The Claimant is GORAN-TEE Grosshandel GmbH&Co.KG, of Germany, represented by Troesch Scheidegger Werner AG, Switzerland.
The Respondent is Prasad Jayarathna, of Sri Lanka.
2. The Domain NameThe dispute concerns the following domain name
The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2021. On November 25, 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 November 26, 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.
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 1, 2021. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was December 21, 2021.
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 December 27, 2021, the Center notified the Claimant accordingly, who on January 4, 2022, made an application for 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 January 13, 2022, the Center appointed Philippe Gilliéron 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.
3. Factual BackgroundThe Claimant is active in the tea distribution and notably owns the combined Swiss trademark No. 673056 which is registered in class 30 of the Nice Classification with a priority date as of March 2, 2015, and consists, in part, of the term “mevlana”as a prevailing verbal element. The Claimant further owns an international combined trademark No. 1151919, registered on January 9, 2013, in class 30 with “mevlana” as prevailing verbal element and whose protection extends to Switzerland.
The Claimant further distributes its tea products over its website using the domain name
On January 24, 2020, the Respondent registered the disputed domain name
The website attached to the disputed domain name displays what appears to be the Complainant’s products. The contact page of the website refers to a company named Maple Leaf Gida Ltd, that would be seated in Turkey, as well as in Switzerland, using a logo that appears to belong to a United States of America based company, namely Maple Leaf Foods USA, Inc.
No company named Maple Leaf Gida Ltd however exists in Switzerland, and no such company seems to be located at the alleged addresses. The phone number displayed on the contact page, leads to another company Mevlana Ceylon Tea (Pvt) Ltd, whose place of business would be at the same address as the Respondent’s one. Mevlana Ceylon Tea (Pvt) Ltd runs its activities through the website “www.mevlanatea.com” and displays the Complainant’s trademarks and products without any authorization to do so. This company is in the business of importing and selling what appears to be fake products using the Complainant’s packages and trademarks in Switzerland.
4. Parties’ Contentions A. The ClaimantThe Claimant first asserts to own Swiss trademarks consisting in particular as a prevailing verbal element of the term “mevlana” and to distribute its products through the website attached to the domain name
The Claimant then alleges that the registration and use made of the disputed domain name, which consists of selling Claimant’s counterfeit products as described above, is a clear infringement of its trademark rights, as well as in breach of the Unfair Competition Act.
B. The RespondentThe Respondent did not reply to the Claimant’s contentions.
5. Discussion and FindingsIn accordance with paragraph 24(c) of the Rules of Procedure, the Expert shall grant the Request if the allocation 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.
Paragraph 24(d) of the Rules of Procedure further adds that 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 or revocation of the disputed domain name, depending on the remedy requested in the request.
A. The Claimant has a right in a distinctive sign under the law of SwitzerlandIn the present case, the Claimant demonstrates to enjoy exclusive rights in trademarks whose verbal element primarily consists of the term “mevlana” registered in class 30 with a priority date as of March 2, 2015 for the Swiss trademark (No. 673056), respectively registered on January 9, 2013, for the international one whose scope of protection extends to Switzerland (No. 1151919).
B. 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 law of SwitzerlandIn the present case, the Expert has no difficulty in holding that the registration or use of the disputed domain name constitutes a clear infringement of this right.
The disputed domain name captures the Claimant’s trademark prevailing verbal element “mevlana” together with the Turkish term “cay” which means “tea”. The disputed domain name resolves to a website displaying the Claimant’s packages that are registered as trademarks.
The use of the disputed domain name, which consists of a prevailing verbal element of Claimant’s trademarks plus a term related to Claimant’s business, to resolve to a website which sells products which Claimant alleges are counterfeit of Claimant’s ones (together with providing fake contact information), clearly infringes Article 13 of the Trademark Act. It further distorts the competition in an unfair manner, a behavior that will typically fall under Article 2 of the Unfair Competition Act.
The Respondent, which did not take part in the proceedings, did not come forward with any explanation to rebut these findings.
As a result, the overall circumstances of the case thus make it clear that the requirements of paragraph 24 of the Rules of Procedure have been fulfilled, and that both the allocation and use of the disputed domain name clearly fall under Article13 of the Swiss Trademark Act and Article 2 of the Swiss Unfair Competition Act.
6. Expert DecisionFor the above reasons, in accordance with paragraph 24 of the Rules of Procedure, the Expert orders that the domain name
Philippe Gilliéron
Expert
Dated: January 26, 2022