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WIPO Arbitration and Mediation Center

 

EXPERT DECISION

Google, Inc. v. Mr. Cool Company

Case No. DCH2006-0022

 

1. The Parties

The Claimant is Google, Inc., Mountain View, California, U.S.A., represented by Schellenberg Wittmer, Zurich, Switzerland.

The Respondent is Mr. Cool Company, La Herradura, Spain.

 

2. Domain Name

The dispute concerns the following domain name: <blogger.ch>.

 

3. Procedural History

The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2006 by email, a hard copy of which was received on September 1, 2006. On September 4, 2006, the Center transmitted by email to SWITCH a request for verification in connection with the domain name at issue. On that same date, 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”), adopted by SWITCH, the “.ch” and “.li” registry, on March 1, 2004.

In accordance with the Rules, paragraph 14, the Center formally notified the Respondent of the Request, and the Dispute resolution proceedings commenced on September 4, 2006. In accordance with the Rules, paragraph 15(a), the due date for Response was September 25, 2006.

On September 26, 2006, the Center notified the Claimant accordingly, who on September 29, 2006, made an application for the continuation of the Dispute resolution proceedings in accordance with Paragraph 19 of the Rules and paid the required fees.

On October 10, 2006, the Center appointed Christophe Imhoos as Expert in this case. The Expert finds that it was properly constituted. In accordance with Rules, paragraph 4, the above Expert has declared his independence of the parties.

 

4. Factual Background

Google is a global technology leader which offers Internet related services such as the famous “Google” search engine and the “Blogger” electronic publishing service.

Claimant is the owner of the trademark GOOGLE, as well as other trademarks and domain names including, in particular, the trademark BLOGGER, and the domain name <blogger.com> (see Annexes 2 to 6 to the Complaint).

Claimant owns trademark registrations and has submitted trademark applications for its “BLOGGER” trademark in numerous countries around the world, including Switzerland (Annex 7 to the Complaint); in particular, Claimant has registered its trademark “BLOGGER” in Switzerland under the number CH 533 851 (word mark) (Annex 8 to the Complaint) and CH 542 752 (logo) (Annex 9 to the Complaint). Both trademarks have been registered for products and services in class 9 for “Computer software” and class 41 for “Electronic publishing services” (see Annex 9).

When the Claimant became aware of the existence of the domain name in dispute, it sent a warning letter dated June 27, 2006 to the Respondent by courier, putting Respondent on notice that the registration and the use of the said domain name was infringing the Claimant’s rights in the Swiss trademark registrations BLOGGER and constituting an act of unfair competition; the Respondent had been asked to transfer the domain name to the Claimant before July 7, 2006 (Exhibit 11 to the Complaint).

As the Respondent was not known at the only address provided in the contact information, the letter could not be delivered. Further searches for the Respondent’s contact information with several search engines were not successful (Annexes 12 and 13 to the Complaint).

 

5. Parties’ Contentions

A. Claimant

The Claimant argues the following:

(i) The Claimant has a right in a distinctive sign under the laws of Switzerland.

The Claimant owns trademark registrations for the mark BLOGGER as a word mark and as a logo in Switzerland.

Moreover, the Claimant is entitled to seek protection under the Swiss Unfair Competition Act (hereinafter “UCA”) as the Respondent, when setting up the domain name <blogger.ch>, caused confusion with the coined term “blogger” which is a distinctive term pursuant to Article 3 para. 1 lit d) UCA. The Claimant can establish priority of use in Switzerland of the term “blogger” as its website at the domain name <blogger.com> has always been accessible in Switzerland and has been used by millions of users worldwide, including Swiss users as early as 1999.

(ii) The registration and/or use of the domain name at issue infringes the Claimant’s right in a distinctive sign under the laws of Switzerland.

The disputed domain name <blogger.ch> is obviously identical to the Claimant’s Swiss trademark BLOGGER and, its <blogger.com> domain name respectively and therefore it is likely to cause confusion amongst Internet users who would expect to find the services of the Claimant under the disputed domain name <blogger.ch> (e.g. a Swiss version of the “www.blogger.com” website). Instead, they are directed to Respondent’s pornographic site. By registering and using the disputed domain name <blogger.ch>, the Respondent intentionally attempted to attract users to its pornographic site by creating a likelihood of confusion as to the source of its website.

The use of the Claimant’s distinctive sign for pornographic materials clearly qualifies as unfair use in bad faith. Moreover, by registering the domain name <blogger.ch>, the Respondent unfairly obstructed Claimant by preventing the latter from registering and using its mark BLOGGER as a “.ch” domain name and unfairly exploiting the reputation of the Claimant’s trademark. Such a conduct breaches Article 2 UCA (ATF 126 III 239; Buri, der Schutz nicht registrierter Kennzeichen, SIWR III/2, p. 369).

B. Respondent

The Respondent has neither filed a Response within the set deadline nor expressed its readiness to participate in a Conciliation in accordance with Paragraph 15(d) of the Rules.

 

6. Discussion and Findings

Paragraph 24 of the Rules provides that:

(a) The Expert shall decide on the request on the basis of the pleadings of both parties and the submitted documents in conformity with these Rules.

(b) The Expert may only order the deletion or transfer of the domain name, depending on the remedy requested in the request, or reject the request.

(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 law of Switzerland or Liechtenstein.

(d) In particular, 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.

As a result of the repeated reference to “clarity” in the above mentioned provision, the right invoked by the Claimant must be unequivocal and the evidence of confusion or other infringement quite obvious to lead to a transfer or deletion of the disputed domain names. Doubt must benefit the Respondent (I-D Media AG c. Id-Mйdia Sаrl, WIPO Case No. DCH2005-0018).

Paragraph 23 of the Rules also provides that if a party, without due cause, fails to comply with the time periods laid down in the Rules, the Expert shall decide on the request on the basis of the case file and that if one party, without due cause fails to comply with a provision of the said Rules, the Expert may draw such inferences therefrom as he considers appropriate.

A. The Claimant has a right in a distinctive sign

As set forth above, the Claimant is the owner of the trademark BLOGGER (word and logo, see Annexes 7 to 9 to the Complaint). The Expert also notes that the trademark registration in Switzerland was made on April 4, 2005 (word) and January 5, 2006 (logo), respectively (Annexes 8 and 9 to the Complaint) whilst the domain name in dispute was registered far earlier, namely on May 7, 2002 (Annex 1 to the Complaint).

The Claimant is nevertheless entitled to rely on the provisions of the Swiss Unfair Competition Act (see e.g. WIPO Case No. DCH2006-0011, Evolиne O et H Mйtrailler SA v. Immo-Tourisme Evolиne-Rйgion; WIPO Case No. DCH2006-0006, Hйli-Alpes v. Air-Glaciers SA; WIPO Case No. DCH2006-0004, Solidworks Corporation v. Christoph Erni; WIPO Case No. DCH2005-0012, Zurich Insurance Company, Vita Lebensversicherungs-Gesellschaft v. Roberto Vitalini).

On that basis, the Expert is satisfied that the Claimant has established priority of use in Switzerland of the distinctive sign “BLOGGER” as the website “blogger.com” has been accessible in Switzerland and used by millions of users worldwide, including Swiss users as early as 1999 (Annex 3 to the Complaint).

The Expert finds that the Claimant has thus met its burden of proof as established by the Rules, paragraph 24(d)(i).

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

The domain Name at issue is <blogger.ch>. The Claimant is the holder of the registered international and Swiss trademark BLOGGER and the disputed domain name is clearly identical to the Claimant’s trademark under which the Claimant was obviously known before the Respondent’s registration of the domain name at stake.

Because domain names identify persons, products, or services via the respective websites, Swiss Federal Supreme Court practice recognizes that domain names are comparable to personal names, business names, and trademarks and therefore can be regarded as distinctive signs (ATF 126 III 239, 244, <berneroberland.ch>). Swiss practice further acknowledges a likelihood of confusion if the (commercial) use of a domain name similar to a name (or mark) creates the risk of a wrong association of the website (ATF 128 III 401, 402, <luzern.ch>). Whether the contents of a website operated under the domain name must be taken into account when examining the likelihood of confusion, currently appears to be subject to a change in practice. Whereas in earlier decisions the Swiss Federal Tribunal held that the content of a website under the corresponding trademark shall be disregarded (see sic! 2003, p. 822 <t-online.ch>; ATF 128 III 401, 403 et seq. <luzern.ch>), a more recent decision suggests otherwise (see sic! 2005, p. 283 <riesen.ch>) (Unigestion Holding S.A. v. ITCG s.c. W. Drewniak, M. Olczykowski, WIPO Case No. DCH2005-0013).

The holder of a valid trademark or company name may seek cumulative protection under the UCA. Such holder may also seek specific protection under the UCA when the behavior in question is covered by the specific purposes and scope of the UCA. Under Article 3 lit. d) of the UCA, anyone taking measures aimed at causing confusion with products, works, services or enterprise of a product or service provider, is acting unfairly. Under Article 2 of the UCA, the protection may be extended to imitations not falling under Article 3 lit. d) the UCA provided specific additional circumstances show the unfairness of the behaviour (Zurich Insurance Company, Vita Lebensversicherungs-Gesellschaft v. Roberto Vitalini, WIPO Case No. DCH2005-0012).

The Respondent is not a representative of the Claimant. The Claimant faces disadvantages as it cannot use the domain name <blogger.ch> to market its product under the corresponding trademark. By registering the domain name <blogger.ch>, which is identical to the Claimant’s international and Swiss trademark registrations for the mark BLOGGER, the Respondent created a likelihood of confusion for Internet users who would expect to find under the disputed domain name the Claimant’s related services. It is apparent that the Respondent is trying to take advantage of the Claimant’s brand recognition. Hence, the Respondent’s behavior violates the Claimant’s right in a distinctive sign under Article 3 lit. d) UCA.

Moreover, the Expert agrees with the Claimant that the Respondent’s conduct aiming at using the Claimant’s distinctive sign for pornographic material (see Annex 10 to the Complaint) exploiting thereby the reputation of the Claimant’s trademark is unfair and unlawful within the meaning of Article 2 UCA.

Hence, the Respondent’s infringement of the Claimant’s trademark rights under Articles 2 and 3 lit. d) UCA clearly justifies the transfer of the domain name <blogger.ch> to the Claimant.

The Expert finds that the Claimant has thus met its burden of proof under the Rules, paragraph 24(d)(ii) and (iii).

 

7. Expert Decision

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

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Christophe Imhoos
Expert

Dated: October 24, 2006