The Claimant is PLB International Inc. of Québec, Canada, represented by CMKZ Avocats, Canada.
The Respondent is Bürobedarf Lack AG / Pet Partner GmbH, Peter Wyser1 of Boningen, Switzerland. 2. Domain Names
The dispute concerns the domain names and .
The Registry for the disputed domain names is SWITCH, Switzerland. 3. Procedural History
The Request was filed in French with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2013. On December 12, 2013, the Center transmitted by email to SWITCH, the “.ch” and “.li” registry, a request for verification in connection with the disputed domain names. On December 16, 2013, 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.
According to information the Center received from SWITCH, the language of the Registration agreements for the disputed domain names is German. Accordingly, the Claimant was requested to submit at least one of the following: 1) satisfactory evidence of an agreement between the Claimant and the Respondent to the effect that the proceedings should be in French; 2) a Request translated into German; or 3) a request for French to be the language of the proceedings. On January 9, 2014, the Claimant submitted a request for English to be the language of the proceedings, to which the Respondent did not reply.
In response to a notification by the Center that the Request was administratively deficient and after the Claimant requested an extension to file a translated Request, the Claimant filed an amended Request translated into English on January 27, 2014 electronically and on February 4, 2014 in hardcopy. In response to another notification by the Center that the Request was administratively deficient, the Claimant filed a second amended Request on February 25, 2014 electronically and on March 3, 2014 in hardcopy.
The Center verified that the Request together with the amended Requests satisfied the formal requirements of the Rules of procedure for dispute resolution proceedings for “.ch” and “.li” domain names (the “Rules of Procedure”), as adopted by SWITCH on March 1, 2004.
On March 7, 2014, given the circumstances of the case, the Center informed the parties that, in accordance with paragraph 7 of the Rules of Procedure, it would (i) notify the Requests in both English and German, (ii) accept the Complaint as filed in English and (iii) accept a Response in either English or German.
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 March 7, 2014. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was March 27, 2014.
On March 28 and 31, 2014, the Center notified the parties that the Respondent did not file a Response nor expressed its consent to participate in a conciliation and informed the Claimant about the possibility to continue with the proceedings in accordance with paragraph 19 of the Rules of Procedure. Upon confirmation by the Claimant, the proceedings continued on April 2, 2014.
On April 17, 2014, 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 Expert has declared his independence of the parties. 4. Factual Background
The Claimant is the owner of the trademark 1ST CHOICE registered for Canada, Mexico, Norway and the European Community as well as the trademark PRONATURE registered for Switzerland, Canada and the United States of America. The Claimant’s use of these trademarks dates back to 1991 (1ST CHOICE) and 1994 (PRONATURE). The trademark PRONATURE is protected in Switzerland as from July 16, 2005.
On July 31, 2009, the Claimant, the Respondent and the company Pet Partner GmbH entered into a distribution agreement. The disputed domain names were registered on September 2, 2009. On April 21, 2010, a letter of termination was sent by the Claimant to the Respondent and the company Pet Partner GmbH. 5. Parties’ Contentions A. Claimant
In summary, the Claimant contends the following:
The disputed domain names used by the Respondent are identical to the Claimant’s trademarks.
The Claimant granted the Respondent, as distributor for the Claimant’s products in Switzerland, the right to register the disputed domain names, in the name and on behalf of the Claimant, for the purpose of promoting, distributing and commercializing the products identified with the Claimant’s trademarks. The Respondent expressly recognized in the distribution contract that the Claimant remains the sole owner of the disputed domain names.
The Respondent has no rights to the disputed domain names and no legitimate interests since the distribution agreement between the parties has been terminated.
The use by the Respondent of the disputed domain names is abusive and in bad faith since, notwithstanding the termination of the distribution contract, the Respondent continues to use these domain names for its own personal use in direct violation of the provisions contained in the distribution agreement. Such use is illegal and infringes upon the rights bestowed to the Claimant with respect to the protection of its trademarks. It would seem that the Respondent intentionally attempted to attract, for commercial gain, Internet users to websites or other online locations owned by the Respondent by creating a likelihood of confusion with the trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites or other online locations or a product or service proposed on the websites or other online locations. B. Respondent
The Respondent did not reply to the Claimant’s contentions. 6. Discussion and Findings A. Language of the Proceedings
While the language of the registration agreement is German, the Claimant has requested for the proceedings to be conducted in English, because the underlying distribution agreement and the language used by the parties in their previous communications before the commencement of the current proceeding were conducted in English. In the Claimant’s view, a translation of the Complaint into German (after the original Complaint had already been translated from French into English) would be unreasonably burdensome.
Taking all circumstances of these dispute resolution proceedings into account (cf. paragraph 7(a) of the Rules of Procedure), it would indeed appear unnecessary to have the Complaint translated into German, since it must be assumed that the Respondent understands English. Similarly, it seems reasonable for this Panel that the language of the proceeding is English. B. The Claimant has a right in a distinctive sign with respect to the trademark PRONATURE
Under paragraph 24(c) of the Rules of Procedure, “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.”
While the Claimant has proven trademark protection in Switzerland for the mark PRONATURE, this does not appear to be the case for the trademark 1ST CHOICE (section 4 above). Switzerland is not a member of the European Community and does not appear in the list of the countries in which the Claimant has trademark rights.
The Claimant has not asserted any other “rights in a distinctive sign” (i.e. any violation of unfair competition law or name rights), and such rights are not discernable here. In order to assert a violation of unfair competition law, the Claimant would have to show that it is still active in the Swiss market and thus a competitor of the Respondent. This was not done, and it is not upon the Expert to establish the factual basis of the Claimant’s Complaint. Similarly, the Claimant has not asserted any rights in the name “1st Choice”, which rights would in any event not appear to exist since the Claimant’s corporate name is “PBL International Inc.”.
In accordance with other expert decisions, mere contractual rights (as those asserted here under the distribution agreement) are not sufficient to this Panel to satisfy the requirements of paragraph 24(c) of the Rules of Procedure (WIPO Case No. DCH2007-0002, Travel Professionals Association, en abrégé TPA vs. Denis Lambelet).
In conclusion, the Claimant has proven rights in a distinctive sign under the laws of Switzerland with respect to the trademark PRONATURE, but not in relation to the trademark 1ST CHOICE. The following assessment will therefore be limited to the trademark PRONATURE. C. The registration or use of the disputed domain name constitutes a clear infringement of the Claimant’s rights
A registered trademark allows the holder to invoke protection under the Swiss Trademark Act (hereinafter “TMA”). In particular, the owner of a trademark is entitled to enjoin a third party from using an identical sign for the same goods and services which it is registered for (Article 13(2) in connection with Article 3(1)(a) TMA).
Currently, the website under the disputed domain name presents the following German notice:
“diese website ist noch im aufbau…bitte haben sie noch ein wenig geduld - besten dank!”
(English translation: „This website is still under construction…please be patient - thank you!“)
Such notice that a website is under construction is sufficient in the Expert’s opinion to constitute a trademark infringement. At the minimum, the announcement must be qualified as an impending infringement of trademark rights, which can be enjoined under Article 55(1)(a) TMA. Such impending infringement is all the more likely since the Respondent currently appears to be violating its contractual obligations to transfer the disputed domain name to the Claimant upon termination of the distribution agreement.
Taking into account all the circumstances of this case and the fact that the disputed domain name is identical to the Claimant’s trademark PRONATURE, the Respondent clearly infringes the Claimant’s trademark rights under Article 3(1) in connection with Article 55(1)(a) TMA.
Considering in addition that the Respondent has not pleaded any grounds for defense, the trademark infringement by Respondent justifies the transfer of the disputed domain name to the Claimant. 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 Claimant.
With respect to the disputed domain name , the Complaint is denied.
Tobias Zuberbühler
Expert
Dated: May 5, 2014
1 Pet Partner GmbH appears as one of the companies with whom the Claimant signed the distribution agreement and is located / shares the same address as the Respondent, Bürobedarf Lack AG.
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