The Claimant is Drini i Bardhe Sp.p.k., Kosovo1 , represented by Keltie LLP, United Kingdom.
The Respondent is Andy Rapold, Switzerland. 2. Domain Name
The dispute concerns the following domain name The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2019. On December 12, 2019, the Center transmitted by email to SWITCH, the “.ch” and “.li” registry, a request for verification in connection with the disputed domain name. On December 12, 2019, 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 January 13, 2020. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was February 2, 2020. On February 3, 2020, the Center notified the Claimant accordingly, who on February 4, 2020, 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 February 10, 2020, the Center appointed Tobias Zuberbühler as Expert in this case. The Expert finds that he was properly appointed. In accordance with Rules of Procedure, paragraph 4, the above Expert has declared his independence of the parties. The language of the registration agreement is German as confirmed in the Registry’s email received on December 12, 2019. The Claimant submitted its request for English to be the language of proceedings and the Respondent did not reply to the Request. Accordingly, the Center notified the Parties on January 10, 2020, to proceed in dual languages – English and German. 4. Factual Background The Claimant is Drini i Bardhe Sp.p.k., a company incorporated under the [Laws of the Republic of Kosovo]. The Claimant owns the SPIRIT OF DRINI trademark in Switzerland (registration No. 672077 registered on April 17, 2015). The disputed domain name was registered by the Respondent on April 16, 2019. According to the information provided by SWITCH, the disputed domain name is currently held by Andy Rapold. The disputed domain name previously resolved to a website offering information on beverages. However, it has stopped resolving to an active website after the Center’s notification of the Request to the parties. 5. Parties’ Contentions A. Claimant In summary, the Claimant asserts the following: The Claimant is the owner of the rights in the distinct sign SPIRIT OF DRINI. The Claimant is using the SPIRIT OF DRINI trademark to advertise and sell its products, namely mineral water, through its The Respondent has registered the disputed domain name after the SPIRIT OF DRINI trademark has been registered and used it to showcase beverages and supply information about drinks. The Claimant claims that such use constitutes an infringement of the Claimant’s SPIRIT OF DRINI trademark, leads to consumers’ confusion and constitutes unfair competition. B. Respondent The Respondent did not reply to the Claimant’s contentions. 6. Discussion and Findings On the basis of the facts and evidence introduced by the Claimant, and with regard to paragraph 7(a), 24(c) and (d) of the Rules of Procedure, the Expert concludes as follows: A. Language of the procedure Pursuant to paragraph 7(a) of the Rules of Procedure, the language of the proceedings shall be the language of the registration agreement, without prejudice to the authority of the Center, a conciliator or an expert, exceptionally to determine otherwise on application by one or both parties or at their own discretion in view of the circumstances of the dispute resolution proceedings. In the present case, the language of the registration agreement is German. The Claimant submitted a request for English to be the language of proceedings arguing that the disputed domain name has been registered with English wording and that the Respondent has at least working knowledge of the English language. The Respondent did not reply to the Request. Accordingly, the Center notified the parties that the language of the procedure will be English and German. Taking into account the circumstances of this case, that the Respondent was notified of the proceedings in English and in German, and the fact that the Respondent has not participated in these proceedings, the Expert does not consider it prejudicial to the Respondent if English were adopted as the language of the proceedings and will thus render its decision in this language. B. The Claimant has a right in a distinctive sign under the law of Switzerland The Claimant has established ownership of the Swiss national word and device mark SPIRIT OF DRINI (registration No. 672077 registered on April 17, 2015). Therefore, the Expert finds that the Claimant has established its exclusive right in its distinctive sign SPIRIT OF DRINI in Switzerland. Accordingly, the Claimant has provided sufficient evidence of Swiss trademark rights in accordance with paragraph 24(d)(i) of the Rules of Procedure. C. The registration or use of the domain name constitutes a clear infringement of the Claimant’s right According to Swiss Supreme Court rulings, domain names in their function identify the persons, products, objects or services behind them and are therefore comparable with personal names, trade names or trademarks (BGE 126 III 239. cons. 2.b). The function of domain names as identifiers means that they must maintain necessary distance from absolutely protected third-party identifiers (BGE 126 III 239, cons. 2.c). (a) Swiss Federal Act on the Protection of Trademarks and Indication of Source (“STMPA”) According to article 3 para. 1 and article 13 para. 1 STMPA, a trademark right gives the owner the exclusive right to use the trademark to identify the goods or services for which it is claimed and to dispose of it. The owner may prohibit others to use a sign that (i) is identical to the owner’s earlier trademark and intended for the same goods or services; A likelihood of confusion exists as soon as the use of a similar or identical name for an Internet site creates a risk of attribution of the site to the trademark owner (see BGE 128 III 403; Mondini/Zollinger-Löw/Buri, SIWR III/2, Domain Names, N 655 and 664). The Respondent has actively used the disputed domain name in connection with products that are similar to those claimed by the trademark, i.e. beverages and mineral water and the disputed domain name is not sufficiently distinguishable from the Claimant’s SPIRIT OF DRINI trademark. Moreover, the Claimant uses an identical domain name, the only difference being the Top-Level Domain (“TLD”). Therefore, there is a risk that users who visit the Claimant’s website, but mistype the TLD will unintentionally access the Respondent’s website, where identical or similar products are presented. The disputed domain name thus creates a likelihood of confusion with the Claimant’s SPIRIT OF DRINI trademark and website. The registration and use of the disputed domain name is therefore clearly infringing the Claimant’s trademark rights. (b) Swiss Unfair Competition Act (“SUCA”) Domain names are (also) subject to the fair trading principle of competition law (BGE 128 II 353, cons. 4). Whoever “takes measures which are likely to cause confusion with the goods, works, services or business operations of another person” acts unfairly in accordance with article 3 para. 1 lit. d SUCA. Also, “any deceptive behavior or business conduct or conduct in any other way contrary to the principle of good faith which influences the relationship between competitors or between suppliers and customers” is unfair and unlawful according to the general clause of Art. 2 SUCA. In the present case, the disputed domain name is only distinguishable from the website of the Complainant by the TLD and has been used to set up a website that offers information on goods similar to the products offered by the Claimant. When registering such a domain name the Respondent created a likelihood of confusion to the effect that Internet users are likely to assume a connection between the Respondent’s website and the Claimant’s trademark, company and protected products and services. In this respect, the Respondent has violated article 3 para. 1 lit. d SUCA. Since the Respondent has not put forward any conclusive grounds for defense that would refute the Claimant’s representations or justify his own legitimate interest and having regard to the submissions, the Expert finds that the Claimant has fulfilled paragraph 24(c) and (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 Tobias Zuberbühler 1 The reference to Kosovo should be understood to be in the context of the United Nations Security Council resolution 1244 (1999).
(ii) is identical to the owner’s earlier trademark and intended for similar goods or services resulting in a likelihood of confusion; or
(iii) is similar to the owner’s earlier trademark and intended for the same or similar goods or services resulting in a likelihood of confusion.
Expert
Dated: February 25, 2020
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