The Claimant is Odlo International AG of Hünenberg, Switzerland, represented by Wenger & Vieli, Switzerland.
The Respondent is Daao Technology, Zhang Hongjie of Xiamen, China. 2. Domain Name
The dispute concerns the following domain name . 3. Procedural History
The Request was filed in German with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2016 by email and on July 20, 2016 in hardcopy. On July 19, 2016, the Center transmitted by email to SWITCH, the “.ch” and “.li” registry, a request for verification in connection with the disputed domain name. On July 20, 2016, 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 and that the language of the registration agreement is English. In response to a notification by the Center, the Claimant filed the Request translated into English on July 24, 2016. 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 July 27, 2016. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was August 16, 2016.
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 August 17, 2016 the Center notified the Claimant accordingly, who on August 23, 2016 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 August 26, 2016 the Center appointed Peter Wild 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 Claimant is active in the field of sport- and functional wear. The Claimant is owner of the Swiss trademark CH-Nr. 3P-284211 ODLO (wordmark), filed on August 12, 1976 and of the Swiss trademark CH-Nr. 644623 ODLO (wordmark), filed on January 30, 2013. The Claimant has been registered under the company name Odlo International AG, since June 13, 1985.
According to SWITCH’s verification response, the disputed domain name was registered by the Respondent on August 31, 2015. It refers to a webshop for shoes of the brand “Camper”, with a copyright notice: “Copyright ©2016 Powered by Billig Soldes chaussures Camper. Tous droits réservés.” 5. Parties’ Contentions A. Claimant
The Claimant is owner of the Swiss trademark CH-Nr. 3P-284211 ODLO (wordmark), Swiss trademark CH-Nr. 644623 ODLO (wordmark). Furthermore, the Claimant has been registered under the company name Odlo International AG, since June 13, 1985.
According to the Claimant, its trade mark right confers on the proprietor the exclusive right to use the trade mark to identify the goods or services for which it is claimed. The Claimant furthermore contends that – as trademark owner – it can prohibit others from using a sign for business purposes if that sign is confusingly similar to a prior mark and used for identical or similar goods and services. The Claimant maintains that the Respondent uses the Claimant’s trademarks ODLO for the disputed domain name in a form identical to the registered trademarks. The Claimant’s marks are protected in classes 25 and 28. The Respondent uses the disputed domain name for a webshop for shoes of the brand “Camper”. The Claimant puts forward that shoes fall within class 25, i.e., are within the scope of the Claimant’s trademarks which in turn creates a clear risk of confusion in the market under Article 13 paragraph 2 lit. d and e of the Swiss Trademark Act, and Article 3 paragraph 1 lit. d of the Swiss Act against Unfair Competition
The Claimant alleges that by using the disputed domain name for its webshop, the Respondent gives the false impression of being an official distributor of the Claimant and that, finally, the use of the disputed domain name is further misleading because the Respondent does not even sell “Odlo” products but “Camper” products. B. Respondent
The Respondent did not reply to the Claimant’s contentions. 6. Discussion and Findings 6.1. Language of the proceeding
The Claimant initially filed the Request in German. The Center informed the Claimant that SWITCH had indicated that the Registration Agreement of the disputed domain name was in English and invited the Claimant to either submit reasons for German to be the procedural language or accept English as procedural language and file a translation of the Request, the Claimant agreed to English as procedural language and submitted an English translation of the Request. The procedural language is thus English. 6.2. Substantive Issues A. The Claimant has a right in a distinctive sign
The Claimant is owner of the Swiss trademark CH-Nr. 3P-284211 ODLO (wordmark), filed on August 12, 1976 and of the Swiss trademark CH-Nr. 644623 ODLO (wordmark), filed on January 30, 2013. The Claimant has also been registered under the company name Odlo International AG, since June 13, 1985. It consequently has distinctive rights in the trademark ODLO under the law of Switzerland.
The Panel concludes that the first condition of paragraph 24(c) of the Rules of Procedure is fulfilled. B. The registration or use of the domain name constitutes a clear infringement of the Claimant’s right
The disputed domain name prominently displays the trademark ODLO. The second element “-shop” has no distinctive characteristic and cannot prevent the high similarity in the overall comparison of the two signs. This applies even more, as the element “-shop” is purely descriptive and leads the consumer to the assumption that a website under the disputed domain name sells goods under the “Odlo” brand.
The trademarks ODLO enjoy protection for goods in classes 25 (sporting articles, among other goods) and 28. The shoes which are offered under the website of the disputed domain name fall in class 25 as well. It is a well accepted rule that shoes and other clothing articles in class 25 are similar (see for many: Decision in the opposition procedure PULCINO, IGE vom 08.01.2008, Nr. 9731).
The trademark ODLO is not descriptive of such goods, the trademark is distinctive. The use of the trademark ODLO in the disputed domain name with the simple addition of a descriptive element “-shop” for goods which are similar to the goods which are protected under the Claimant’s trademarks leads to a danger of confusion in the sense of Article 13 paragraph 2 lit. d and e of the Trademark Act.
Given this result, an evaluation of the Unfair Competition Act is obsolete.
The Panel concludes that the second condition of paragraph 24(c) of the Rules of Procedure is fulfilled. 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.
Peter Wild
Expert
Dated: September 10, 2016
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