Claimant is Boehringer Ingelheim International GmbH of Ingelheim, Germany, represented by Nameshield, France.
Respondent is ooo stratos consult, Kohlhauser Martin of Moscow, Russian Federation.
(Technical contact: Kuehrer Johannes of Neuhofen, Austria). 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 March 13, 2015. On March 13, 2015, the Center transmitted by email to SWITCH, the “.ch” and “.li” registry, a request for verification in connection with the disputed domain name. On March 13, 2015, SWITCH transmitted by email to the Center its verification response confirming that Respondent is listed as the holder of the domain name and providing the relevant contact details. In response to a notification by the Center on March 25, 2015 that the Request was administratively deficient, Claimant filed an amendment to the Request on March 26, 2015. The Center verified that the Request together with the amendment to 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 and applicable in the present case.
In accordance with the Rules of Procedure, paragraph 14, the Center formally notified Respondent of the Request, and the Dispute resolution proceedings commenced on March 30, 2015. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was April 19, 2015. Respondent has replied in an informal e-mail of April 10, 2015 sent within the time limit. On April 23, 2015, Respondent expressed its readiness to participate in a conciliation conference. In accordance with the Rules of Procedure, paragraph 17, the Conciliation conference took place by telephone on May 21, 2015. The Conciliation conference did not result in a settlement between the parties.
The Center notified Claimant accordingly, who 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 June 12, 2015, the Center appointed professor François Dessemontet 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.
The dispute before the Panel concerns the disputed domain name and does not encompass , and , although the parties have discussed a financial settlement during the conciliation conference that would also include the dispute regarding these other domain names.
The language of the proceedings is English. 4. Factual Background A. The parties a) Claimant
Claimant is a family-owned pharmaceutical group of companies with roots going back to 1885, when it was founded by Albert Boehringer (1861-1939) in Ingelheim am Rhein. Boehringer has become a global research-driven pharmaceutical enterprise and has today about 142 affiliated companies world-wide with roughly 47,400 employees.
The two main business areas of Boehringer are: Human Pharmaceuticals and Animal Health. In 2013 alone, net sales of the Boehringer group of companies amounted to about EUR 14.1 billion.
"Jardiance" is a drug developed by the Claimant and approved for the
treatment of type 2 diabetes in adults on August 1, 2014. b) Respondent
Ooo Stratos Kohlhauser Martin is a Russian consulting firm purporting to help Russian start ups to develop their business in Europe. It has registered the disputed domain name on October 7, 2014. B. The Trademark
Claimant is the owner of the JARDIANCE international trademark N° 981 336, that has been registered on July 25, 2008 under priority of a German registration of April 30, 2008. This trademark is registered in 35 countries for “pharmaceuticals”, in the class 05 of the international Classification of Goods and Services for the Purpose of the Registration of Marks (Nice Classification). Claimant alleges that this mark is used in several countries, among which is Switzerland. Claimant has also registered several domain names consisting in the distinctive element “jardiance”, for example registered originally on April 30, 2008, that is the same day as the German trademark JARDIANCE was registered. 5. Parties’ Contentions A. Claimant
Claimant asserts that the word “jardiance” is a distinctive sign which Claimant would own under the law of Switzerland or Liechtenstein. Claimant distributes pharmaceutical products in Switzerland through its subsidiary. The medication is sold only in pharmacies and on prescription.
Further, Claimant notes that the disputed domain name is identical to the distinctive trademark JARDIANCE. The addition of the ccTLD “.ch” is not sufficient to contest the identity of the disputed domain name and the trademark. That addition does not change the overall impression of the domain being connected to Claimant through its trademark. It does not prevent the likelihood of confusion between the disputed domain name and Claimant. Moreover, a Google search on the term “jardiance” provides results that are all connected with Claimant.
The registration and use of the domain name violates the trademark rights of Claimant. Respondent is not known as “Jardiance”. Claimant argues that Respondent alleges that he has developed a video game in the Russian Federation under the name “Jardiance”, but such would not be the case, as he has merely created a profile for a preexisting game named “Diablo III”, which is an action role-playing video developed, copyrighted and marketed by Blizzard Entertainment. Respondent customised video game characters such as “Jardian” or “Jardiana”. Nevertheless, Respondent has not registered a series of domain names that would be available and commencing with “jardian” or “jardiana”.
Therefore, Respondent has no rights or legitimate interests and has registered the disputed domain name in bad faith. B. Respondent
Respondent who is unassisted asserts that there is a misunderstanding linked to the translation from Russian Cyrillic to Latin letters. There would be two different ways to write in Cyrillic the trademark of Claimant. The Russian game jardiance is a prequel to DIABLO III, with a different game code optimized for bad internet connections in Eastern Europe. That game would have become very successful in the Russian Federation.
Respondent’s focus is to expand into the EU market and he has offered an amount of Euro 50’000 for the four domain names altogether concerned in the litigation. This offer seems to have been increased in the conciliation conference, but it has not been accepted by the other party, hence that latter offer is irrelevant here. 6. Discussion and Findings A. Requirement for transfer under the Rules
As required by Rules of procedure, paragraph12(b)(vi), the Expert shall grant the request if the registration or use of the disputed 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 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 of the domain name.
The Panel will discuss successively whether the Claimant has a right in a distinctive sign and if the registration or use of the disputed domain name constitutes a clear infringement of the Claimant’s right. B. Claimant has a limited right in a distinctive sign
Claimant is the owner of the international trademark N° 981 336 with validity in 35 countries, including Switzerland. There is no contestation possible about its right to the trademark JARDIANCE.
That trademark is registered and used exclusively for pharmaceuticals, in concreto a medication put on the market for less than one year against the excess of glucose in case of diabetes 2.
Under Swiss law, the owner of a trademark can only claim exclusivity for products or services that are identical, or similar to his own products or services when there exists a risk of confusion (Art. 3 lit. b Loi sur la Protection des Marques (Act on the Protection of Trademarks) of August 28, 1992, hereafter LPM). That is known as the principle of specialty (see for all R.Schlosser/C. Maradan, Commentaire romand Propriété intellectuelle, ed. by J. de Werra and Ph. Gilliéron, 2013, N. 126-127 ad Art. 3 LPM).
The only notable exception to the principle of specialty under the Swiss law of trademarks regards the very well-known trademark that Art. 15 LPM protects against any and all infringements independently from the line of products or services on which the mark is affixed or for which it is used. In order for a trademark to be very well-known under that provision, it must enjoy a general consideration among the Swiss public, in the three linguistic territories of Switzerland. The mark must evidence a unique character and carry a very positive image of quality and prestige among the consumers, making it an important asset for advertising (see for all these criteria Ph. Gilliéron, Commentaire romand, N. 9 to 13 ad Art.LPM).
In the present case, the trademark JARDIANCE is certainly devoid of these particularities denoting that a trademark is very well-known. It is used since less than one year. It is not known in the general public in Switzerland. It does not seem to be particularly apt to impress the public as to the quality of the drug, which was long held from market due to the fear that some side effects could not be avoided. No advertising campaign on a large scale seems to have been launched.
Therefore, the trademark of Claimant is not to be deemed to enjoy the benefit of Art. 15 LPM.
Under the case law of the Federal tribunal, Switzerland’s Supreme Court, the general rule in case of conflict between signs and marks of different types, such as trademarks and domains, or trademarks and trade names, is the rule of the priority in time (see Arrêts du Tribunal Fédéral—Federal Tribunal Official Reporter—125 III 91 at 93 (“Ritz”); in the same sense Fed. Trib. in SIC 2005 at 390 (“Maggi”)). There is no preeminence of one category of distinctive sign over the other ones. It is necessary to balance the interests of the parties (ATF 126 III 239 at 245 ("Berner Oberland")). The commentary follows the case law in this regard (see for all F. Dessemontet, La propriété intellectuelle et Les contrats de licence, 2d ed. 2011, 442-447).
The trademark here has been registered in 2008, even if it has not been used for a long time until 2014. The domain name has been registered in 2014, so that priority in time could favor Claimant in a different case. However, in the present case, the registrant is active in a completely different line of products, i.e. video games, and not pharmaceuticals. There can be no risk of confusion as the products are not identical or similar within the meaning of Art. 3 LPM.
Further, by application of the Swiss rules as stated above, the Panel finds that Respondent has a legitimate interest to use a domain name that is closely connected to a character for a video game to which Respondent has added a useful variation, so as to allow players to enjoy their game in spite of a slower internet connection, at least according to his own allegations. C. Claimant has no legitimate interest to be protected under the Law against Unfair Competition
Under Swiss law, where the trademark right is not protected, for instance by reason of the principle of specialty principle as is the case here, Claimant can attempt to base its claims on the Law against Unfair Competition of December 19, 1986, in particular Art. 3 (d) thereof, prohibiting the creation of a risk of confusion (“passing-off”). The French Counsel of Claimant has not expressly mentioned the Law against Unfair Competition, but she has pointed out two of the main elements of a claim in unfair competition, i.e. the risk of confusion between parties and the alleged bad faith of Respondent, so that the Panel has to examine the possible unfair competition count in the present case.
There must not necessarily exist a competition between the parties for that law to be applicable. It is enough for the market to be affected by the behaviour of Respondent. In principle, the Law against unfair Competition will therefore apply in the present dispute.
However, the essential requirements of a claim under the Law against Unfair Competition are not fulfilled here. The domain name does not take up the trade name of Claimant, but only the trademark of one of its products, and one that has been put very recently onto the market. The public cannot possibly identify the video game - and its head of a family called “Jardiana” or “Jardian” - with Claimant or a pharmaceutical product against diabetes 2. The risk of confusion is nil.
Further, Claimant alleges that Respondent would have acted in bad faith. The only element supporting that assertion is that the domain name has been registered at the end of 2014, that is after the moment when the marketing of the medication bearing the trademark has been authorised. That time coincidence alone is insufficient ground to accept that Respondent is acting in bad faith.
In this regard, the Panel will recall that under Art. 3 of the Swiss Civil Code, good faith is presumed. That is a rebuttable presumption and it can be rebutted by showing that Respondent should be aware of Claimant’s better legitimate interest to keep the exclusivity of the word “Jardiance”. Nothing in the file leads to that conclusion. Since a trademark is only protected against use for products that are identical or similar, except under Art. 15 LPM providing a special status for very well-known trademarks, Respondent could not have known that he was illegally misappropriating the sign.
There is a further element indicating that Respondent is not attempting in bad faith to disturb Claimant’s business or to pass off his video game variation as the product of Claimant: Respondent has offered two times a substantial amount of money to settle the case, so that he could get ahead with the marketing of his video game variation. In the usual case of domain piracy, the contrary is true, the cybersquatter requesting money from the legitimate owner to cease and desist from his unlawful registration.
All things considered, the balance of interests is not in favour of Claimant. Claimant will be able to use its domain name and other possible domain names for the marketing of its products, without interference from the Swiss domain name belonging to Respondent. Meanwhile, Respondent can build on his video game variation and attempt to find a place in the European market through the use of his domain name and webpage.
The present result of our examination of that case is based on Swiss law, and does not necessarily imply that the solution would be the same under the other domain names at issue in Denmark, Benelux and Austria. 7. Expert Decision
For the above reasons, in accordance with Paragraphs 24 of the Rules of Procedure, the Request is denied.
Professor François Dessemontet
Expert
Dated: June 15, 2015
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