The Claimant is Quintessentially (UK) Ltd, United Kingdom (“UK”), represented by Stobbs IP Limited, United Kingdom.
The Respondent is Webagentur.Ch AG, Switzerland.
2. The Domain NameThe dispute concerns the following domain name
The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2021. The Request was including redacted paragraphs and reduced annexes as these were considered as being sensitive from a commercial point of view by the Claimant. On May 14, 2021, the Center transmitted by email to SWITCH, the “.ch” and “.li” registry, a request for verification in connection with the disputed domain name. On May 17, 2021, 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 procedures for “.ch” and “.li” domain names (the “Rules of Procedure”), adopted by SWITCH, on January 1, 2020.
By emails of May 26, 2021, and June 3, 2021, the Center drew the Claimant’s attention over the fact that it had not received some annexes and asked the Complainant to remove the redacted parts from its Request. On June 4, 2021, the Claimant sent to the Center an amended Complaint along with the missing annexes and drew the Center’s attention over the fact that Annexes 9 and 10 are highly confidential as are the references to them in the Request. Accordingly, the Claimant mentioned that it would feel uncomfortable in having these Annexes given to the Respondent and asked the Center how they would suggest to deal with this situation. In agreement with the Center, the decision was made to hold Annexes 9 and 10 back.
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 June 10, 2021. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was June 30, 2021.
In the absence of a Response, the Center notified the Claimant who made an application on July 2, 2021, for the continuation of the Dispute resolution proceedings in accordance with paragraph 19 of the Rules of procedure and paid the required fees.
On July 1, 2021, the Center received an email from representatives of K Events on which the Respondent was copied, email which explained that K Events mandated the Respondent to build up its website under the disputed domain name. K Events, in its capacity of underlying owner of the disputed domain name, declared itself ready to transfer it to the Claimant. A conciliation conference was organized by the Center, which took place by telephone on August 11, 2021, following which the proceedings were suspended until August 18, 2021. The conciliation did not result in a settlement due to Respondent’s absence of reaction to participate into the conciliation and to sign the agreement. Consequently, the Center informed the Parties on September 24, 2021, that it would proceed with the appointment of an Expert.
On October 1, 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 BackgroundThe Claimant is a UK Company incorporated in England and Wales. It is a member of a group of companies known collectively as the Quintessentially Group, which trades under the said name since 2000. Its activities started as a concierge service aimed at high net worth individuals and operating in the luxury, entertainment and music sectors.
The Claimant produces bespoke events for a wide range of high profile, corporate and private clients, from star-studded occasions to intimate celebrations. Services include event management, design and technical production, entertainment and content, strategic marketing, sponsorship and corporate hospitality.
The Claimant has affiliated companies and offices in Switzerland where the trademark QUINTESSENTIALLY is used in relation with the above-mentioned services.
Along with several foreign trademark registrations, the Claimant owns the following Swiss trademark registrations:
- QUINTESSENTIALLY No P-576074, in international classes 35, 39, 41, 43 and 45, registered on September 2, 2008; and
- QUINTESSENTIALLY No 579427, in international class 36, registered on September 20, 2008.
The disputed domain name was first registered on February 9, 2011. It changed ownership several times and currently redirects to the website “www.k-events.agency”. KEvents is an organization based in Geneva, Switzerland, which is active in the organization of events in Geneva, Switzerland, and Paris, France. It is managed by a former franchise partner of the Claimant. K Events mandated the Respondent to build up its website under the disputed domain name and its representatives expressed their willingness to have the disputed domain name transferred to the Claimant.
The Respondent did not react to the said request made by K Events.
5. Parties’ Contentions A. The ClaimantThe Claimant states to have earlier trademark rights in Switzerland and in several other countries over QUINTESSENTIALLY which is extensively used in relation to the organization of events, including in Switzerland where the Claimant has offices. The Claimant’s activity under QUINTESSENTIALLY is well-known notably through its Internet presence and official website “www.quintessentially.com”. The Claimant alleges that the disputed domain name, which contains the trademark of the Claimant in its entirety, is confusingly similar to its trademark rights in relation to QUINTESSENTIALLY which enjoys a well-known character. Consumers viewing the website attached to the disputed domain name will erroneously get the impression that the disputed domain name is linked to the Claimant.
The Claimant further states that the disputed domain name infringes Article 13 of the Swiss Trademark Act since it contains the Claimant’s trademark QUINTESSENTIALLY and since it is used in relation to identical services, that is the organization of events. The disputed domain name is therefore confusingly similar to the Claimant’s Swiss trademarks.
Furthermore, the Claimant underlines that the Respondent does not have any legitimate interest in the disputed domain name which seems to be hold for a former franchise partner of the Claimant, former partner which now operates under the name K Events for identical services than the Claimant, that is the organization of events. Indeed, the disputed domain name is redirected to the website “www.k-events.agency” which promotes identical services than the services provided by the Claimant, services for which the Claimant is well-known in Switzerland and in other countries. In this frame, the Claimant also alleges an infringement to the Swiss Unfair Competition Act.
The Claimant also alleges that the disputed domain name was registered without its authorization. It was thus registered and is being used in bad faith. In this regard, it seems obvious that the disputed domain name was registered in order to profit from the Claimant’s high reputation with the name QUINTESSENTIALLY and for the purpose of selling the disputed domain name for Respondent’s commercial gain.
In addition, the registration of the disputed domain name by the Respondent prevents the Claimant to reflect its trademark in a corresponding domain name in Switzerland.
B. The RespondentThe Respondent did not reply to the Claimant’s contentions. As mentioned above, representatives of K Events submitted several emails stating notably that WebAgentur.ch AG is one of their subcontractors and that this agency created their website. More specifically, these representatives of K Events claim that K Events is the owner of the disputed domain name and that they agree to “release the domain name
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:
(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 defense; and
(iii) the infringement of the right justifies the transfer or revocation of the domain name, depending on the remedy requested in the request”.
The Claimant has shown to have registered trademark rights in Switzerland for QUINTESSENTIALLY.
Therefore, the Expert finds that the Claimant has established its exclusive right in this distinctive sign in Switzerland. Accordingly, 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 Claimants’ rightAccording to Article 13, paragraph 1 and paragraph 2(c) of the Federal Act on the Protection of Trademarks and indication of Source (Trademark Protection Act (“TmPA”)), a trademark right confers on the proprietor the exclusive right to use the trademark to identify the goods or services for which it is claimed, and to prohibit others from offering or providing services under a sign that is identical or confusingly similar to its trademark.
According to Swiss supreme court rulings, the use of domain names that are identical or confusingly similar to a trademark on websites offering the same or similar goods constitutes trademark infringement (see e.g. decisions of the Swiss Federal Supreme Court 4C.31/2004,
The disputed domain name contains the Claimant’s QUINTESSENTIALLY trademark in its entirety and is therefore similar to the Claimant’s protected trademark. The addition of the term descriptive term “events” in the disputed domain name is not sufficient to prevent a risk confusion. To the contrary, this descriptive term specifically refers to the Claimant’s core business and thus increases such risk, particularly since the disputed domain name redirects to the website of K Events, an organization based in Switzerland which is active in exactly the same type of business than the Claimant. Such use clearly constitutes a trademark infringement under Swiss law.
The fact that the disputed domain name would be hold by the Respondent for K Events and that the latter would be managed by a former franchisee of the Claimant does not change this finding, notably since the case file shows that K Events has expressly given its consent to the transfer of the disputed domain name to the Claimant but that the transfer could not be executed in the absence of the Respondent’s reaction.
Given that the transfer of the disputed domain name is already justified on the basis of the clear trademark infringement, any potential infringement of the Federal Act against Unfair competition (“UCA”) does not need to be examined.
7. Expert DecisionFor the above reasons, in accordance with paragraph 24 of the Rules of Procedure, the Expert orders that the domain name
Theda König Horowicz
Expert
Dated: October 23, 2021