Claimant is Eva Solo A/S of Maaloev (Måløv), Denmark, represented by Plesner Law Firm, Denmark.
Respondent is Vanoli AG, Thalwil, Switzerland1 .
The dispute concerns the domain name <evasolo.ch> (the “Domain Name”).
The registry for the Domain Name is SWITCH, Zurich, Switzerland.
The Request had been filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2014. On the same day, the Center transmitted by email to SWITCH, the “.ch” and “.li” registry, a request for verification in connection with the Domain Name. On December 15, 2014, SWITCH transmitted by email to the Center its verification response confirming that Respondent was listed as the holder of the Domain Name and providing the relevant contact details.
According to information that the Center received from SWITCH, the language of the registration agreement for the Domain Name was German. Accordingly, on December 19, 2014, Claimant was requested to provide at least one of the following: 1) satisfactory evidence of an agreement between Claimant and Respondent to the effect that the proceedings should be in English; 2) submit the Request translated into German; 3) submit a request for English to be the language of the proceedings. Such request shall include arguments and supporting material as why the proceedings should be conducted in English.
On the same day, Claimant submitted a request that English be the language of the proceedings. Respondent did not reply.
At the same time, the Center informed Claimant via e-mail dated December 19, 2014, that it had not received the Request in four hard-copies as required by paragraph 12(b) 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, and that the cover letter incorrectly referred to other policies than the Rules of Procedure. In response to the notification by the Center that the Request was administratively deficient, Claimant informed the Center that it now sent four hard copies to the Center and that the cover letter may be disregarded.
On December 30, 2014, given the circumstances of the case, the Center informed the parties that, in accordance with paragraph 7 of the Rules of Procedure, it would (i) accept the Request as filed in English, (ii) accept a Response in either English or German, and (iii) appoint an Expert familiar with both languages, if available. Besides, the Center verified that the Request satisfied the formal requirements of the Rules of Procedure.
In accordance with the Rules of Procedure, paragraph 14, the Center formally notified Respondent of the Request, both in German as well as in English, and the dispute resolution proceedings commenced on December 30, 2014. Pursuant to paragraph 15(a), the due date for Response was January 19, 2015.
On January 21, 2015, the Center notified the parties that Respondent neither filed a Response nor expressed its consent to participate in a conciliation pursuant to paragraph 15(d) of the Rules of Procedure. It informed Claimant about the possibility to continue the proceedings in accordance with paragraph 19 of the Rules of Procedure. Upon confirmation by Claimant, and payment of the required fees, the proceedings continued on January 22, 2015.
On January 28, 2015, the Center appointed Bernhard F. Meyer as Expert in this case. The Expert submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center, to ensure compliance with the Rules of Procedure, paragraph 4.
Claimant is a Danish limited liability company that designs and manufactures products for kitchen and home.
Respondent, according to the Swiss Commercial Register, engages in the retail and online trade of gifts, glass, porcelain and household products, garden furniture, as well as grill and leisure goods. The company may also import goods for the wholesale trade and has other purposes as well.
Pursuant to evidence attached to the Request, Claimant is the registered holder of the following trademarks, containing the name “Eva Solo”:
- EU trademark EVA SOLO, filed under no. 003892734, on June 21, 2004, registered on December 5, 2006 in classes 6, 8, 9, 11, 14, 16, 20, 21, 28 and 34;
- EU trademark EVA-SOLO filed under no. 000494617 on March 20, 1997, registered on December 12, 2004 in classes 8, 9, 14 and 24;
- International trademark EVA SOLO filed under no. 942992, registered on October 9, 2007 with protection in the EU, Switzerland, Australia, Norway, Japan, the Russian Federation and the United States of America (“USA”) in classes 6, 8, 9, 11, 14, 16, 20, 21, 28 and 34.
Furthermore, according to documents produced by Claimant, it is also the holder of numerous domain names containing the name “Eva Solo”, such as <evasolo.com>, <evasolo.dk>, <evasolo.no>, <evasolo.de> <evasolo.co.uk> and <evasolo.net>.
The Domain Name previously resolved to a webpage offering for sale authentic Claimant’s products, and other brands. Currently, the Domain Name redirects to the website “www.evasolo.vano.li”, in which home accessories and kitchenware are being advertised.
First, Claimant alleges that it has a right to a distinctive sign in accordance with paragraph 1 of the Rules of Procedure due to its trademark registrations in several countries of the world, including Switzerland and the EU, but also due to its company name.
Secondly, Claimant argues that the Domain Name is identical (and/or confusingly similar) to Claimant’s Swiss trademark. The Domain Name entirely incorporates the distinctive sign EVA SOLO held by Claimant as a trademark and as company name.
Thirdly, Claimant contends that Respondent markets and sells authentic EVA SOLO products as well as other brands through the website attached to the Domain Name. Therefore, Respondent both uses a Domain Name that is identical to Claimant’s trademark and offers goods that are identical to Claimant’s products.
According to Claimant, it granted Respondent no right to register the Domain Name, nor did it allow Respondent to use Claimant’s trademark for the purpose of promoting, distributing and commercializing EVA SOLO products in any way suggesting an affiliation or commercial connection with Claimant. The right to resell or market a product does not create the right to use the mark more extensively than required to advertise and sell the products. The extent to which a reseller of legitimate goods may use Claimant’s trademark depends from the relationship with the trademark owner. In the present case, Claimant alleges and concludes that Respondent has no rights in the Domain Name nor does it have any legitimate interest in registering and using the infringing Domain Name.
Respondent uses the Domain Name in an abusive and bad faith manner, creating the wrong impression that Claimant and Respondent are affiliated with each other, or that Claimant provided a license to Respondent to use the trademark.
Lastly, Claimant points out that Respondent’s company name is “Vanoli”. This is the name under which Respondent does business and trades also other brands. Respondent’s registration of the Domain Name prevents Claimant, or Claimant’s authorized distributor in Switzerland, to use Claimant’s trademark and company name as a domain name in Switzerland. This, by itself, constitutes an impairment of Claimant’s rights. Respondent’s registration and use of the Domain Name constitutes an infringement of Claimant’s rights, including the trademark EVA SOLO. In addition, it is contrary to the law of unfair competition.
Thus, Claimant requests the transfer of the Domain Name to its own behalf.
As mentioned, Respondent was notified about the case in accordance with paragraph 14 of the Rules of Procedure, but failed to submit a Response.
According to the official and publicly accessible Commercial Register (the Swiss Company Register), “Vanoli AG” was called “Vanoli Eisenwaren & Haushalt AG” up to July 31, 2013, but then changed its firm name into Vanoli AG (SHAB publication of August 6, 2013), without thereby becoming a different corporate entity.
Thus, Vanoli AG is the former “Vanoli Eisenwaren & Haushalt AG” that is named in the Complaint and that was confirmed by SWITCH in its verification response to the Center.
According to the Rules of Procedure, paragraph 24(c)(d), 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 Claimant owns under the laws of Switzerland or Liechtenstein. An infringement of an intellectual property right exists, in particular, if:
(i) both the existence and the infringement of a claimed right in a distinctive sign clearly result from the wording or from an acknowledged interpretation of the law, and are proven by evidence; and
(ii) Respondent has not conclusively pleaded and proven any relevant grounds for defense; and
(iii) the infringement of the right justifies the transfer or deletion of the domain name, depending on the remedy requested.
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 for the Domain Name is German. The Expert notes that while the website to which the Domain Name resolves is in German, Claimant requested that the proceedings be conducted in English and Respondent did not submit any comments or objection to this request. The Expert further notes that previous communications between the parties took place in English. There is no doubt for this Expert that Respondent understands and is able to communicate in English.
For the all of the above, the Expert decides that the language of the proceedings is English. .
Based on the documents submitted, Claimant is the holder of various EVA SOLO trademarks, registered in several countries of the world, including Switzerland and the EU. The existence of a distinctive sign under the law of Switzerland is thus proven in this case.
A registered trademark allows the holder to invoke protection under the Swiss Trademark Act (hereinafter “TMA”). In particular, the owner of a trademark may enjoin a third party from using an identical sign as registered for the same type of goods or services (Article 13(2) in connection with Article 3(1)(a) TMA).
The Domain Name in this case comprises the two words “Eva” and “Solo” in exactly that sequence. In addition, it contains the country code top level domain “.ch” (“ccTLD”). The ccTLD is merely a technicality of the registration and, as such, not a distinguishing element. On the other hand, Claimant’s registered trademark, EVA SOLO, and the distinctive part of Respondent’s registered Domain Name are identical, whereby Claimant did not authorize Respondent to register or use such Domain Name to sell products that are in competition with Claimant’s products.
In the light of the above, the registration and use of the Domain Name, which is identical to Claimant’s trademark, constitutes a clear infringement of Claimant’s trademark rights under Article 3(1)(a) in connection with Article 55(1)(a) TMA. Claimant established the first element of the Rules of Procedure, paragraph 24(d)(i) and a further analysis as to whether Respondent also violated the competition law obsolete.
Respondent has not conclusively pleaded or proven any relevant grounds for defense and no justifying grounds are apparent from the file. Thus, the Expert concludes that Claimant also satisfied the second requirement of paragraph 24(d)(ii) of the Rules of Procedure.
Taking into account all the circumstances of this case, coupled with the fact that the Domain Name is identical to Claimant’s trademark EVA SOLO, that the website of the Domain Name was selling Claimant’s products together with products of competitors, and since no justifications have been shown by Respondent, the infringement of Claimant’s trademark rights is sufficient ground for the transfer of the Domain Name <evasolo.ch> from Respondent to Claimant.
For the above reasons, in accordance with paragraphs 24 of the Rules of Procedure, the Expert orders that the Domain Name <evasolo.ch> be transferred to Claimant.
Bernhard F. Meyer
Expert
Date: February 18, 2015
1 According to the official and publicly accessible Commercial Register (the Swiss Company Register), Vanoli AG was called “Vanoli Eisenwaren & Haushalt AG” up to July 31, 2013, but then changed its firm name into Vanoli AG (SHAB publication of 06.08.2013), without thereby becoming a different corporate entity. Thus, Vanoli AG is the former “Vanoli Eisenwaren & Haushalt AG” that is named in the Complaint, and the error is hereby corrected ex officio.