WIPO Arbitration and Mediation Center EXPERT DECISION Marlow Foods Ltd Limited Company v. Eginhard Thoelken Case No. DCH2010-0013 1. The Parties
The Claimant is Marlow Foods Ltd Limited Company of the United Kingdom of Great Britain and Northern Ireland (“the UK”), represented internally.
The Respondent is Eginhard Thoelken of Germany. 2. Domain Name
The dispute concerns the domain name . 3. Procedural History
The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2010. On June 3, 2010, the Center transmitted by email to SWITCH, the .ch and .li registry, a request for verification in connection with the disputed domain name. On June 4, 2010, 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, 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 June 9, 2010. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was June 29, 2010.
The Respondent did not file a Response or express his readiness to participate in the conciliation. On June 30, 2010, the Center sent the invitation to apply for continuation of dispute resolution proceedings.
Accordingly, on June 30, 2010, the Claimant 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 July 7, 2010, the Center appointed Tobias Zuberbühler as Expert in this case. The Expert finds that he was properly appointed. In accordance with the Rules of Procedure, paragraph 4, the above Expert has declared his independence of the parties.
The Claimant is a producer of food products based on mycoprotein. The QUORN brand was launched in the UK and the Claimant's first product - a vegetable pie - introduced in 1985 after Quorn was approved by the UK's Ministry of Agriculture, Fisheries and Food (MAFF) as being suitable for food use. Quorn products were first launched in Switzerland in 1996. Today, approximately 500,000 Quorn meals are eaten every day in the UK.
An International trademark QUORN has been registered by the Claimant on February 3, 1999 (Registration number : 713324) with designations among others of Switzerland.
According to the Claimant's representations, the Claimant had registered the disputed domain name together with and in December 2005 with an automatic renewal process. Due to a technical issue, these domain names failed to auto-renew and the registrations were deleted on March 22, 2010, one day before the disputed domain name was registered by the Respondent. While the other domain names were successfully re-registered, the Claimant was not able to re-register the disputed domain name .
Contact with the Respondent via WhoIs information was attempted several times by telephone and e-mail, to no avail.
The disputed domain name currently leads to a German language website presenting Swiss cooking, including some recipes for meals with Quorn. Among others, it is mentioned that Quorn can easily be bought in supermarkets of the UK, the Netherlands, Switzerland or the United States of America (“the USA”), but is not well known in Germany, the domicile of the Respondent. 4. Parties' Contentions A. Claimant
The Claimant has used the QUORN mark in Switzerland since 1996 and has built up significant reputation in the mark. The Claimant has also registered QUORN under the Madrid Protocol under No. 713324 as of February 3, 1999, with the designation inter alia of Switzerland.
The Respondent is not connected to or authorized by the Claimant in any way and has no legitimate interest to use the trading name “Quorn”. The word “quorn” is a brand name and has no usage in common language. The Respondent is not using the domain name in the course of any legitimate or bona fide offering of goods or services. In fact, it is evident that the Respondent has registered the domain name and set up a website for providing incorrect information about Quorn products and portraying them in a negative way.
There is no evidence that the Respondent has ever used or been known by the name “Quorn”. The content of the website makes it plain that the Respondent does not claim to have any legitimate entitlement to use the name for his own business. B. Respondent
The Respondent did not reply to the Claimant's contentions. 5. Discussion and Findings
Paragraph 24 of the Rules of Procedure 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 of Procedure.
(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. A. The Claimant has a right in a distinctive sign
According to the Claimant's information, it has used the QUORN trademark in Switzerland since 1996. Since the Claimant has also registered an International trademark QUORN on February 3, 1999 with an extension to Switzerland, it has a right in a distinctive sign under paragraph 24(c) of the Rules of Procedure. B. The registration or use of the disputed domain name constitutes a clear infringement of the Claimant's rights
According to Article 13 paragraph 2 in connection with Article 3 paragraph 1 lit. c of the Swiss Trademark Act (TMA), the Claimant, as owner of the trademark QUORN, is entitled to enjoin the Respondent from using an identical or similar distinctive sign in connection with goods and services identical or similar to Claimant's.
The disputed domain name is identical to the Claimant's trademark QUORN and is being used in connection with the same goods as Claimant's.
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 (DFT 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 (DFT 128 III 401, 402, ). The Swiss Federal Supreme Court has held that content of a website operated under a domain name must be taken into account when examining the likelihood of confusion (see sic! 2005, p. 283 ). It follows that, in an assessment of the risks of confusion under the Swiss Trademark Act (TMA), both the degree of similarity of the signs as well as the similarity of the respective goods and/or services must be taken into account.
According to undisputed assertions by the Claimant, the Respondent registered the disputed domain name one day after the Claimant's registration was deleted due to an error in the auto-renewal process. The website linked to the disputed domain name displays Swiss cooking recipes, including quorn meals and information regarding the market success of quorn products in Switzerland and other countries as against the difficulty to distribute and sell quorn products in Germany. Whether such conduct already constitutes commercial activity as required under the TMA might be questionable. According to Article 55 paragraph 1 lit. a TMA, however, an impending violation of trademark rights may also be prohibited. Under the circumstances of this case, it seems unlikely that the disputed domain name will not be used for commercial purposes in one way or another, e.g. to sell it back to the Claimant or to any third party (see. Sulzer Immobilien AG v. Mr. Patrick Michel,WIPO Case No. DCH2006-0008, ) or to use it for commercial promotion of quorn products in competition to the Claimant (in connection with inactive domain names, see Otto GmbH & Co. KG. v. Zeljko Radovancevic, WIPO Case No. DCH2005-0021,
In any event, the Respondent's conduct clearly violates the Swiss Unfair Competition Act (UCA). The Respondent's action of registering the disputed domain name one day after the Claimant's registration was deleted because of an error during the auto-renewal process, amounts to an unfair and unlawful practice within the meaning of Article 2 UCA. In addition, the Respondent created a likelihood of confusion to the effect that Internet users will assume a connection between the Respondent's website and the Claimant's trademark and protected products and services. While the Expert is not aware of any negative portrayal of Quorn products on the Respondent's website (as alleged by the Claimant), the Respondent appears to be taking advantage of the Claimant's trademark and related products and services, thereby violating the Claimant's rights under Article 3(d) UCA.
Moreover, the fact that the Respondent could not be reached by the Claimant or the Center under the registered WhoIs contact information corroborates the impression of unfair conduct. While the website connected to the disputed domain name contains a list of cooking recipes including quorn meals, the creation of a website as such - considering the Respondent's prior conduct - is not sufficient to constitute a legitimate interest in the disputed domain name. Finally, the various typographical errors on the website indicate that the respective content was created rather hastily in an attempt to simulate legitimate activity.
Hence, the Respondent's infringement of the Claimant's rights under Articles 2 and 3(d) UCA clearly justifies the transfer of the domain name to the Claimant. In addition, the Respondent's conduct would justify the prohibition of an impending violation of the Claimant's trademark rights according to Article 55 paragraph 1 lit. a TMA.
The Expert finds that the Claimant has thus met its burden of proof under the Rules of Procedure, paragraph 24(d). 6. 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.
Tobias Zuberbühler
Sole Panelist
Dated: July 13, 2010
Full & Egal Universal Law Academy