The Claimant is Société des Produits Nestlé S.A. of Vevey, Switzerland, represented by Studio Barbero, Italy.
The Respondent is Boer Romania Srl of Satu Mare, Romania, self-represented. 2. Domain Name
The dispute concerns the following domain name .
The Registry of the disputed domain name is SWITCH, Zurich, Switzerland. 3. Procedural History
The Request was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on September 22, 2014 electronically and on September 25, 2014 per courier. On September 22, 2014, the Center transmitted by email to SWITCH, the ".ch" and ".li" registry, a request for verification in connection with the disputed domain name. On September 23, 2014, 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 agreement for the disputed domain name is German. Accordingly, the Claimant was requested to provide 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 English; 2) submit the Request translated into German; 3) submit a request for English to be the language of the proceedings. Such request shall include arguments and supporting material as why the proceedings should be conducted in English. The Claimant submitted a request that English be the language of the proceedings, to which the Respondent replied requesting German to be the language of the proceedings.
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 in English and in German, and the Dispute resolution proceedings commenced on October 1, 2014. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was October 21, 2014.
The Respondent filed a Response in German on October 20, 2014 without expressing its readiness to participate in the conciliation. The Center informed the Claimant about the possibility to continue with the proceedings, and on October 27, 2014 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. Accordingly, the Center continued with the proceedings on October 28, 2014.
On November 3, 2014 the Center appointed Daniel Kraus as Expert in this case. The Expert finds that it was properly appointed. In accordance with the Rules of Procedure, paragraph 4, the above Expert has declared his independence of the parties. 4. Factual Background
The Claimant is the owner of several BÜBCHEN trademarks for baby care products, secured in the European Community, in Switzerland and in many national jurisdictions worldwide, in particular:
- Swiss Trademark Registration No. 456576 of August 4, 1998, BÜBCHEN (word and device mark), in classes 03 and 05 (Annexes 2.1 and 2.1.1 for the renewal certificate);
- International Trademark Registration No. 705630 of November 25, 1998, BÜBCHEN (word and device mark), in classes 03 and 05 (Annex 2.2);
- International Trademark Registration No. 1088530 of April 7, 2011, BÜBCHEN (word and device mark), in classes 03, 05, 08, 10, 16, 21, 24, 25, 27, 28 and 44 (Annex 2.3);
- Community Trademark Registration No. 004584033 of September 12, 2005, BÜBCHEN, in classes 03 and 05 (Annex 2.4) ;
"Bübchen" products have been exported to Romania since 1997. They were distributed by the Respondent, in particular through a distribution agreement executed with Nestlé Deutschland AG, an associated company of the Claimant.
Despite the official termination of the distribution agreement as of March 2012 and the fact that the Respondent ceased purchasing Bübchen products from Nestlé Deutschland AG as of March 2013, the Claimant ascertained that the Respondent was operating its e-shop under the domain name and offering for sale a variety of products, not limited to Bübchen products.
The Respondent registered the disputed domain name without authorization of the Claimant or its associated companies on November 14, 2013, after receipt from the Claimant of a Cease and Desist letter demanding to refrain from using the domain name and its transfer to the Claimant. 5. Parties' Contentions A. Claimant
In summary, the Claimant contends the following:
The disputed domain name used by the Respondent is identical to the Claimant's trademarks and, although the Respondent had been a distributor of the Claimant's products, it was not authorized to register the disputed domain name.
The registration and use of the disputed domain name infringes the Claimant's rights. The disputed domain name only differs from the trademarks in which the Claimant has rights for the replacement of the letter "ü" (umlaut) with "u". The common way to spell words with umlauts is to replace the "ü" by "ue" or simply replace it with an "u". Both ways to spell the letter are common and widely used and, consequently, the transcription of the German "ü" in "ue" or "u" is irrelevant and does not avoid a finding of confusing similarity between the signs.
Notwithstanding the termination of the distribution contract, the Respondent continues to use this domain name 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. B. Respondent
The Respondent contends that the Claimant is not automatically entitled to own the disputed domain name, since it doesn't have trademark rights for this name, the Claimant only registered as domain names other transcriptions of its trademark BÜBCHEN, such as , , etc.
The Respondent further contends that the registration of the disputed domain name took place as a result of the dispute with the Claimant with respect to the domain name . 6. Discussion and Findings A. Language of the Proceedings
Pursuant to paragraph 7 of the Rules of Procedure, the language of the proceedings is typically the language of the relevant domain name registration agreement. However, the Expert has the authority to determine otherwise on application by one or both parties or at their own discretion in view of the circumstances of the proceedings.
In the present case, the contractual language selected by the Respondent according to SWITCH is German, but the Claimant requested that the language of the proceedings be English.
The Claimant has proven that the Respondent perfectly understands, is perfectly fluent and it is able to correspond in English, as demonstrated by the fact that English was adopted for the distribution agreement executed between the Claimant's associated company "Nestlé Deutschland AG" and the Respondent. Besides, the Claimant corresponded with Respondent in Romanian, through the assistance of a local agent, not in German. All the correspondence had been already translated in English for the Claimant's full understanding of the matter.
Such a situation has already led previous Experts to adopt another language than the language of the registration agreement as language of the proceedings, as was the case in PLB International Inc. v. Bürobedarf Lack AG / Pet Partner GmbH, Peter Wyser, WIPO Case No. DCH2013-0027, where the Panel found that "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 […] were conducted in English".
Besides, the fact that the Respondent specifies on its LinkedIn profile that he speaks English, also speaks in favor of avoiding the costs and time necessary for the translation into German of the Request and of its annexes.
Taking all circumstances of these dispute resolution proceedings into account (cf. paragraph 7(a) of the Rules of Procedure), it would appear unnecessary to have the Request translated into German, since the Expert assumes that the Respondent understands English. In light of this, and considering that the Center has appointed an Expert familiar with both English and German languages, it seems reasonable for this Expert that the language of the proceeding is English. B. The Claimant has a right in a distinctive sign with respect to the trademark BÜBCHEN
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."
In the present case, the Claimant has proven trademark protection in Switzerland for the mark BÜBCHEN. Accordingly, the condition of the existence of a right in a distinctive sign is fulfilled. C. The registration or use of the domain name constitutes a clear infringement of the Claimant's right
Two questions need to be answered here. First, whether the disputed domain name registered by the Respondent is confusingly similar to the trademark in which the Claimant has rights under Swiss Law. Second, whether the circumstances in which the domain name was registered or used would constitute a clear infringement under Swiss Law.
As to the first question, the Expert notes that the disputed domain name does not contain the German "umlaut" "ü". Technically, the umlaut can be used in domain names (i.e IDN), but may lead to problems for example in e-mail traffic. For this reason, vowels with umlauts are usually transcribed with the addition of an "e". Accordingly, "ü" is transcribed as "ue" in domain names, which reproduces the exact same sound. However, it also happens that the umlaut is simply left out, such as in or . In languages in which the umlaut is not used, its absence in a domain name passes unnoticed and may be a source of confusion. This may not be the case in languages in which the umlaut is used.
As to the absence of the umlaut over the vowel "u" in the disputed domain name ,the risk of confusion may be considered to this Expert as limited where German is spoken, as in the minds of Swiss-German speaking people, language in which the umlaut is known. Pronunciation is not the same whether there is an umlaut or not. This argument would hence plead in favor of absence of confusion in this Expert's opinion.
However the Expert notes, as the Claimant contends, that in previous Uniform Domain Name Resolution Policy (UDRP) cases, previous panels did not consider that the mere absence of an umlaut in a domain name diminished the confusing similarity between the Claimant's distinctive mark and the domain name (see in particular Gudrun Sjödén Design Aktiebolag v. Domain Admin, Private Registrations Aktien Gesellschaft / PrivacyP, WIPO Case No. D2012-1903). Based on the fact that a part of Switzerland is not "umlaut-sensitive", that the website to which the disputed domain name may be accessed from non-German speaking countries, and that the disputed domain name and the trademark have no other difference than the absence of the umlaut in the disputed domain name, the Expert finds that the Respondent registered a disputed domain name that is confusingly similar to the Claimant's trademark.
As to the second question, the Respondent himself admits the similarity between the combination of letters "Bubchen" and the mark BÜBCHEN, and that the registration of the disputed domain name was a reaction to the termination of the distribution agreement by the Claimant. The Expert finds therefore that the Respondent was aware of the Claimant's rights when it registered the disputed domain name.
In any event, Article 4 of the Swiss Trademark Act (the "TMA") foresees that "[T]rade marks registered in the name of agents, representatives or other authorised users without the consent of the proprietor, or trademarks which remain entered in the Register after the withdrawal of such consent, are also not protected (sic)". While this Expert notes that the above article is applicable during a distribution agreement this set of rules would also apply in this present case where the distribution agreement is terminated.
Furthermore, on the basis of article 13 of the TMA, the Swiss Federal Supreme Court recognized 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, ); by analogy, domain names registered by a distributor without the consent of the trademark proprietor are not protected (see Kambly SA Spécialités de Biscuits Suisses v. Swiss Connection Inc. WIPO Case No. D2003-0983).
The Expert finds, based on articles 4 and 13 of the TMA, that the registration by the Respondent of the disputed domain name constitutes a clear infringement under Swiss Law.
Finally and in view of the above, the Expert also considers that the registration and use by the Respondent of the disputed domain name is also contrary to the Swiss Federal Act on Unfair Competition, article 2, as the registration of a domain name without legitimate interest but to impair a third party is considered an act against the principle of fairness and integrity by the Swiss Federal Court (DFT 126 III 239, 247 and DFT 116 II 365).
Noting the parties' contentions regarding the domain name , this Expert notes that the applicable Policy for the domain name is the UDRP, and accordingly this Expert will not make any finding regarding this domain name. Therefore, the use of the domain name redirecting to the Respondent's webpage in which the Claimant's products are apparently offered together with competitor's products will not be considered in this Decision.
For these reasons, the Expert considers that a clear infringement of the Claimant's trademark right exists in the present case, pursuant to paragraph 24(d) of the Rules of Procedure. 7. Expert Decision
For the above reasons, in accordance with paragraphs 24 of the Rules of Procedure, the Expert orders that the disputed domain name be transferred to the Claimant.
Daniel Kraus
Expert
Dated: November 19, 2014
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