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WIPO Arbitration and Mediation Center

 

EXPERT DECISION

Solidworks Corporation v. Mr. Christoph Erni

Case No. DCH2006-0004

 

1. The Parties

The Claimant is Solidworks Corporation, Concord, Massachusetts, United States of America, represented by ZPG, Ziegler Poncet Grumbach Carrard Luscher, Geneva, Switzerland.

The Respondent is Mr. Christoph Erni, Winkel, Switzerland.

 

2. Domain Name

The dispute concerns the domain name <solidworks.ch> (the “Domain Name”), registered with SWITCH.

 

3. Procedural History

The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2006. On March 6, 2006, the Center transmitted by email to SWITCH a request for verification in connection with the Domain Name. On March 7, 2006, 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 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 March 8, 2006. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was March 28, 2006.

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 April 3, 2006, the Center notified the Claimant accordingly, who on April 5, 2006, made an application for the continuation of the dispute resolution proceedings in accordance with paragraph 19 of the Rules of Procedure and paid the required fees.

On April 26, 2006, the Center appointed Tobias Zuberbьhler as Expert in this case. The Expert finds that he was properly constituted. In accordance with the Rules of Procedure, paragraph 4, the Expert has declared his independence of the parties.

According to SWITCH, the contractual language of Respondent’s registration agreement is English. Thus, the language of these Dispute Resolution Proceedings is English, in accordance with paragraph 7(a) of the Rules of Procedure.

 

3. Factual Background

The Claimant is a company whose business activities encompass the selling of software for 3D product development and the provision of related services thereto. The Claimant proved the ownership of the Swiss trademark SOLIDWORKS, filed on April 4, 1996, and registered on January 22, 1997.

Claimant’s products used to be distributed in Switzerland by the company Partech AG on the basis of a distribution agreement which was signed on November 15, 1996, and terminated on March 31, 2005. During that time, a certain Ms. Vogel was a member of the board of directors of Partech AG.

The Respondent is a private person named Christoph Erni.

In 2002, the Claimant attempted to register the Domain Name. The Claimant contends that the Domain Name was already registered by Ms. Vogel and was used by a company named “Solidways AG” of which the Respondent was CEO. The Respondent wrote in an email of August 27, 2002 (Annex no. 5) that Solidways AG, the former “Solidworks GmbH”, had leased the right to use the Domain Name from the holder including the right to acquire the Domain Name by the end of 2005. The Respondent added that Solidways AG had later leased the right to place a banner and a link on the corresponding website to one of Claimant’s resellers named “Partech GmbH”.

The Respondent offered to the Claimant the lease of a banner and a link in the email of August 27, 2002 (Annex no. 5) and a second time by letter of November 28, 2005, (Annex no. 10), for CHF 666 per month.

 

4. Parties’ Contentions

A. Claimant

The Claimant asserts, while proving its ownership of the distinctive sign SOLIDWORKS under Swiss law, i.e. a trademark and the corporate name, that Respondent does not benefit from the protection of such a right in a distinctive sign, and that Respondent has ceased to maintain business activities under the registered company named “Solidworks GmbH”.

Furthermore, the Claimant contends that the registration and the use of the Domain Name constitutes a violation of the Claimant’s rights in a distinctive sign due to identity of the signs and the unauthorized use by the Respondent.

The Claimant purports that the behavior of the Respondent and Ms. Vogel and the connection between them could indicate bad faith. There was no obvious reason why Yvonne Vogel as holder would lease the rights to the Domain Name to the Respondent while “Partech AG”, where she held the position of a member of the board of directors, leased back the right to place a banner and a link on the website under the Domain Name.

Additionally, the Respondent is accused of “cybersquatting” and violating the laws against unfair competition.

For all the foregoing reasons, the Claimant requests the transfer of the Domain Name.

B. Respondent

The Respondent did not reply to the Claimant’s contentions.

 

5. 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 the Claimant owns under the laws of Switzerland”.

The Rules of Procedure, paragraph 24 (d), specify that “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

The Rules do not require Claimant to base its Claim on a registered trademark; it is sufficient, according to paragraph 24(c) of the Rules of Procedure, for Claimant to prove a right in a distinctive sign. The Rules define “distinctive signs” in paragraph 1 as any “sign devolving from the registration or the use of a sign ..., including ... the right in a registered business name, ... and the defensive rights devolving from the law of unfair competition”.

Therefore, the Expert takes the following legal bases into consideration:

(i) Claimant’s trademark which was registered on January 22, 1997, in Switzerland for services covering computer programs and goods related thereto such as packaging material, manuals, etc.;

(ii) the activities of the Respondent in the light of the Unfair Competition Act;

(iii) Claimant’s business name, although not registered in the Commercial Registry, which is protected under Swiss law according to article 8 of the Paris Convention on the Protection of Commercial Property revised in Stockholm on July 14, 1967. Under this provision, a business name may obtain legal protection even though it is not registered in the country where the holder applies for legal protection.

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

Because domain names identify persons, products or services via the respective websites, the Swiss Federal Supreme Court has recognized that they 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).

Domain names can also be regarded as distinctive signs under Swiss competition law (BGE 126 III 245).

(i) Trademark

A registered trademark allows the holder to invoke protection under the Trademark Act (“TMA”). In particular, the owner of a trademark is entitled to enjoin a third party from using the protected sign for the same goods and services which it is registered for (Art. 13 TMA). According to the Respondent’s email of August 27, 2002 (Annex no. 5), he maintains an executive business search. This business was run under a company originally named “Solidworks GmbH”, afterwards changed into “Solidways AG” and finally “Ad Ways AG”, before it was liquidated on March 31, 2005 (cf. Extract of the Commercial Registry of February 17, 2006; Annex no. 6). The Respondent claimed in another letter of November 28, 2006 (Annex no. 10) that he would still maintain business activities under the name of “Solidworks”, was about to re-launch a corresponding website under the Domain Name and that his activities were connected to this name among his customers. Since the claimed activities are in the field of human resources and thus do not interfere with the registered goods and services of the Claimant (as mentioned above), the Expert is not convinced that the Claimant’s trademark rights are infringed. Furthermore, the Expert does not consider the relevant trademark as famous in terms of Art. 15 TMA, which would lead to an exclusive right of the Claimant concerning every conceivable use of the respective sign.

(ii) Unfair Competition

Under Art. 2 of Swiss Unfair Competition Act of December 19, 1986 (Bundesgesetz gegen den unlauteren Wettbewerb, “UWG”), every misleading or bad faith business activity which influences the relationship between competitors or consumers and providers, is regarded as illegal and unfair.

According to the correspondence between the Claimant and the Respondent (Annexes no. 5 and 10), the Respondent offered to the Claimant the lease of a link on his planned website in 2002 and again in 2005. Apparently, the Claimant did not accept the offers. In the aftermath, although claiming to be dependent on the Domain Name, the Respondent did not establish a website under the Domain Name. Additionally, his legitimate interests were claimed to be the connotation of the name “Solidworks” with his business among the customers and the gain of revenues from the lease of links. According to a research on “www.archive.org” on May 2, 2006, the Respondent did not use the Domain Name after his offers had been turned down by the Claimant. Therefore, it is difficult for the Expert to believe that the Respondent initially intended other use than the creation of revenues from leasing, since he started another business in 2003 under the name of Erni Associates GmbH with its own domain name <erni.org>, still offering recruiting services, and the Domain Name was not active since late 2001. If the Respondent was really dependent on the Domain Name for the claimed reasons, then the Expert would at least expect a link from the Domain Name to the new company’s website. Thus, the Expert is not convinced that the Respondent had other interests than creating revenue from leasing the link. It is further questionable whether the lease offer in the amount of CHF 666.- per month does not constitute bad faith under these circumstances.

The fact that Respondent prevented and continues to prevent the Claimant from the use of the Domain Name with no other interests than revenues from leasing, failing any indication of re-launching a corresponding website while running another business under a different name without any mention of the former business names, constitutes unfair business practice.

In addition, the circumstances of the uncontested lease and lease-back agreements between the Respondent and Ms. Vogel must be taken into account. It is hard to justify such a conduct as an act of good faith. As Ms. Vogel acted on behalf of one of Claimant’s resellers (Partech AG), the Respondent had to be aware of Claimant’s rights. The Domain Name was registered on October 31, 1997 (SWITCH Whois data, Annex no. 1), while the distribution agreement between Partech AG and the Claimant was dated November 15, 1996 (cf. letter by Claimant of February 28, 2005; Annex no. 4). The Claimant’s trademark was filed on April 4, 1996 and registered on January 22, 1997 (cf. swissreg extract, Annex no. 9). Against this background, the Expert assumes that the collaboration between Ms. Vogel and the Respondent was aimed at preventing the Claimant from registering the Domain Name. Upon termination of the Distribution Agreement as per March 31, 2005, at the latest, Respondent could no longer claim any good faith use of the Domain Name.

In order to establish a violation of Art. 2 UWG, the unfair business practice must also influence the relationship between competitors or consumers and providers. Taking into account the relationship between Claimant, Ms. Vogel and Respondent, the Expert assumes a likelihood of confusion among Claimant’s customers as to the ownership of the Domain Name, leading to a violation of Art. 2 UWG.

(iii) Business Name

As mentioned above, a company’s business name is protected under Swiss law, according to article 8 of the Paris Convention on the Protection of Commercial Property revised in Stockholm on July 14, 1967. The commercial name obtains legal protection, although it may not be registered in the country where the holder requests legal protection.

The Claimant is incorporated in the United States, which is a contracting party of the Paris Convention. Therefore, its business name SOLIDWORKS is protected under Swiss Law. The Swiss Federal Supreme Court has specified in BGE 79 II 305 that a company which is not registered in the Swiss Commercial Registry obtains the same protection for its business name than a non registered Swiss company, i.e. the protection under the UCA and of Art. 29 of the Swiss Civil Code (“CC”).

Domain names were considered by the Swiss Federal Supreme Court to be able to identify a person or a company behind them as a distinctive sign (BGE 126 III 239, 244). Therefore, the Claimant’s right to its name can be infringed by the Respondent’s use of the Domain Name.

By holding the Domain Name, the Respondent causes the risk of confusion because the name of the Claimant and the Domain Name are identical. The bearer of the business name “Solidworks GmbH” has been liquidated. The Respondent failed to prove any legitimate use of the name. Therefore, the Respondent violates the legitimate interests of the Claimant since the latter does not have to accept to be brought into connection with the holder of the Domain Name or the content of the corresponding website. The Claimant is furthermore prevented from the right to use its name on the Internet through a corresponding domain name.

In conclusion, the Expert finds that the Respondent also violated the Claimant’s name rights.

In view of the Expert, all the foregoing violations of rights in distinctive signs of Claimant justify the requested transfer of the Domain Name to the Claimant.

 

6. Expert Decision

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

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Tobias Zuberbьhler
Expert

Dated: May 10, 2006