The Claimants are Scout24 Holding GmbH (First Claimant) of München, Germany and Scout24 International Management AG (Second Claimant) of Baar, Switzerland, represented by Zulauf Bürgi Partner, Switzerland.
The Respondent is IP Matters Corp of Tokyo, Japan. 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 April 4, 2012. On April 4, 2012, the Center transmitted by email to SWITCH, the “.ch” and “.li” registry, a request for verification in connection with the disputed domain name. On April 4, 2012, 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 April 16, 2012. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was May 6, 2012.
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 May 7, 2012 the Center notified the Claimant accordingly, who on May 14, 2012 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 June 6, 2012, the Center appointed Christophe Imhoos 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 of the parties. 4. Factual Background
The Claimants carry out real estate services, especially the brokerage of real property and apartments via Internet.
The Second Claimant is registered since March 13, 2000 under the company name “Friend Scout24 AG”, respectively since August 29, 2002 as “Scout24 International Management AG” in the company register of the canton of Zug (Annex 15 to the Complaint). The original purpose of the Second Claimant was the “development and operation of an electronic market place for the dating services”. Besides the Second Claimant, additional companies belonging to the same group have the element SCOUT24 in their company name (Annex 16 to the Complaint), e.g. SCOUT24 AG which was registered on November 8, 1999, in the commercial register and whose purpose is – among others – the participation in companies that “offer and request innovative connections in various markets with the aid of new media” (Annex 17 to the Complaint).
The Second Claimant sent to the Respondent on May 14, 2010 (Annex 4 to the Complaint) a cease and desist letter which was returned. On June 14, 2010, the Second Claimant tried to contact the Respondent by E-mail (Annex 5 to the Complaint). No response or reaction was ever received from the Respondent.
The Respondent is using the disputed domain name actively for its website (Annex 6 to the Complaint). It is used as a domain name redirecting the visitors to third party website’s on which real property is advertised for sale or renting.
The Claimants are the owners of , and (see Annex 18 to the Complaint).
The disputed domain name was registered on March 13, 2010. 5. Parties’ Contentions A. Claimant
The Claimants argue the following:
(i) The Claimants have a right in a distinctive sign under the laws of Switzerland.
The First Claimant is – among others – the owner of the following Swiss IMMOSCOUT 24 trademarks which enjoy the following priorities:
Nr. Mark Priority
461569 IMMO-SCOUT24 April 13, 1999 (Annex 8 to the Complaint)
461570 IMMOSCOUT24 April 13, 1999 (Annex 9 to the Complaint)
522030 IMMOBILIEN SCOUT24 February 20, 2004 (Annex 10 to the Complaint)
586939 IMMO SCOUT24 November 17, 2008 (Annex 11 to the Complaint)
All of these trademarks are protected for “real estate services, especially the brokerage of real property and apartments via electronic media (Internet)” in classes 36 and 35.
The First Claimant is also owner of the CH-trademark 585444 SCOUT 24 (Priority of November 14, 2008) which also enjoys protection for “real property services” in class 36 (Annex 12 to the Complaint).
In addition, the First Claimant owns more than 88 trademarks with the component SCOUT which enjoy protection in Switzerland (Annex 13 to the Complaint). The most senior of these trademarks was filed on April 13, 1999 (Annex 14 to the Complaint). The First Claimant further owns the CH-trademark 538048 MEDIASCOUT with the priority of May 4, 2005 (see Annex 13 to the Complaint).
The trademark SCOUT24 is well known in Switzerland. According to this study, almost 90 percent of the Internet users knew the Internet Portals of , and (Annex 18 to the Complaint).
(ii) The registration and use of the domain name at issue infringes the Claimants' right in a distinctive sign under the laws of Switzerland.
There are the trademarks IMMOSCOUT 24 (and the whole series of trademarks, including also the trademarks which are only composed of SCOUT24) on one side and the disputed domain name on the other side. The only difference between the disputed domain name and the trademarks of the First Claimant is the lack of the second “m” in “immo”. This difference is phonetically not to be distinguished. In addition, “immo” is the common abbreviation of “immobilie” (real property) and therefore a generic term. If the word “immo” is used in connection with real property services (as it is the case on the website of the Respondent at the disputed domain name, the term belongs to the public domain and and enjoys no protection. The Respondent has clearly adopted the characteristic element SCOUT24 of the First Claimant's trademarks. Consequently, the similarity of the signs in question is established.
Under the disputed domain name, the Respondent runs an Internet Portal in the real property business area that is referring the visitors to third party websites’ on which brokerage and rental of real property is offered; even the First Claimant’s domain name is listed (Annex 6 to the Complaint). This is exactly the business area in which the Claimants are active. The services offered by both parties are therefore identical. In addition, the First Claimant’s trademarks are well-known and, as a result, enjoy a wide range of trademark protection.
Consequently, the trademark rights of the First Claimant are clearly infringed, the latter being entitled to prohibit Respondent’s registration and use of the disputed domain name pursuant to Article 13 para. 2 lit. e of the Swiss Trade Mark Act ("TMA").
The Second Claimant can base its claim against the disputed domain name on company name protection pursuant to Article 956 para. 1 of the Swiss Code of Obligations ("CO") because the Respondent is using the disputed domain name to designate its Internet platform on which it is posting links to other platforms in order to generate traffic and consequently advertising revenues (Annex 6 to the Complaint). The company name of the Second Claimant is "Scout24 International Management". The distinctive element in this company name is "Scout24". This element is adopted by the Respondent and amended with the wrongly written (but phonetically identical) element “imo” which is a generic term. Consequently, the signs are similar and the company name rights of the Second Claimant are clearly infringed.
Moreover, the Claimants have not forfeited their claims because they sent Respondent cease and desist letters and emails in May and June 2010 (Annexes 4 and 5 to the Complaint) and, since then, they never have indicated that they would tolerate the disputed domain name.
Lastly, Claimants can base their claim also on the respective unfair competition provision as the Respondent operates a website in the similar business area under the disputed domain name which creates a risk of confusion in accordance with Article 3(d) of the Swiss Unfair Competition Act ("UCA").
In conclusion, the Claimants conclude that the registration and use of the disputed domain name infringes their trademark and company name rights. Consequently, they request that the said disputed domain name be transferred to the Second Claimant. B. Respondent
The Respondent did not reply to the Claimants' contentions. 6. 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.”
As a result of the repeated reference to “clarity” in the above mentioned provision, the rights 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 name. Doubts must benefit the Respondent (I-D Media AG v. Id-Média Sàrl,WIPO Case No. DCH2005-0018).
Paragraph 23 of the Rules of Procedure also provides that if a party, without due cause, fails to comply with the time periods laid down in the Rules of Procedure, 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. The Claimants have a right in a distinctive sign under the law of Switzerland
The Claimants have proved the registration of the trademarks IMMOSCOUT 24 (See Annexes 8 to 11 to the Complaint). The Expert holds therefore that Claimants established their exclusive right in its distinctive sign in Switzerland. B. The registration or use of the domain name constitutes a clear infringement of the Claimant’s right
The Claimants are holder of the registered trademark IMMOSCOUT 24. A simple visual and phonetic comparison reveals that the disputed domain name is confusingly similar to Claimants' trademark; such conduct may already constitute cyber- and typosquatting which would constitute bad faith and a breach of Article 2 of the UCA (see e.g. YouTube, LLC v. Matthias Moench,WIPO Case No. DCH2007 0010).
Because domain names identify persons, products, or services via the respective websites, the 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, ). 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, both the degree of similarity of the signs as well as the similarity of the respective goods and/or services may be taken into account. The two elements are interrelated, i.e., the more similar the goods and/or services are, the more distinguishable the respective signs must be, and vice versa (Unigestion Holding S.A. v. ITCG s.c. W. Drewniak, M. Olczykowski,WIPO Case No. DCH2005-0013; Smoby Suisse Sàrl and Smoby S.A. v. Velos Schrade, Inhaber Fredy Zaugg,WIPO Case No. DCH2007-0006).
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(d) of the 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 of the UCA, the protection may be extended to imitations not falling under Article 3(d) of the UCA, provided specific additional circumstances show the unfairness of the activities (Zurich Insurance Company, Vita Lebensversicherungs-Gesellschaft v. Roberto Vitalini,WIPO Case No. DCH2005-0012).
The disputed domain name is no doubt confusingly similar to the Claimants' Company name and trademarks IMMOSCOUT24. When registering such a domain name the Respondent created a likelihood of confusion to the effect that the Internet users are likely to assume a connection between the Respondent’s website and the Claimants trademarks and protected products and services. The Respondent appears to be trying to take advantage of the Claimants' trademark and related products and services and such a conduct violates the Claimants' right in its distinctive sign under Art 3(d) of the UCA. Moreover, the Expert is also satisfied from the Claimants' submissions that the Respondent’s activities amount to unfair and unlawful practices, as described above, within the meaning of Article 2 of the UCA, as held above.
Hence, the Respondent’s infringement of the Claimants' rights under Articles 2 and 3(d) of the UCA clearly justifies the transfer of the domain name to the Claimants.
The Expert finds that the Claimants have thus met their burden of proof under the Rules of Procedure, paragraph 24 and the transfer of the disputed domain name be ordered as requested. 7. Expert Decision
For the above reasons, in accordance with paragraph 24 of the Rules of Procedure, the Expert orders that the disputed domain name be transferred to the Second Claimant (Scout24 International Management AG).
Christophe Imhoos
Expert
Dated: June 20, 2012
Full & Egal Universal Law Academy