WIPO Arbitration and Mediation Center
EXPERT DECISION
Cycle-Tech GmbH v. Patrick Leemann
Case No.�DCH006-0023
1. The Parties
The Claimant is Cycle-Tech GmbH, R�ti ZH, Switzerland, represented by MME - Meyer M�ller Eckert Partners, Switzerland.
The Respondent is is Patrick Leemann, Herzogenbuchsee, Switzerland.
2. Domain Name
The dispute concerns the following domain name: , which is registered with SWITCH.
3. Procedural History
The Request was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on September�6,�2006, by email the hard copy of which reached the Center on September�8,�2006. On September�12,�2006, the Center transmitted by email to SWITCH a request for verification in connection with the domain name at issue. On that same date, SWITCH transmitted by email to the Center its verification response confirming that the Respondent is listed as the holder of the domain name and providing the relevant contact details. The Center verified that the Request together with the amendment to the Request satisfied the formal requirements of the Rules of procedure for dispute resolution proceedings for “.ch” and “.li” domain names (“the�Rules”), adopted by SWITCH, the .ch and .li registry, on March�1,�2004.
In accordance with the Rules of Procedure, paragraph�14, the Center formally notified the Respondent of the Request, and the Dispute resolution proceedings commenced on September�18,�2006. In accordance with the Rules of Procedure, paragraph�15(a), the due date for Response was October�18,�2006.
The Respondent has neither filed a Response nor expressed his readiness to participate in a Conciliation in accordance with Paragraph�15(d) of the Rules of Procedure.
On October�12,�2006, the Center notified the Claimant accordingly, who on October�18,�2006, made an application for the continuation of the Dispute resolution proceedings in accordance with specified in paragraph�19 of the Rules of procedure and paid the required fees.
On November�9,�2006, the Center appointed Christophe Imhoos as Expert in this case. The Expert finds that it was properly constituted. In accordance with Rules of Procedure, paragraph�4, the above Expert has declared his independence of the parties.
On November�10,�2006, the Respondent requested from the Center the transmission of the documents in German because of its insufficient command in the English language. The Center advised the Respondent that it would forward the request to the Expert.
4. Factual Background
The Claimant provides an Internet based order service for spare parts for motorcycles, motorbikes, scooter, quads and cars in Switzerland and internationally (Exhibit No.�2 to the Complaint). It introduces itself as a major Internet supplier for such spare parts in Switzerland.
The Claimant registered the domain name on December�18,�2003, and uses this domain name for its business (Exhibits Nos. 3 and 4 to the Complaint).
The Respondent registered and uses the domain name as a portal without any proper functionalities; the website only contains links to other websites e.g. the website of Scooterama Christen GmbH which is a direct competitor of Claimant (Exhibits Nos. 6 to 8 to the Complaint).
5. Parties’ Contentions
A. Claimant
The Claimant argues the following:
(i) The Claimant has a right in a distinctive sign under the laws of Switzerland.
Firstly, the Claimant claims right in its business name. Being a limited liability company registered in the Commercial Register of the Canton of Zurich on July�14,�2001, and using the company name on a day to day basis for its business (Exhibits Nos. 2 and 3 to the Complaint), it is the legitimate holder of the business name “Cycle-Tech GmbH”. It is therefore entitled to seek protection of its name on an exclusive basis, pursuant to Article 956 of the Swiss Code of Obligations (“CO”).
Secondly, the Claimant is entitled to claim defensive rights against the registration or use of the domain name in dispute, pursuant to the Swiss Unfair Competition Act of December�19,�1986 (“UCA”).
The Claimant concludes that it has a right in a distinctive sign under the laws of Switzerland.
(ii) The registration and use of the domain name at issue infringes the Claimant’s right in a distinctive sign under the laws of Switzerland.
The Respondent registered and obviously uses the domain name in a manner insufficiently distinguishable from the Claimant’s company name “Cycle-Tech” used in its day-to-day business which is objectively protected by law pursuant to Articles 956 et seq. CO and case law (ATF 93 II 259), infringing thereby the Claimant’s business name.
In addition, the Respondent has committed several breaches of the Swiss Unfair Competition Act (Arts. 2 and 3 para. 1 UCA), especially in using the domain name in a confusingly similar manner with the Claimant’s name “Cycle-Tech” in order to attract and divert customers to its own business and to redirect them to other on-line locations, among which a Claimant’s competitor, Scooterama Christen GmbH, and a cannabis shop (Exhibits Nos. 5 and 8 to the Complaint).
The Claimant requests, on the aforementioned grounds, the transfer in its favor of the domain name .
B. Respondent
Save as what was mentioned under paragraph�1 above, the Respondent has neither filed a Response within the set deadline nor expressed its readiness to participate in Conciliation in accordance with Paragraph�15(d) of the Rules.
6. Discussion and Findings
Paragraph�24 of the Rules provides that:
(a) The Expert shall decide on the request on the basis of the pleadings of both parties and the submitted documents in conformity with these Rules.
(b) The Expert may only order the deletion or transfer of the domain name, depending on the remedy requested in the request, or reject the request.
(c) The Expert shall grant the request if the registration or use of the domain name constitutes a clear infringement of a right in a distinctive sign which the Claimant owns under the law of Switzerland or Liechtenstein.
(d) In particular, a clear infringement of an intellectual property right exists when:
(i) both the existence and the infringement of the claimed right in a distinctive sign clearly result from the wording of the law or from an acknowledged interpretation of the law and from the presented facts and are proven by the evidence submitted; and
(ii) the Respondent has not conclusively pleaded and proven any relevant grounds for defence; and
(iii) the infringement of the right justifies the transfer or deletion of the domain
name, depending on the remedy requested in the request.
As a result of the repeated reference to “clarity” in the above mentioned provision, the right invoked by the Claimant must be unequivocal and the evidence of confusion or other infringement quite obvious to lead to a transfer or deletion of the disputed domain names. Doubt must benefit the Respondent (I-D Media AG c. Id-M�dia S�rl, WIPO Case No.�DCp005-0018).
Paragraph�23 of the Rules also provides that if a party, without due cause, fails to comply with the time periods laid down in the Rules, the Expert shall decide on the request on the basis of the case file and that if one party, without due cause fails to comply with a provision of the said Rules, the Expert may draw such inferences therefrom as he considers appropriate.
A. Language of the Proceedings
Paragraph�7(a) of the Rules provides that the proceedings shall be conducted in the language of the Registration agreement without prejudice to the authority of the Dispute resolution service provider, a Conciliator or an Expert, exceptionally to determine otherwise on application by one or both parties or at their own discretion in view of the circumstances of the Dispute resolution proceedings.
Although, from its communication of November�10,�2006, the Respondent seems to acknowledge that, at least, the contact language (“Kontakt Sprache”) with SWITCH was in English, it nevertheless requested the translation of the documents in German.
SWITCH confirmed, among others, to the Center on September�12,�2006, that the language of the Registration agreement was in English. The Expert also notes that, save as the Complaint, most if not all documents submitted are in German, and that the Rules are available in German. In addition, the Expert notes that the Respondent submitted its request for translation well after the due date for the Response.
In view of the aforementioned grounds, the Respondent’s request is therefore dismissed.
B. The Claimant has a right in a distinctive sign
The Claimant has not submitted any registered trademark rights. The Rules do not require such rights (WIPO Case No.�DCp006-0004, Solidworks Corporation v. Christoph Erni).
The Claimant is entitled to rely on the provisions of the Swiss Unfair Competition Act (see e.g. WIPO Case No.�DCp006-0011, Evol�ne O et H M�trailler SA v. Immo-Tourisme Evol�ne-R�gion; WIPO Case No.�DCp006-0006, H�li-Alpes v. Air-Glaciers SA; WIPO Case No.�DCp006-0004, Solidworks Corporation v. Christoph Erni; WIPO Case No.�DCp005-0012, Zurich Insurance Company, Vita Lebensversicherungs-Gesellschaft v. Roberto Vitalini)
In addition, the Claimant holds exclusive rights in a distinctive sign pursuant to Article 956 CO, namely on its Company name which was registered in�2001(Claimant’s Exhibit No.�2). Such a registration took place well before the registration of the Respondent’s domain name which was registered on July�6,�2005 (Claimant’s Exhibit No.�1).
The Expert finds that the Claimant has thus met its burden of proof as established by the Rules, paragraph�24(d)(i).
C. The registration or use of the Domain Name at issue constitutes a clear infringement of the Claimant’s right
Because domain names identify persons, products, or services via the respective websites, Swiss Federal Supreme Court practice recognizes that domain names are comparable to personal names, business names, and trademarks and therefore can be regarded as distinctive signs (ATF 126 III 239, 244, ). Swiss practice further acknowledges a likelihood of confusion if the (commercial) use of a domain name similar to a name (or mark) creates the risk of a wrong association of the website (ATF 128 III 401, 402, ). Whether the contents of a website operated under the domain name must be taken into account when examining the likelihood of confusion, currently appears to be subject to a change in practice. Whereas in earlier decisions the Swiss Federal Tribunal held that the content of a website under the corresponding trademark shall be disregarded (see sic! 2003, p. 822 ; ATF 128 III 401, 403 et seq. ), a more recent decision suggests otherwise (see sic! 2005, p. 283 ) (Unigestion Holding S.A. v. ITCG s.c. W. Drewniak, M. Olczykowski, WIPO Case No.�DCH2005-0013).
The holder of a company name may seek protection under the UCA; especially when the circumstances in question are covered by the specific purposes and scope of the UCA.
Under Article 3 lit. d) UCA, anyone taking measures aimed at causing confusion with products, works, services or enterprise of a product or service provider, is acting unfairly. Under Article 2 UCA, the protection may be extended to imitations not falling under Article 3 lit. d) UCA, provided specific additional circumstances show the unfairness of the activities (Zurich Insurance Company, Vita Lebensversicherungs-Gesellschaft v. Roberto Vitalini, WIPO Case No.�DCp005-0012).
The domain name is confusingly similar to the Claimant’s Company name “Cycle-Tech GmbH”. Moreover, the Expert is satisfied from the Claimant’s submissions that the Respondent’s activites amount to unfair and unlawful practices, as described above, within the general meaning of Article 2 UCA.
Hence, the Respondent’s infringement of the Claimant’s rights under Articles 2 and 3 lit. d) UCA clearly justifies the transfer of the domain name to the Claimant.
The Expert finds that the Claimant has thus met its burden of proof under the Rules, paragraph�24(d)(ii) and (iii)
7. Expert Decision
For the above reasons, in accordance with Paragraphs�24 of the Rules of Procedure, the Expert orders that the domain name be transferred to the Claimant.
Christophe Imhoos
Expert
Dated: November�23,�2006
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