WIPO Arbitration and Mediation Center

EXPERT DECISION

Heartland Consumer Products, LLC v. Onlain AG, Marc Andreas Steiner

Case No. DCH2018-0010

1. The Parties

Claimant is Heartland Consumer Products, LLC of Carmel, Indiana, United States of America, represented by Taft, Stettinius & Hollister, LLP, United States of America ("United States").

Respondent is Onlain AG, Marc Andreas Steiner of Trimmis, Switzerland, self-represented.

2. Domain Name

The dispute concerns the domain names <splenda.ch> and <splenda-schweiz.ch> (the "disputed domain names").

3. Procedural History

The Request was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on May 10, 2018 per email and on May 15, 2018 in hardcopies. On May 11, 2018, the Center transmitted by email to SWITCH, the ".ch" and ".li" registry, a request for verification in connection with the disputed domain names. On May 14, 2018, SWITCH transmitted by email to the Center its verification response confirming that Respondent is listed as the holder of the disputed 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 proceedings for ".ch" and ".li" domain names (the "Rules of Procedure"), adopted by SWITCH, on March 1, 2004.

According to information that the Center received from SWITCH, the language of the registration agreement for the disputed domain names was German. Accordingly, on May 16, 2018, 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 May 17, 2018 Claimant filed a request that English be the language of the proceedings. Further, on May 22, 2018 the Claimant submitted additional information by email. Respondent did not comment on the language of the proceedings.

In accordance with the Rules of Procedure, paragraph 14, the Center formally notified Respondent of the Request, and the Dispute resolution proceedings commenced on May 23, 2018. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was June 12, 2018.

Respondent has neither filed a formal Response nor expressed his readiness to participate in a Conciliation in accordance with paragraph 15(d) of the Rules of Procedure.

On June 13, 2018, the Center notified Claimant accordingly, who on June 20, 2018 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 June 20, 2018, i.e. after expiration of the due date for its Response (June 12, 2018), Respondent sent an email exchange with Claimant to the Center, containing further particulars. A further communication between Claimant and Respondent was sent to the Center by email on July 5, 2018.

On June 26, 2018 the Center appointed Bernhard Meyer as an Expert in this case. The Expert finds that he was properly appointed. In accordance with Rules of Procedure, paragraph 4, the above Expert has declared his independence of the Parties.

4. Factual Background

Pursuant to the evidence attached to the Request, Claimant is the registered holder of the following trademarks in relation to Switzerland:

- international trademark SPLENDA, registered on June 21, 1991 (registration number 574551), in classes 01 and 30, designating Switzerland;

- international trademark SPLENDA, registered on November 30, 2006 (registration number 908817), in class 05, designating Switzerland.

As shown in the attachments provided, Claimant also holds the domain name <splenda.com>, which was registered on October 10, 1996.

The disputed domain names <splenda.ch> and <splenda-schweiz.ch> were both registered on October 4, 2014 and redirect to webpages offering Claimant's products, as well as the products of its competitors.

5. Parties' Contentions

A. Claimant

Claimant contends to own over 200 trademark registrations for SPLENDA (or trademarks including SPLENDA) all over the world. SPLENDA trademarks, originally registered in association with low-calorie sugar substitute food products, are registered today in association with printed publications for health and weight management, creamers for beverages, concentrates, syrups or powders for tea-flavored beverages.

Claimant alleges that the disputed domain names infringe its trademark rights. Respondent is not authorized by Claimant to use and has no legitimate rights in the trademark SPLENDA, any equivalents or domain names. Claimant alleges that Respondent's use of the disputed domain names is clearly commercial in nature. Respondent is utilizing Claimant's trademarks to lure Internet traffic to the websites found under the disputed domain names. These websites carry links to third-party websites which promote the sale of goods that compete directly with Claimant or contain auto-forwarding mechanisms to "www.swissfolklore.ch", a domain name also owned and operated by Respondent, where a product directly competing with Claimant's SPLENDA goods can be found. This creates – according to Claimant – a likelihood of confusion.

Claimant points out that the disputed domain names are virtually identical and confusingly similar to its trademarks, since they contain the entire SPLENDA trademark registered by Claimant. The addition of "Schweiz" in one of the disputed domain names does not prevent the disputed domain name from being confusingly similar to Claimant's trademark.

Further, Claimant considers Respondent's behavior to be unlawful. Respondent is attempting to take advantage of Claimant's well-known SPLENDA trademarks, attracting consumers to its website as if it had an affiliation with Claimant, or was authorized to use Claimant's trademark.

Therefore, Claimant concludes that the disputed domain names are registered and used in bad faith and requests the latter to be transferred to Claimant.

B. Respondent

Respondent did not file a Response to the Complaint in accordance with paragraph 15 of the Rules within the time limit set by the Rules of Procedure. He also failed to explain his deficiency, nor did he request a re-instatement of the deadline.

Paragraph 23(a) of the Rules of Procedure provides that if a party, without due cause, fails to comply with the time periods laid down in the Rules of Procedure, the Expert shall decide the request on the basis of the case file. Accordingly, Respondent's belated emails to the Center of June 20, 2018 and July 5, 2018, respectively, cannot be heard.

6. Language of the Proceedings

The language of the Registration agreement for the disputed domain names is German. Pursuant to the Rules of Procedure, paragraph 7(a), the proceedings shall be conducted in the language of the Registration agreement. Paragraph 7(a) of the Rules of Procedure allows 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.

Claimant requested that the language of the proceeding be English, for the following reasons:

(i) Claimant is a United States-based business, with United States-based legal counsel. Claimant would be significantly burdened to incur the additional costs associated with hiring local Swiss/German counsel to translate the Request and take part in any further requests of the proceedings.

(ii) Claimant was of the belief that the language for the proceeding could be English after obtaining a copy of the registration agreement in English.

(iii) There will be no burden on Respondent if the proceedings are in English since Respondent replied to an email from Claimant in English.

Respondent, having received the Center's communication regarding language of the proceedings in both English and German, did not make any submission on this topic. He did, however, send emails to the Center, which seem to confirm that he is able to understand and communicate in English.

The Expert also notes that all communications from the Center to the Parties had been sent in both English and German.

Having considered the matters above, in order to conduct the proceeding in a timely and cost-effective manner, the Expert determines, under paragraph 7(a) of the Rules of Procedure, that the language of the procedure shall be English.

7. Discussion and Findings

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 Claimant owns under the law of Switzerland or Liechtenstein.

The Rules of Procedure, paragraph 24(d) specify that a clear infringement of an intellectual property right exists, in particular, 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) Respondent has not conclusively pleaded and proven any relevant grounds for defense;

(iii) and the infringement of the right justifies the transfer or deletion of the domain name, depending on the remedy requested in the request.

A. Claimant has a right in a distinctive sign

As mentioned in paragraph 4 above, Claimant is the registered holder of international trademark SPLENDA. According to article 46(1) of the Federal Act on the Protection of Trade Marks and Indications of Source (Swiss Trade Mark Protection Act, "TmPA"), an international registration extended to Switzerland has the same effect as the filing of an application with the IPI and registration in the Swiss Register.

Claimant has evidenced its exclusive rights in a distinctive sign under the laws of Switzerland. Thus, the first condition of paragraph 24(c) of the Rules of Procedure is fulfilled.

B. The registration or use of the domain names constitutes a clear infringement of Claimant's right

The Swiss Federal Supreme Court has consistently held that domain names must maintain sufficient distance from protected signs of third parties to avoid confusion (BGE 126 III 239 cons. 2.c; decision 4C.341/2005 cons. 5).

According to article 13(1) and Art. 3 TmPA, a trademark right confers on the owner the exclusive right to use the trademark to identify the goods or services for which it is claimed and to dispose of it. The owner may prohibit others to use a sign that (i) is identical to the owner's earlier trademark, intended for the same goods or services, (ii) is identical to the owner's earlier trademark, intended for similar goods or services such that a likely hood of confusion results, or (iii) is similar to the owner's earlier trademark, intended for the same or similar goods or services such that a likelihood of confusion results.

Both disputed domain names fully contain Claimant's trademark SPLENDA, protected in Switzerland. The addition of the term "-schweiz" in the disputed domain name <splenda-schweiz.ch> does not prevent the risk of confusion. In fact, the Expert finds that it misleads customers or Internet users to think that the website associated with the disputed domain name was linked to Claimant's business in Switzerland. In addition, the country code Top-Level Domain ".ch" ("ccTLD") is merely a technicality of the registration and, as such, not a distinguishing element. Thus, the disputed domain names are identical or confusingly similar to Claimant's earlier registered trademark.

Claimant did not authorize Respondent to register or use the disputed domain names and to sell a product directly competing with Claimant's SPLENDA goods.

In the light of the above, the registration and use of the disputed domain names constitute a clear infringement of Claimant's trademark rights under article 13 in conjunction with article 3 TmPA. Since Claimant fulfills the first condition of paragraph 24(d)(i) of the Rules of Procedure a further analysis as to whether Respondent also violated the provisions of the Unfair Competition Law Act is not needed.

C. Respondent has not conclusively pleaded and proven any relevant ground for defense

In the absence of a timely Response by Respondent to Claimants Request, the Expert finds that Respondent has not pleaded and proven any relevant grounds for defense.

7. Expert Decision

For the above reasons, in accordance with paragraphs 24 of the Rules of Procedure, the Expert orders that the domain names, <splenda.ch> and <splenda-schweiz.ch>, be transferred to Claimant.

Bernhard Meyer
Expert
Dated: July 10, 2018