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The Procter & Gamble Company and Procter & Gamble Service GmbH v. Ariel Hauser
Case No. DCH2006-0012
1. The Parties
The Claimants are The Procter & Gamble Company, an Ohio Corporation, Cincinnati, Ohio, United States of America (hereinafter, the First Claimant) and Procter & Gamble Service GmbH, Schwalbach am Taunus, Germany (hereinafter, the Second Claimant), represented by Walder Wyss & Partners, Attorneys at Law, Zurich, Switzerland.
The Respondent is Ariel Hauser, Wangen an der Aare, Switzerland.
2. Domain Name
The dispute concerns the following domain name: <ariel.ch>.
3. Procedural History
The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2006, and was received by the Center the same day via email and in hardcopy on June 9, 2006. The case number was assigned on June 8, 2006, and the Center transmitted by email to SWITCH a request for verification in connection with the domain name at issue. On June 13, 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 June 13, 2006. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was July 3, 2006.
No Conciliation conference has taken place within the deadline specified in Paragraph 17(b) of the Rules of Procedure. Indeed, the Respondent has neither filed a Response nor expressed his readiness to participate in a Conciliation procedure in accordance with Paragraph 15(d) of the Rules of Procedure, despite the inquiry made by the Center on July 5, 2006, about the willingness of the Respondent to participate in a Conciliation procedure.1
On July 10, 2006, the Center notified the Claimants accordingly, who that same day applied for the continuation of the dispute resolution proceedings in accordance with paragraph 19 of the Rules of Procedure and paid the required fees.
On August 2, 2006, the Center appointed Theda Kцnig Horowicz as Expert in this case. The Expert finds to have been properly appointed. In accordance with Rules of Procedure, paragraph 4, the above Expert has declared her independence vis а vis the parties.
On September 1, 2006, the Expert rendered a procedural order giving the Claimants a deadline until September 6, 2006, to provide evidence on the question as to whether the trademark “ARIEL” has acquired the status of a well-known trademark in Switzerland. At the request of the Claimants, the deadline was extended until October 18, 2006. The opportunity was also given to the Respondent to take position on the Claimants’ new submission until October 25, 2006. The deadline for the Expert to give its decision was set for November 2, 2006.
The Claimants filed their submission of evidence by email on October 17, 2006. A hard copy of each exhibit was received by the Center on October 18, 2006. No response was filed by the Respondent on this submission of evidence.
According to SWITCH, the contractual language of the Respondent’s registration
agreement is English. The language of these dispute resolution proceedings is
therefore English in accordance with paragraph 7(a) of the Rules of Procedure.
4. Factual Background
The Procter & Gamble Group is a well-known manufacturer and distributor of consumer goods throughout the world.
The trademark “ARIEL” was first registered in Switzerland on August 29, 1924, by Procter & Gamble International Operations SA (Switzerland) in international classes 1, 2, 3, 5, 8 and 21.
The First Claimant is the owner in Switzerland of several other registrations for the trademark “ARIEL” alone or combined with other words, notably in international class 3 (amongst others bleaching preparations and other substances for laundry use). The oldest registration is dated April 21, 1988.
The trademark “ARIEL” has been widely used by the Claimants for several years now and is among the best known brands in the market of detergents.
The domain name <ariel.ch> was registered by Ariel Hauser on July 10, 2001. It is not linked to an active website.
On March 15, 2006, the Claimants sent a cease and
desist letter to the Respondent requesting the transfer of the domain name <ariel.ch>
to the Second Claimant. A reminder was sent on March 27, 2006. The Respondent
did not react to any of these letters.
5. Parties’ Contentions
The Claimants allege that the First Claimant has a right in the trademark “ARIEL” in Switzerland.
In addition, the Claimants state that the registration of the domain name at issue by the Respondent infringes the said trademark right, based on Article 13 paragraph 1 and 2 of the Swiss Trademark Act. The domain name at issue would create a likelihood of confusion with their trademark.
The Respondent did not submit a formal or substantive
reply to the contentions of the Claimants.
6. Discussion and Findings
In accordance with paragraph 24 c) of the Rules of Procedure, the Expert has to examine if two conditions are fulfilled:
- the Claimant owns a right in a distinctive sign under the law of Switzerland or Liechtenstein, and
- the registration of the domain name at issue by the Respondent constitutes a clear infringement of the Claimant’s rights.
A. The Claimants have a right in a distinctive sign
The First Claimant – Procter & Gamble Company
The Expert finds, by virtue of its Swiss registrations for the trademark “ARIEL” (alone or in combination with other words), that the First Claimant has an exclusive right to this distinctive sign in the relevant international classes of goods (mainly international class 3).
The Second Claimant – Procter & Gamble Service GmbH
The Second Claimant obviously belongs to the same Group of Companies as the First Claimant who owns a right in Switzerland in the trademark “ARIEL”. The Request asks that the domain name at issue shall be transferred to the Second Claimant.
The Request does not indicate whether the Second Claimant owns a trademark or a domain name or any other distinctive sign giving them a right in Switzerland in the trademark “ARIEL”.
Considering the fact that the two Claimants belong to the same Group, the assumption can however be made that each has a right in the mark “ARIEL”.
The Panel therefore concludes that the first condition of the Rules of Procedure, paragraph 24(c) is fulfilled.
B. The registration or use of the domain name at issue constitutes a clear infringement of the Claimants’ rights
As indicated above, the Claimants have a right in the trademark “ARIEL” which covers several goods related to bleaching preparations and other substances for laundry. The domain name at issue contains the first name of the Respondent and is not linked to an active website.
The first question which arises is whether the mere registration of the domain name <ariel.ch> constitutes an infringement to the Claimants’ right in the trademark “ARIEL” under Swiss Trademark Law.
According to Article 3 combined with Article 13 paragraph 1 of the Swiss Trademark Act, a trademark right gives its owner the exclusive right to use a trademark in relation to the goods and services for which it has been registered.
The Swiss Supreme Court considered that in the case of a conflict between a trademark and a domain name, the content of the website linked to the domain name would be determining, but that the sole registration of a domain name can be sufficient to establish the violation of a trademark right if the trademark is well-known (4C.31/2004 = sic! 2005, 200 - <riesen.ch>).
The second question which arises is therefore whether “ARIEL” is well-known and protected under Article 15 of the Swiss Trademark Act.
The status of a well-known trademark is a question of fact which has to be evidenced (ATF 130 III 753) and which depends on various circumstances such as the strength of the trademark in advertising, its important financial value in many fields, its high level of recognition among the public and its uniqueness (ATF 124 III 277 / JdT 1998 I 324ss - nike).
The Claimants have provided substantial evidence (ads, advertising and sales figures and audiofiles) showing that their trademark “ARIEL” has acquired quite a high level of significance and recognition in Switzerland. The Claimants’ statements in this regard were not rebutted by the Respondent.
Under the circumstances, the Expert considers that “ARIEL” is obviously a strong trademark, known by a large part of the Swiss public, and that it therefore benefits from a high scope of protection in Switzerland.
The third question to examine is whether the well-established rights of the Claimants in their trademark “ARIEL” prevail over the Respondent’s first name “Ariel” which is protected, to a certain extent, by Article 29 of the Swiss Civil Code (Andreas BUCHER, Personnes Physiques et protection de la personnalitй, Helbing & Lichtenhahn, Basel, 1999, No. 833). A balance between the parties’ interests has thus to be established.
The Swiss Supreme Court found that the interest of a company in being easily found on the Internet by its customers under its well-known mark is greater than the interest of an individual to use his last name as part of an Internet address (4C.376/2004 of January 21, 2005, SIC ! 2005, pages 390ff – <maggi.com>).
In this regard, the Expert considers that the interest of a multinational group such as Procter & Gamble, which owns and has been extensively using in Switzerland the “ARIEL” trademark for decades, is higher than the interest of the Respondent who has registered his first name as a domain name, but who has not used the said domain name for a website in five years and who has not taken position in the present proceedings. The registration of the domain name at issue does therefore infringe the rights of the Claimants in their well-established mark “ARIEL”.
Under the circumstances, the Expert concludes that the second condition of
Paragraph 24(c) of the Rules of Procedure is fulfilled.
7. Expert Decision
For the above reasons, in accordance with Paragraphs 24 of the Rules of Procedure, the Expert orders that the domain name <ariel.ch> be transferred to the Second Claimant, Procter & Gamble Service GmbH.
Theda Kцnig Horowicz
Dated: November 2, 2006
1 On September 1, 2006, Respondent sent an email to the Center, stating, inter alia, as follows: “What is going on? I just noticed that there is a dispute about my private webpage www.ariel.ch (…).” On the same date the Center referred the Respondent to the Center’s previous communications of July 5, 2006, and July 10, 2006, sent to the same email address from which the inquiry of the Respondent was made. On September 18, 2006, in reply to the procedural order, the Respondent made an inquiry as to whether there was a possibility for him to keep the domain name. On September 20, 2006, the Center referred the Respondent to the Center’s aforementioned email of September 1, 2006, and informed the Respondent that he could contact the Center for any procedural questions he might have. The Respondent did not contact the Center or submit further communications.