The Claimant is Entfeuchter Center GmbH of Dietikon, Switzerland, represented by Gallatikäch Rechtsanwälte, Switzerland.
The Respondent is Marine Leclair of Oyonnax, France.
The dispute concerns the following domain name <shop4.ch> ("the Domain Name").
The Request was filed in German with the WIPO Arbitration and Mediation Center (the "Center") on October 20, 2014. On October 21, 2014, the Center transmitted by email to SWITCH, the ".ch" and ".li" registry, a request for verification in connection with the disputed domain name. On October 22, 2014, 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.
According to information the Center received from SWITCH, the language of the Registration agreement for the disputed domain name is English. The Claimant was therefore requested to provide at least one of the following: 1.) satisfactory evidence of an agreement between the Claimant and the Respondent to the effect that the proceedings should be in German; 2.) submit the Request translated into English; 3.) submit a request for German to be the language of the proceeding (such request shall include arguments and supporting material as why the proceedings should be conducted in German). On November 3, 2014, the Center received a translated Request into English from the Claimant.
The Center verified that the Request together with the translated 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 November 10, 2014. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was November 30, 2014.
The Respondent has neither filed a Response nor expressed his readiness to participate in conciliation in accordance with Paragraph 15(d) of the Rules of Procedure. On December 1, 2014 the Center notified the Claimant accordingly, who on December 2, 2014 made an application for the continuation of the proceedings in accordance with specified in paragraph 19 of the Rules of procedure and paid the required fees.
On December 15, 2014 the Center appointed Jacques de Werra 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.
The Claimant is the owner of a Swiss trademark for SHOP4 covering various advertising and software related services in classes 35 and 42 ("the Trademark") which was registered on January 19, 2010.
A company affiliated with the Claimant (Internet Explorer GmbH which is managed and controlled by the same person and of which the Claimant is a partner – "Gesellschafter") was the owner of the Domain Name until July 21, 2014 until that company lost the Domain Name because of apparent problems of communication with SWITCH which caused the renewal payment to be late.
The Domain Name was registered on August 5, 2014. It resolves to a website on which sport shoes are offered for sale and redirects to another domain name for this purpose (i.e. <www.nikeairmaxchsale.ch>) which reflects the NIKE trademark, whereby shoes of different brands are offered for sale on this website (i.e. NIKE and BIRKENSTOCK).
On September 11, 2014, the Claimant sent a cease and desist letter to the Respondent which was returned as undeliverable because the address was apparently not correct1.
The Claimant claims that its affiliated company lost the registration of the Domain Name and that it was subsequently registered by the Respondent. It also claims that Respondent evidently registers domain names in order to sell them and that it is not entitled to keep the Domain Name in view of the registration of the Trademark which was made in 2008 (i.e., much earlier than the registration of the Domain Name by the Respondent). The Respondent consequently does not have any interest in the Domain Name which is worthy of protection which is why the Domain Name should be transferred to the Claimant.
The Respondent did not reply to the Claimant's contentions.
Paragraph 7(a) of the Rules of Procedure provides that the proceedings shall be conducted in the language of the Registration agreement, without prejudice to the authority of the Dispute resolution service provider, 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 this case, the language of the Registration agreement is English. On this basis, and noting the Claimant's translation of the Request in English and in the absence of other circumstances which would make it necessary to consider other languages, the Expert decides that the language of the proceeding shall be English.
According to the Rules of Procedure, paragraph 24 (c), "the Expert shall grant the request if the registration 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 or Liechtenstein."
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 defence; and
- the infringement of the right justifies the transfer or deletion of the domain name, depending on the remedy requested in the request."
The Claimant has established that it is the owner of the Trademark since 2009. It has consequently a right in a distinctive sign in Switzerland pursuant to paragraph 24(c) of the Rules of Procedure.
According to Article 13 paragraph 2 in connection with Article 3 paragraph 1 lit. c of the Swiss Trademark Act (TMA), a trademark owner is entitled to enjoin a third party from using an identical or similar distinctive sign in connection with goods and services which are identical or similar to those claimed in the relevant trademark.
In this case, the Domain Name is identical to the Claimant's Trademark and is being used in connection with certain goods (i.e. as an online platform to sell sport shoes) which are not identical to those claimed in the Claimant's Trademark (which are services in classes 35 and 42), and for which the similarity is not obvious.
In any case, in this Expert's view, the Respondent's conduct violates the Swiss Unfair Competition Act (UCA). The Respondent's action of registering the Domain Name immediately after a company affiliated to the Claimant lost the registration of the Domain Name because of an error during the renewal process, amounts to an unfair and unlawful practice within the meaning of Article 2 UCA in the circumstances of this case. See by analogy Marlow Foods Ltd Limited Company v. Eginhard Thoelken, WIPO Case No. DCH2010-0013.
While the "first come, first served" rule applies for ".ch" domain names as provided by article 2.2 of the General Terms and Conditions (GTC) for the registration and administration of domain names under the domain ".ch" and ".li", this Expert notes that this rule does not and cannot prevent from holding that the registration and use of a domain name can constitute a violation of third party rights in certain circumstances. See Vattenfall AB v. Roger Lundmark, WIPO Case No. DCH2009-0021.
In this case, the Expert notes that a company affiliated with the Claimant was the registrant of the Domain Name until July 2014 (when a clerical error resulted in its lapse) and that the Claimant is the legitimate owner of a trademark for SHOP4 in Switzerland since 2010 (i.e. the Trademark) that is reflected in the Domain Name.
The Expert further notes that the Respondent has not participated in these proceedings and that it has not conclusively pleaded and proven any relevant grounds for defense in this case as requested under paragraph 24(d) of the Rules of Procedure. No justifiable reasons have been brought forward by the Respondent in order to justify its conduct, particularly about the choice to register the Domain Name (which corresponds exactly to the Trademark registered by the Claimant in Switzerland) very shortly after it was available for registration (because of the clerical error in the renewal process). In addition, this Expert notes that the Respondent could not be reached by the Claimant under the registered WhoIs contact information which corroborates further the impression of unfair conduct in this case.
Furthermore, this Expert notes that the Domain Name redirects to another domain name which refers to the NIKE trademark (i.e. <www.nikeairmaxchsale.ch>) and that the website to which the Domain Name ultimately resolves offers for sale sport shoes bearing different trademarks particularly NIKE and BIRKENSTOCK (this Expert notes in this respect that, while the genuineness of these products is impossible to ascertain, their price nevertheless seem to be significantly discounted). This Expert consequently notes that the Domain Name seems to be used as an element of a scheme designed to attract Internet users to a website connected to a domain name which contains a well-known trademark (i.e. <www.nikeairmaxchsale.ch>) – NIKE being a famous trademark under Swiss trademark law (ATF 124 III 277) - and on which competing products are also offered for sale (i.e. BIRKENSTOCK), which amounts to an act of unfair competition. See by analogy Honeywell International Inc. v. Reinhard Herrmann / DomDoo Domainholding WIPO Case No. DCH2013-0002. The Expert consequently considers that such use of the Domain Name clearly violates the principle of good faith under Art. 2 UCA and constitutes an unfair act which is detrimental to Claimant's interests (given that it unduly associates Claimant's Trademark with unfair online behaviors).
On this basis, in view of the specific circumstances of this case, this Expert considers that Respondent's registration and use of the Domain Name constitutes a clear infringement of Swiss unfair competition law under Article 2 UCA which justifies the transfer of the Domain Name to the Claimant.
For the above reasons, in accordance with Paragraph 24 of the Rules of Procedure, the Expert orders that the Domain Name <shop4.ch> be transferred to the Claimant.
Jacques de Werra
Expert
Dated: December 26, 2014
1 The Expert notes in this respect that the address indicated in the WhoIs seems to be a fake one also because the same email address is apparently used in connection with other domain names registered under other names/registrants in other countries (see e.g., "http://websiterecord.com/dm/jackenberlin.de").