The Claimant is J&J Snack Foods Corp., of United States of America (“United States or U.S.”), represented by M. Zardi & Co SA, Switzerland.
The Respondent is Slush Ice and Drink AG Neil Jackson, of Switzerland, represented by Dohmen Advocaten, Netherlands. 2. The Domain Names
The dispute concerns the following domain names The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2020. On December 9, 2020, 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 10, 2020, SWITCH transmitted by email to the Center its verification response confirming that the Respondent is listed as the holder of the domain names and providing the relevant contact details. The Center verified that the Request satisfied the formal requirements of the Rules of procedure for dispute resolution procedures for “.ch” and “.li” domain names (the “Rules of Procedure”), adopted by SWITCH, on January 1, 2020. In accordance with the Rules of Procedure, paragraph 14, the Center formally notified the Respondent of the Request, and the Dispute resolution procedure commenced on December 15, 2020. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was January 4, 2021. The Respondent filed a Response on January 4, 2021. The Center appointed Daniel Kraus in this matter on February 2, 2021. A conciliation was about to take place on February 16, 2021, but was cancelled by the Respondent. The Claimant notified the Center on February 16, 2021, of the continuation of the Dispute resolution proceedings in accordance with specified in paragraph 19 of the Rules of procedure and paid the required fees. On March 4, 2021, the Center appointed Theda König Horowicz 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 a United States company established in 1971 which manufactures, markets and distributes snack food and frozen beverages for the food service and retail supermarket industries. The Claimant owns, uses and licenses several brands including SLUSH PUPPIE. The Claimant holds trademark registrations for SLUSH PUPPIE including a Swiss trademark registration for SLUSH PUPPIE and device” No. 315094 in international classes 6, 21 and 32 of April 28, 1982. The said trademark was previously hold by other owners and was transferred to the Complainant in 2011. It is valid until April 23, 2021. The trademark SLUSH PUPPIE is notably used on the website “www.slushpuppie.com” which is operated by the Claimant through one of its United States based subsidiaries, The ICEE Company (formerly Slush Puppie Corporation). A license agreement was concluded in 1999 by Slush Puppie Corporation (now The ICEE Company) with Slush Puppie Limited, a company based in the United Kingdom (“UK”), in relation to the brand SLUSH PUPPIE. Slush Puppie Limited in its turn allowed sublicensed the right to use the SLUSH PUPPIE trademark in Switzerland to the Respondent. The license agreement of 1999 was terminated by The ICEE Company on June 25, 2019. Furthermore, on December 17, 2019, the ICEE Company sent through its legal representative a notice of termination / revocation to use the SLUSH PUPPIE trademark to Frozen Brother Switzerland AG, a Swiss Company linked to the Respondent. Following the terminations of the above-mentioned license agreements and several other developments, Slush Puppie Limited (UK) filed a civil claim against the ICEE Company before the United States District Court for the Southern District of Ohio. The proceedings are pending. The disputed domain name The disputed domain name The disputed domain name The Claimant asserts to have rights in Switzerland over SLUSH PUPPIE, notably through its Swiss registration No 315094 for SLUSH PUPPIE and device of April 28, 1982 which was duly renewed. The Claimant further asserts that the disputed domain names are almost identical to the trademark SLUSH PUPPIE and device. The use of the disputed domain names by the Respondent to direct consumers to a website that offers exactly the same goods under the Claimant’s trademarks clearly constitutes a trademark infringement under Swiss Trademark Law. The disputed domain names create a likelihood of confusion to the effect that Internet users are likely to assume an existing connection, which does not exist anymore, between the Respondent’s websites and the Claimant trademarks, companies and protected goods. The Respondent appears to be trying to take advantage of the Claimant’s well-known trademark concerning the sale of non-alcoholic beverages, including frozen confections, and related goods and services. Such conduct violates the Claimant’s rights in its distinctive sign under Article 3(d) of the Swiss Unfair Competition Law. The Complainant also indicates that the Respondent has no rights or legitimate interests in the disputed domain names, particularly as the license agreement was terminated. Further the disputed domain names would be used in bad faith because it is apparent that the Respondent was well aware of the Complainant and its subsidiary, The ICEE Company and their business. The display of Complainant’s goods and brand on the website linked to the disputed domain name The Respondent indicates that the license granted to Slush Puppie Limited (UK) was unlawfully terminated and that proceedings in this regard are pending in the United States. A final judgment needs to be rendered in this regard before a decision can be taken on the disputed domain names which are part of the U.S. dispute. The information of the Complainant according to which there are no legal proceedings pending on the disputed domain names is therefore incorrect. The Respondent thus requests the suspension of the administrative procedure under the Rules of Procedure relating to the disputed domain names until a final decision was taken in the United States on this subject matter. Furthermore, the Respondent has been using SLUSH PUPPIE since the 1970s. The Respondent traded for many years under the disputed domain names with the knowledge of the Claimant, based on a sublicense which was granted to the Respondent by Slush Puppie Limited (UK). Based on this sublicense, the Respondent established a business. The Respondent does therefore have a legitimate interest in the disputed domain names and is not acting in bad faith. The Respondent denies that the Claimant would have rights in the Swiss trademark SLUSH PUPPIE. There would be good grounds to claim revocation or invalidity of the said trademark, including for non-use if the reasoning of the Claimant would be followed. As a matter of fact, the Claimant was not doing business in Switzerland. The Respondent is also of the opinion that the SLUSH PUPPIE trademark would be generic and would thus be subject to an invalidity action. The addition of a device does not change this situation. 6. Discussion and Findings According to the Rules of Procedure, paragraph 24(c), the Expert shall grant the request if the allocation or use of the domain name constitutes a clear infringement of a right in a distinctive sign which the Claimant owns under the laws of Switzerland. The Rules of Procedure, paragraph 24(d) specify that a clear infringement of an intellectual property right exists when: - 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 - the respondent has not conclusively pleaded and proven any relevant grounds for defense; and - the infringement of the right justifies the transfer or revocation of the domain name, depending on the remedy requested in the request. A. The Claimant has a right in a distinctive sign under the law of Switzerland The Claimant has established to be the owner of the Swiss trademark registration No. 315094 for SLUSH PUPPIE and device, in international classes 6, 21 and 32, of April 28, 1982. Therefore, the Expert finds that the Claimant has established its exclusive right in its distinctive sign 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. B. The allocation or use of the domain name constitutes a clear infringement of the Claimant’s right According to the case file, the Claimant licensed trademark rights in SLUSH PUPPIE in 1999 through one of its subsidiaries to a UK company Slush Puppie Limited which in its turn sublicensed these rights to third parties, including to the Respondent. The license with Slush Puppie Limited (UK) was terminated in 2019 by the Claimant respectively by its subsidiary in 2019. Court proceedings are pending between the Claimant’s subsidiary and the Slush Puppie Limited (UK) in the United States. Furthermore, the Claimant’s subsidiary terminated in 2019 the right of the Respondent to use the SLUSH PUPPIE trademark in Switzerland. In the present proceedings, the Claimant asserts a violation of both the Swiss Trademark Law and the Unfair Competition Law and the Respondent claims to have valid rights to have registered and to use the disputed domain names. The Respondent also raises that it considers the termination of its sublicense as invalid and asks for the suspension of the present proceedings until the U.S. Courts render a decision. In relation to the request of suspension made by the Respondent, the Expert notes that the parties in the US proceedings are different and that the disputed domain names are not directly covered by these. Furthermore, the criteria established in paragraph 8(a) of the Rules of Procedure are not fulfilled. A suspension of the present proceedings can therefore not be pronounced. The Rules of Procedure, paragraph 24(d) specify that there is a clear infringement of an intellectual property right exists only when 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. The Expert notes that the constellation of facts in the present matter is very complex and would need to be clarified on many aspects. In addition, the Expert is of the view that the question as to whether the sublicense was rightfully granted by the above-mentioned Slush Puppie Limited (UK) to the Respondent and whether the said sublicense shall be considered as being validly terminated following Claimant’s intervention of 2019 cannot be dealt with within the present administrative proceedings. It appears that the present case raises many complicated legal questions which would obviously be better suited for state court proceedings to take the necessary evidence and adjudicate this complex matter. Consequently, the Expert holds that the Claimant has not provided sufficient evidence to establish a clear infringement of its rights in the sense of paragraph 24(d)(i) of the Rules of Procedure. Of course, the Claimant remains entirely free to initiate legal proceedings before the relevant national courts and/or competent state authorities. 7. Expert Decision For the above reasons, the Request is denied. Theda König Horowicz
Expert
Dated: March 26, 2021
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