WIPO Arbitration and Mediation Center
EXPERT DECISION
Tamedia AG v. Rocha Maria Elini
Case No. DCH2007-0018
1. The Parties
The Claimant is Tamedia AG, Zurich, Switzerland, represented by its internal representative.
The Respondent is Rocha Maria Elini, Boa Viagem Recife, Brazil.
2. Domain Name
The disputed domain name is registered with SWITCH.
3. Procedural History
The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2007. On December 6, 2007, the Center transmitted by email to SWITCH a request for registrar verification in connection with the domain name at issue. On December 6, 2007, 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 satisfied the formal requirements of the Rules of procedure for dispute resolution proceedings for .ch and .li domain names (the Rules of Procedure), 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 December 10, 2007. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was December 30, 2007.
The Respondent has neither filed a Response nor expressed her readiness to participate in a Conciliation in accordance with paragraph 15(d) of the Rules of Procedure.
On January 3, 2008, the Center notified the Claimant accordingly, who on January 9, 2008, made an application for the continuation of the Dispute resolution proceedings in accordance with paragraph 19 of the Rules of procedure and paid the required fees.
On January 25, 2008, the Center appointed Tobias Zuberb�hler as Expert in this case. The Expert finds that it was properly appointed. In accordance with Rules of Procedure, paragraph 4, the above Expert has declared his independence and impartiality of the parties.
4. Factual Background
“Sonntalk” is a weekly talk show on Sunday evening on the TV station Telez�ri, a corporate business unit of the Claimant. Sonntalk has been broadcasted on Telez�ri since 1996 in the region of Zurich (Switzerland) and beyond.
The Claimant is the holder of two Swiss trademarks 550 547 SONNTALK and 560 563 “Sonntalk” (logo), registered on July 31, 2006 and February 23, 2007, respectively.
The domain name at issue was first registered on May 31, 2005, and transferred to the Respondent between October 10 and November 12, 2007. After the first registration of the domain name at issue, the former holder operated an anti-Telez�ri website under the domain name. The former holder refused to transfer the domain name upon a request by the Claimant. Following the Claimant’s announcement to take legal action, the former holder transferred the domain name to the Respondent.
According to a printout of November 29, 2007, the domain name at issue redirected Internet users to a “Live Search” website with the search result “www. Sonntaegliche Domain www.”. According to a visit conducted by the Panelist on February 7, 2008, the website accessible under the domain name currently appears to be inactive.
5. Parties’ Contentions
A. Claimant
The domain name at issue is identical with the trademarks of the Claimant. The public will be misled and confused if Internet users are not directed to products or services related to the Claimant when using the domain name. The domain name also creates a risk of a wrong association of the respective website.
Since the Respondent acquired the domain name between October 10 and November 12, 2007, after the filing date of the trademarks of the Claimant, the Respondent cannot rely on a right for continued use of the Claimant’s trademarks pursuant to Art. 14 of the Swiss Trademark Act (MSchG).
The Claimant also seeks protection under the Swiss Unfair Competition Act (UWG). Art. 3 lit. d UWG sanctions measures aimed at causing confusion with products, works and services of a competitor. Pursuant to Art. 2 UWG, protection may be extended to imitations not falling under Art. 3 lit. d UWG, provided additional circumstances show an unfairness of the respective conduct.
B. Respondent
The Respondent did not reply to the Claimant’s contentions.
6. Discussion and Findings
According to the Rules of Procedure, paragraph 24 (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 laws of Switzerland”.
The Rules of Procedure, paragraph 24 (d) specify that “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 defense; and
(iii) the infringement of the right justifies the transfer or deletion of the domain name, depending on the remedy requested in the request”.
A. The Claimant has a right in a distinctive sign
The Claimant is the holder of two Swiss trademarks 550 547 SONNTALK and 560 563 “Sonntalk” (logo).
B. The registration or use of the Domain Name at issue constitutes a clear infringement of the Claimant’s rights
According to Article 3 combined with Article 13 paragraph 1 of MSchG, a Swiss trademark affords its owner the exclusive right to use it in relation to the goods and services for which it is registered.
Because domain names identify persons, products, or services through the respective websites, the Swiss Federal Supreme Court repeatedly held that domain names are comparable to personal names, business names and trademarks and may be regarded as distinctive signs (DFT 126 III 239, 244, ). Domain names must maintain a sufficient distinction from protected signs to prevent confusion (decision by the Swiss Federal Supreme Court of March 6, 2007, , 4C.341/2005, cons. 5). In particular, the danger of confusion may be given by using a domain name which is similar or identical to protected distinctive signs of another party and thereby creating a danger of misappropriation. The mere danger of a preliminary misappropriation is sufficient, since the danger of confusion already arises in the moment an Internet user expects certain information and such danger cannot be removed by the design of a site (so-called “initial interest confusion”; cf. DFT 128 III 409-410, ; 4C.341/2005, cons. 5.1). The Respondent’s use of the domain name for an inactive website thus already constitutes a violation of the Claimant’s trademark rights according to Art. 13 MSchG.
Even though the domain name at issue was originally registered before the Claimant’s trademarks, it must be taken into account that the Respondent acquired the domain name between October 10 and November 12, 2007, after the filing date of the trademarks of the Claimant. The Respondent thus cannot rely on a right for continued use of the Claimant’s trademarks pursuant to Art. 14 MSchG.
Domain names can also be regarded as distinctive signs under competition law (DFT 126 III 239, 245). Art. 3 lit. d of the Swiss Unfair Competition Act (UWG) prohibits measures that are likely to cause confusion with products, works, services, or the business of others.
Considering the widespread recognition of the Claimant’s TV show “Sonntalk”, it is very unlikely that the Respondent has registered and used the domain name in good faith.
The Claimant, due to the current situation, faces disadvantages, as it cannot use the domain name to market its products under the corresponding trademark.
By registering the domain name at issue, which is identical to the Claimant’s trademark registrations, the Respondent created a likelihood of confusion. An Internet user is likely to assume a connection between the domain name and the Claimant’s trademark-protected services. It would therefore appear that the Respondent is trying to take advantage of the Claimant’s brand recognition or trying to prohibit the Claimant from doing business under its mark on the Internet. Hence, the Respondent’s behavior also violates Art 3 lit. d UWG.
The Respondent’s infringement of the Claimant’s rights under Art. 13 MSchG and Art. 3 lit. d UWG clearly justifies the transfer of the domain name at issue to the Claimant.
The Claimant has thus met its burden of proof under the Rules of Procedure, paragraph 24(d)(ii) and (iii).
7. Expert Decision
For the above reasons, in accordance with paragraph 24 of the Rules of Procedure, the Expert orders that the domain name be transferred to the Claimant.
Tobias Zuberb�hler
Expert
Dated: February 8, 2008
Full & Egal Universal Law Academy