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WIPO Arbitration and Mediation Center

Feldschlцsschen Getrдnke Holding AG v. John De Souza

Case No. DCH2004-0012

1. The Parties

The Claimant is Feldschlцsschen Getrдnke Holding AG, Rheinfelden, Switzerland, represented by Dr. Michael Hunziker, Schдrer Rechtsanwдlte, Aarau, Switzerland.

The Respondent is John De Souza, Miami Florida, United States of America.

2. Domain Name

The dispute concerns the following domain name: <rhдzьnser.ch> (“Domain Name”).

3. Procedural History

The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2004. On June 17, 2004, the Center transmitted by email to SWITCH a request for verification in connection with the Domain Name at issue. On the same date, SWITCH transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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, the .ch and .li registry, 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 July 8, 2004. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was July 28, 2004.

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

On August 2, 2004, the Center notified both parties accordingly. Claimant has, in its Request of June 16, 2004, applied for the continuation of the Dispute resolution proceedings in accordance with paragraph 12(c) of the Rules of Procedure and paid the required fees.

On August 17, 2004, the Center appointed Mr. Tobias Zuberbьhler as Expert in this case. The Expert finds that he was properly appointed. In accordance with the Rules of Procedure, paragraph 4, the above Expert has declared his independence of the parties.

On August 29, 2004, the Center received an email from Respondent, stating that he could not see any illegal action in registering the Domain Name at issue. Even though this e-mail was submitted more than one month after the set due date for Response, the Expert has taken Respondent’s e-mail into consideration when drafting this decision.

4. Factual Background

Claimant is the owner of the following trademarks registered in Switzerland:

- Trademark “RHДZЬNSER” (TM Nr. 337696, Int. Class 32; registered on 12.10.1984) (Annex 4 to Request);

- Trademark “RHДZЬNSER+” (TM Nr. 514498; registered on 18.08.2003);

- Trademark “RHДZЬNSER AQUAPLUS” (TM Nr. 514151; registered on 18.08.2003);

- Trademark “RHДZЬNSER PLUS” (TM Nr. 514150; registered on 18.08.2003).

The trademark “RHДZЬNSER” has been used by Claimant for many years for sparkling and still mineral waters and other alcohol-free beverages made of these waters.

Since 1997, Claimant has operated a website to market its products under the domain name <rhaezuenser.ch>.

On March 1, 2004, so-called “Internationalized Domain Names” (IDN), allowing to include diacritics in domain names, have been made available for .ch domain names.

The disputed Domain Name <rhдzьnser.ch> was registered on March 2, 2004, by Mr. Jukka Hermann (see Annex 3 to Request) and was transferred to Respondent on May 19, 2004 (see Annex 2 to Request).

No web site is presently active for <rhдzьnser.ch>.

5. Parties’ Contentions

A. Claimant

Claimant contends that the registration and/or use of the Domain Name at issue infringes Claimant’s right in a distinctive sign under the laws of Switzerland or Liechtenstein. Claimant therefore requests that the contested Domain Name be transferred to the Claimant.

B. Respondent

As mentioned above, Respondent has been notified in accordance with paragraph 14 of the Rules of Procedure, but 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 August 29, 2004, the Center received an email from Respondent, stating that he couldn’t see any illegal action in registering the Domain Name at issue. Respondent contends that “Rhдzьnser” was only a registered trademark for one category in Switzerland, and that this category did not include Internet or other IT based services. Accordingly Respondent contends that the Domain Name at issue should remain with Respondent.

6. Discussion and Findings

According to the Rules of Procedure, paragraph 24(a), the Expert shall decide on the request on the basis of the pleadings of both parties and the submitted documents in conformity with the Rules of Procedure.

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 law of Switzerland or Liechtenstein (Rules of Procedure, paragraph 24(c)).

In particular, according to the Rules of Procedure, paragraph 24(d), 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 deletion of the domain name, depending on the remedy requested in the request.

A. The Claimant has a right in a distinctive sign under the law of Switzerland

As mentioned above, Claimant is the owner of the Swiss trademark “RHДZЬNSER” (TM Nr. 337696), registered on October 12, 1984. In Annex 4 to the Request, Claimant provided a copy of the trademark registration certificate from the Swiss Federal Institute of Intellectual Property, dated April 16, 1987.

Claimant has thus met its burden of proof under paragraph 24(d)(i) of the Rules of Procedure.

B. The registration or use of the Domain Name at issue constitutes a clear infringement of the Claimant’s rights

The Domain Name at issue is <rhдzьnser.ch>. Claimant is the holder of the registered trademark “RHДZЬNSER”. Thus, the Domain Name is clearly identical to Claimant’s trademark under which Claimant was nationally known before Respondent’s registration of the Domain Name.

The disputed Domain Name was registered on March 2, 2004 by Mr. Jukka Hermann, and was transferred to Respondent on May 19, 2004. Until today, no web site is active for the Domain Name.

Because domain names identify persons, products or services via the respective websites, The Swiss Federal Supreme Court has recognized that domain names are comparable to personal names, business names and trademarks and therefore can be regarded as so-called distinctive signs (Kennzeichen; decision of the Swiss Federal Supreme Court of May 2, 2000, <berneroberland.ch>, BGE 126 III 239, 244). If the domain name corresponds to a protected trademark, the owner of the trademark may, under certain circumstances, be entitled to prohibit the use of the domain name by others (BGE 126 III 244-245). It would seem however that this would require that the domain name be actively used as a distinctive sign, which is not the case here.

Domain names can, however, also be regarded as distinctive signs under Swiss competition law (BGE 126 III 245). Art. 3 lit. d of the Swiss Unfair Competition Act of December 19, 1986 (Bundesgesetz gegen den unlauteren Wettbewerb, UWG) prohibits measures that are likely to cause confusion with products, works, services or the business of others.

Respondent did not provide any reasonable explanation why he registered the disputed Domain Name. And to the Expert’s best knowledge, no such grounds can be seen. On the other hand, the Claimant faces substantial disadvantages: the Domain Name <rhдzьnser.ch> cannot be used to market Claimant’s corresponding trademark and the respective products.

By registering the Domain Name <rhдzьnser.ch>, which is identical to Claimant’s well known trademark in Switzerland, Respondent created a likelihood of confusion even if the disputed Domain Name is presently inactive. An Internet user is likely to assume a connection between Respondent’s website and Claimant’s trademark-protected products. The Respondent is thereby trying to take advantage of Claimant’s brand recognition in one way or another. Hence, Respondent’s behaviour creates a likelihood of confusion and therefore violates Claimant’s right in a distinctive sign under Art 3 lit. d UWG. This infringement clearly justifies the transfer of the Domain Name to the Claimant.

7. Expert Decision

For the above reasons, in accordance with paragraph 24 of the Rules of Procedure, the Expert orders that the Domain Name <rhдzьnser.ch> be transferred to the Claimant.