainants informed Respondent of their trademark rights. Such a circumstance constitutes in the Panel's view a legitimate interest within the meaning of paragraph 4(c) of the Policy, as it is similar in nature to the case in which the Respondent is commonly known by the domain name, either as an individual, a business or an organization (paragraph 4(c)(ii) of the Policy).
Moreover, it must be considered in view of the facts alleged and evidenced in the Response that Respondent has used the Domain Name in connection with a bona fide offering of goods before any notice of the dispute from Complainants, within the meaning of paragraph 4(c)(i) of the Policy. Indeed, it is established that Respondent associated himself with Mr. Doering and Mr. Fantin in June 2002, and that these two persons started selling T-shirts on the web site "www." since the beginning of the year 2003, several months before Complainants sent an e-mail to Respondent asserting trademark rights and requiring that use of the Domain Name cease. The fact that Respondent does not appear to be personally involved in the exploitation of the web site is not relevant: the Panel is of the view that use authorized by the registrant should be assimilated to use by the registrant himself.
In view of the above, Complainants have failed to show that Respondent has no rights or legitimate interests in the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As Complainants have not been able to show the absence of legitimate interest on the part of Respondent, so that the Complaint must fail for this reason, it would not be necessary to examine the issue of bad faith. For the sake of completeness only does the Panel make the following considerations.
Bad faith registration exists normally only when the complainant can rely on trademark rights that are anterior to the registration of the domain name (see Plasma Net, Inc. v. John Zuccarini, WIPO Case No. D2002-1101). It is not contested here that the Domain Name was registered on September 11, 1995, i.e. years before Complainants' trademark application was filed. Moreover even if, as Complainants contend, the denomination HEIDI-SHOP was used since October 1994, it is doubtful (and any event not demonstrated) that it may have become notorious only one year later.
As far as use of the Domain Name is concerned, it is in theory possible that Respondent and his partners knew of Complainants' business and trademark registration when they started using the Domain Name in connection with the sale of souvenir items. If such were the case, there might, maybe, be grounds for considering that use of the Domain Name was made in bad faith. The Panel does not find, however, that the Complainants, who bear the burden of proof, have submitted any evidence that such knowledge existed. Moreover, had Respondent known of Complainants' shop, he would not have had to infer from it the existence of trademark rights. Indeed, the name HEIDI is used by many people on the web (as evidenced by the "Alta Vista" search results submitted by Respondent), and is often associated with Swiss folklore, so that Respondent did not have to suspect that Complainants had particular rights to this name.
In view of the above, the Complainants have also failed to show that the Domain Name was registered and used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
D. Reverse Domain Name Hijacking
Respondent has requested the Administrative Panel to find that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding, in accordance with paragraph 15(e) of the Rules. Respondent contends that Complainants made allegations of cybersquatting and bad faith in a reckless manner, without regard as to whether they were supportable or not, and in knowing disregard of the likelihood that Respondent possessed a legitimate interest.
Obviously, the fact that the Domain Name was registered long before Complainants' mark and was used in connection with a commercial web site before Complainants notified Respondent of the dispute should have made it clear for Complainants that their Complaint would most probably fail. However, the circumstances of the case lead the Panel to doubt that Complainants acted in bad faith. First, Complainants owned a trademark which was registered before Respondent's souvenir selling activity started. Prior trademark rights might allow their owner to prevail in national courts, where bad faith is not a condition of trademark infringement and where similarity of goods and services is relevant. Taking into account the differences between national law and the UDRP, it is therefore understandable that Complainants might have believed that they were in a strong position. Finally, it does not appear that Respondent replied to Complainants' message of June 3, 2003, or contested Complainants' claims before the procedure was commenced.
In such circumstances, the Panel is not convinced that Complainants acted in bad faith when filing the Complaint.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Anne-Virginie La Spada-Gaide
Sole Panelist
Date: October 31, 2003
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