WIPO Domain Name Decision DCH2008-0030 for kickdown.ch

WIPO Arbitration and Mediation Center EXPERT DECISION Attilio Meyer AG v. Claro. S.C.R.L., Helen Nana-Bonilla Case No. DCH2008-0030 1. The Parties

The Claimant is Attilio Meyer AG, Gossau, Switzerland, represented by E. Blum & Co., Zurich, Switzerland.

The Respondent is Claro. S.C.R.L., Helen Nana-Bonilla, Lima, Peru. 2. Domain Name

The dispute concerns the following domain name . 3. Procedural History

The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2008. The Center subsequently wrote to the Claimant noting that the Request relates to the same domain name as well as the same Respondent as inWIPO Case No. DCH2008-0002, and that accordingly in order of for the Center to be able to accept that Request, the Claimant would need to show prima facie argumentation as to why the re-filed Request should be accepted. The Center further indicated that any acceptance would be subject to substantive determination of the re-filing issue by the Expert. On December 23, 2008, and January 7, 2009, the Center transmitted by email to Switch a request for verification and a request for further verification in connection with the domain name at issue. On December 30, 2008, 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 present Dispute resolution proceedings commenced on January 7, 2009. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was January 27, 2009.

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.

No Conciliation conference has taken place within the deadline specified in paragraph 17(b) of the Rules of Procedure.

On February 2, 2009, the Center notified the Claimant accordingly, who on the same date 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 February 3, 2009, the Center appointed Professor François Dessemontet as Expert in this case. The Expert finds that he was properly appointed. In accordance with Rules of Procedure, paragraph 4, the above Expert has declared his independence of the parties. 3. Factual Background

The Claimant is owner of Swiss Trademark Registration No. 468 462 KICKDOWN, filed on July 29, 1999 and registered on January 12, 2000, specifying “transportable constructions of metal and plastic, namely devices for mounting flat-surfaced objects” in international classes 6 and 19. The mark has been used in Switzerland since 2000 at least.

The Respondent is the transferee of the domain name , which was first registered on October 2, 2000. Until 2008, the former registrant of the domain name was Mr. Heer, of Switzerland, who appears to sell products for display similar or identical to the Claimant's products KICKDOWN-branded. After negotiations between the then parties failed to yield a concrete result, Mr. Heer transferred the domain name to the Respondent, then domiciled in Guatemala City. On June 25, 2008, the expert, in Attilio Meyer AG v. Claro S.C.R.L,WIPO Case No. DCH2008-0002, (the “Attilio Meyer One decision”) found that the Claimant's request for transfer of the domain name was not sufficiently proven. The expert, in that case, found that the requirements of paragraph 24 (d) of the Rules of Procedure were not fulfilled for three reasons: (1) There was no clear infringement of the Claimant's trademark rights because the trademark would not be a famous trademark and the Respondent was not offering directly on its website goods for services in the same classes for which the Claimant's mark KICKDOWN was registered (2) because there would be no proof concerning the relationship between Mr. Heer and the third party actually selling the products to which a link is offered on the web site “www.” and (3) because the prerequisites of the Swiss Act against Unfair Competition would not be met by reason of the fact that no proof has been given that an obstruction of business took place and that the Respondent would act in bad faith. Accordingly, the expert declined to grant the Claimant's request for transfer of the domain name . 4. Parties' Contentions A. Claimant

The Claimant contends that it has a right in a distinctive sign under the law of Switzerland and Liechtenstein. This has been recognized by the expert in the Attilio Meyer One decision and is no longer an issue.

Further the Claimant alleges that the Respondent sells essentially identical goods, no longer originating from the Claimant, on the site in dispute.

Furthermore, Mr. Heer allegedly intended to avoid an enforced assignment of the domain name by

(a) changing the contents of the site during the period of the first proceeding, reverting to the old content after the Attilio Meyer One decision and

(b) transferring it to the present Respondent. The e-mail address of Ms Helen Nana who is owner or manager of the Respondent is “helen.nana@”, rollscreen corresponding to a further business name used by Mr. Heer. There must exist therefore a close connection between the present holder of the domain name and Mr. Heer, and the Respondent would be only a pro forma owner of that domain name.

The Claimant reiterates that the registration and use of a domain name in connection with a website offering or advertising goods or services represents a trademark use and is as such suitable to infringe trademark rights. The conduct of the Respondent would be in violation of Art. 3 sec. 1 lit. a and b of the Swiss Trademark Act (TMA). Moreover, the registration and use of the domain name would be a violation of Art. 3 lit. d of the Swiss Act against Unfair Competition as this would be a measure which is apt to create confusion with the services and goods of a third party. Finally, Art. 2 of the Unfair Competition Act would be infringed as the Respondent would be seeking to exploit the reputation and advertising efforts of the Claimant to its own advantage. B. Respondent

The Respondent did not formally reply to the Claimant's contentions. Mr. Heer did however submit an email communication to the Center on January 26, 2009, in which he pointed to what appears to be a Swiss company registration form (for the Canton of Zurich) dated January 1, 2009 for a firm named “Kickdown Systems Dip. Ing. Heer.” 5. Discussion and Findings A. Reopening of the File

The present case is not an usual one, because a prior decision has been rendered by a WIPO expert under the same Rules between the same parties and for the same domain name on June 25, 2008. The present case confronts the Expert with a series of procedural issues that have to be addressed before the substantive questions are to be examined in a second stage.

The procedural issues regard the application of the overarching procedural principle “ne bis in idem”. This principle prevents the same parties from disputing a claim which has been adjudicated in a prior, definitive and binding decision. The Complaint filed on December 16, 2008, although it has been co-signed by an attorney at law, does not mention this issue and gives no reason why this principle would not apply, although it summarily describes some of the findings of the prior expert (p. 6 of the Complaint) and files it under Annex 16. This being a fundamental question of law, the present Expert has to examine it ex officio.

There are two sorts of remedies against a “disappointing” decision (as the Counsel for the Claimant terms the prior decision in the present case—p. 6 of the Complaint).

The normal remedy in a judicial context would be appeal. However, in the proceedings under the Rules of Procedure (as under the UDRP) appeal is not known. Therefore, the main recourse against an administrative expert decision is to file an action before the State courts at the venue which is accepted by the parties. To the best of the Expert's knowledge, the Claimant has not elected to follow this course by entertaining an action before the ordinary State courts.

Under the UDRP, panels have also acknowledged a limited set of circumstances in which a refiled complaint may be entertained. For example, in the case of Creo Products Inc. v. Website In Development,WIPO Case No. D2000-1490, the panel laid down the following test:

“The question of whether sufficient grounds exist for entertaining a Refiled Complaint, of either the first type or the second type, must be determined on a case-by-case basis. Nevertheless, it seems to this Administrative Panel that some general principles about the determination of this issue can and should be stated, as follows. First, the burden of establishing that the Refiled Complaint should be entertained under the Uniform Policy rests on the refiling complainant. Secondly, that burden is high. Thirdly, the grounds which allegedly justify entertaining the Refiled Complaint needs to be clearly identified by the refiling complainant. Fourthly, the dispute resolution service provider with whom the Refiled Complaint has been filed has responsibility for determining if, prima facie, the refiling complainant has pleaded grounds which might justify entertaining the Refiled Complaint. Fifthly, where the dispute resolution service provider determines that, prima facie, the refiling complainant has pleaded grounds which might justify entertaining the Refiled Complaint (and that the other formal requirements of the Uniform Policy are satisfied), the Refiled Complaint should be submitted to an administrative panel, for determination of whether the Refiled Complaint should be entertained (and, if so, of the merits of the claim under the Uniform Policy).”

Such principles may be said to apply (if only by way of persuasive analogy) to disputes under the present Rules of Procedure. The Claimant, although it has not argued expressly on the grounds of the above approach, has laid out certain new facts that have occurred since the first decision was handed down. Accordingly, applying the above test, the refiling Claimant could be said to have shown at least prima facie grounds which might justify entertaining a refiled Complaint, and accordingly the Center has put the matter before the Panel; whether the Claimant has succeeded in persuading this Panel that such grounds exist will become clear from the discussion below.

It noteworthy in this respect that the Claimant itself in an email to the Center of December 22, 2008 appears to contest the applicability to the present dispute of principles laid down in panel decisions rendered under the UDRP, such as those contained in the Legal Index of WIPO UDRP Decisions and the Overview of WIPO Panel Views. While of course the present dispute is under the Rules of Procedure and not the UDRP, one effect of the Complainant's position, if it were to be accepted in its entirety, may very well be to prevent the Claimant from being able to rely on the very exceptions that might in certain limited circumstances have allowed a refiling under the UDRP.

Alternatively, an extraordinary remedy might be the revision of the decision, which avenue exists under Swiss law for all ordinary proceedings and has been found to apply also to arbitral awards that are rendered under Chapter XII of the Swiss Act on international private law of 1987 (see the landmark decision in Bundesgerichtsentscheide [hereafter BGE] 118 II 199 and comments by E. Geisinger/V. Frossard, Challenge and Revision of the Award, in International Arbitration in Switzerland, G. Kaufman-Kohler & Bl. Stucki, eds., The Hague 2004, pp. 154 ss). Absent the proof by criminal proceedings that a felony or a crime influenced the decision, the only other ground might be when the moving party has subsequent knowledge of new and important facts or finds convincing evidence that it had not been able to invoke in the previous proceedings. The point whether the Rules of Procedure sufficiently provide for a revision can be left undecided here, as the Claimant did not choose this remedy and does not argue that facts have been discovered that would materially have affected the decision of June 25, 2008 (so-called nova, that is “newly discovered facts”), let alone a felony or a crime.

Rather, the Claimant has opted to file a new request for the transfer of the domain name arguing on the substance in part on the basis of old facts and contentions—such as are the allegations of infringement of its trademark rights and violation of the Swiss unfair Competition Act of 1986—and in part on the basis of new facts having occurred since the first decision was handed down. The Claimant thus runs at least in part counter to the principle “ne bis in idem”. In any event, on the basis of the record provided in the present case, the Expert finds that the Claimant's request must be rejected. Out of the need to have the Expert's decision clearly understood by the Claimant, the Expert will closely examine in the following the new facts that have been alleged by the Claimant to see whether they warrant a reopening of the file. As to the old facts and contentions, the present Expert will accept without discussing them the findings of the prior expert's decision in Attilio Meyer One, as it has to be in order to prevent opening the floodgates to potentially all decisions that have been rendered under the Rules of Procedure. Suffice it to say that contrary to the allegations of the Complaint (p. 6), the prior decision was not based mainly on the absence of evidence of the relationship between Mr. Heer and the present Respondent, but also on substantive grounds such as that Claimant's trademark is not a famous trademark that would warrant protection outside of the clauses of goods for which it is registered, that the Respondent has not obstructed the Claimant's business and that the Respondent has not acted in bad faith.

The first allegation which is new regards the change of address of the Respondent, which apparently transferred its domicile to Lima Peru, coming from Guatemala City in Guatemala. In the absence of any indication to the contrary, the Expert finds that the company Claro. S.C.R.L., Helen Nana-Bonilla is the very same party as has been designated in the first proceeding as Claro. S.C.R.L., Nana Helen, Kennedy investment Ltda, Guatemala City, Guatemala. Therefore, the present proceedings oppose the two parties that were already litigating the same issue in the first proceedings.

The second set of allegations on new facts regards the contents of the web site “www.”. This allegation is relevant, as it tends to evidence a conduct in bad faith by whomever is shaping the site. There is little doubt that the act of modifying the contents of a site before the examination by a expert of a complaint requesting the transfer of this domain name, following negotiations that brought parties together in order to find an amicable solution, is in itself not objectionable by reason of the negotiations and because the possibility must be left open to a respondent to modify its site in order to avoid confusion with the goods and services of a competitor. Nevertheless, the further allegation regards a change back to the old contents of the site once the Attilio Meyer One decision had been rendered. This could be characterized as an act of bad faith. (In the same line of thought, it could be possible to see as bad faith the fact that in the first negotiations, Mr. Heer apparently requested CHF 8'000.- for transferring the domain name, as is apparent from the file. However, the Claimant does not argue on the basis of that fact).

At this first stage of the discussion which is concerned only with the application of the principle “ne bis in idem” the point is not whether the conduct of the Respondent post June 25, 2008 was actually in bad faith and could arguably justify a transfer of the domain name if such conduct were found to be a “clear infringement” of the Claimant's rights under paragraph 24(d) of the Rules of Procedure. The point in this Expert's view is whether the newly alleged fact of reverting to the old contents of the site, were it averred, is material in the sense that the first expert might have found otherwise on the substance of the claim, were he to have been prescient of the change of contents. This Expert believes the answer to such question is negative. On the main, the first expert did not base its decision on the first change of the contents of the site in early 2008. Its decision was grounded essentially on the absence of a “famous” trademark under the relevant Swiss Act on the Protection of Trademark (and the absence of goods or services on the Respondent's website that came will in the classes protected by Claimant's trademark registration), further, on the absence of any evidence in the file as to the relationship between Mr. Heer and the Respondent, and finally on the absence of obstruction and bad faith under the Unfair Competition Act. None of these findings would be substantially affected by the new allegations of the Claimant. Each of the ground might suffice for the prior expert to reach its negative decision, but the only one which might be marginally affected is the one regarding the relationship between Mr. Heer and the Respondent, which appear actually to change its site's contents from time to time. It does not seem unlikely that such changes are made on the suggestion of Mr. Heer, now as before. Such changes may flow out of a contractual, or quasi-contractual relationship, or otherwise. However, the prior expert's decision was based on the lack of evidence in this respect, and the change of contents does not significantly alter the perceived absence of proof concerning this relationship. The present Expert is as little informed in this regard as was the first expert.

In sum, the review of the alleged new facts leads the Expert to decline on the provided record to proceed to a full examination of the refiled Request. No persuasive argument or evidence compelling an exception to the principle “ne bis in idem” has been presented to the Expert. The remedy requested will be denied.

Nevertheless, this being an administrative proceeding, the Claimant may also receive some indications from the Expert as to the substance of its Claim, so as to allow it to proceed more expeditiously in the future against similar cybersquatting conducts should they recur. Nor would the present outcome prevent either party from pursuing options through the Courts. The following explanations are also motives for the rejection of the request on the substance. B. Substantive Issues 1) The Claimant has a right in a distinctive sign

There is no doubt that the Claimant has a right to the trademark KICKDOWN, as was already found by the prior Expert. 2) The registration or use of the domain name at issue does not constitute a clear infringement of the Claimant's right

Under paragraph 24(d) of the Rules of Procedure, only a clear infringement of the Claimant's rights can lead a expert to order the transfer of a domain name. Both the existence of the right and the infringement must clearly result from the wording of the law or from an acknowledged interpretation of the law and from the presented facts. Further, the Respondent must not have conclusively pleaded and proven any relevant grounds for defense, and the infringement of the right justifies the transfer or deletion of the domain name, depending on the remedy requested in the request.

It should be mentioned first and foremost that the former use of the domain name at issue in connection with the sale of authentic brand products by someone who was not and it is not an authorized dealer, although it might have played an instrumental role in the deterioration of the relations between parties, is not in itself sufficient to prove a clear infringement of the trademark rights under Swiss law. Indeed, the Swiss Federal Tribunal accepts that the protection of trade marks is not absolute, but that they can be used for the information of the consumers, for example by a unauthorized dealer wishing to advertise its services in relation with a car (see e.g. BGE 128 III 146 ff (“Volkswagen”); see also BGE in sic ! 2000 611 ff (“WIR”)).

For the unfair competition violation of Art. 2 Unfair Competition Act which is alleged by the Claimant, other facts should be found by the Expert in order to accept a “systematic and parasitic approach to the Claimant's whole set of products”, as has been requested for example in BGE 113 II 202 (“Le Corbusier”) or BGE 104 II 58 (“Boots”).

For the violation of Art. 3 (d) of the same Act which is also invoked by the Claimant, it seems to be excluded by the set up of the site itself as is shown in the Annexes to the Complaint: No consumer or third party could believe that this is the original site of the Claimant. If some consumers are interested in genuine KICKDOWN products, they may find them through the Respondent's site and the links from that site. If the Claimant hopes to prevent the consumers to learn about the existence of competing products by shutting down the site or altering it after its transfer to the Claimant, it may well put to an ordinary court of law the difficult issue of balancing the right of trademark and the right of the consumers to be informed about the market place.

It is not impossible that a thorough review by a court of law might lead to different findings of fact or law. The Counsel of the Claimant pointed out (in p. 8 of the Complaint) good reasons why a judge may find in favor of the Claimant. Nevertheless, these allegations do not establish a “clear” infringement as this test is set out in paragraph 24(d) of the Rules of Procedure. Expedited administrative proceedings such as the present one are designed to deal with relatively simple cases, and are not equipped with mechanisms for detailed procurement or cross-examination of evidence. It is precisely in such difficult, murky cases as the present one that recourse to State courts would seem to be justified. As was foreshadowed by the Center, who properly put the matter for determination before the Expert, a substantive determination on the issue of re-filing was indeed required in this case, and the Expert's determination is that it does not find sufficient grounds in these administrative proceedings for re-opening the matter. 6. Decision of the Expert

Based on the foregoing grounds, the Request is denied.

Professor François Dessemontet
Expert

Dated: February 6, 2009

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