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WIPO Arbitration and Mediation Center

 

EXPERT DECISION

TDC Switzerland AG v. Algis Skara

Case No. DCH2006-0028

 

1. The Parties

The Claimant is TDC Switzerland AG, Zurich, represented by Bratschi Emch Attorneys-at-law, Zurich.

The Respondent is Algis Skara, Liepaja, Latvia.

 

2. Domain Name

The dispute concerns the Domain Name <sunirse.ch> (the “Domain Name”).

 

3. Procedural History

The Request was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on October 10, 2006. On October 11, 2006, the Center transmitted by email to SWITCH a request for verification in connection with the Domain Name at issue. On October 12, 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. On October 13, 2006, the Center notified the Claimant of its Request’s deficiency. The Center verified that the revised 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 November 3, 2006. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was November 23, 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 November 27, 2006, the Center notified the Claimant accordingly, who on November 29, 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 December 14, 2006, the Center appointed Tobias Zuberbьhler as Expert in this case. The Expert finds that he was properly constituted. In accordance with Rules of Procedure, paragraph 4, the above Expert has declared his independence of the parties.

Regarding a Request for provisional measures made by the Claimant, the Expert notes that SWITCH has acted on its legal duty under paragraph 3.5 SWITCH General Terms and Conditions (GTC) to block the Domain Name as soon as notified of these proceedings.

The Expert does not find authority in the Rules of Procedure (cf. paragraph 24 (b)) to order the deletion of the name server assignment.

Likewise, the Expert notes that the reference to deletion of the name server assignment in art. 3.5 GTC on its face does not explicitly reserve such deletion authority to the present Expert. In any event, the outcome of the present decision makes this matter moot.

 

4. Factual Background

The Claimant is a renowned Swiss company. Its purpose is to maintain telecommunication networks and to render services in the field of communication mainly in Switzerland. In fact, Claimant is one of Switzerland’s three largest network-and service-providers under the trademark SUNRISE. Claimant’s trademark was registered on April 3, 2006 (Exhibit No. 5 of the Request). Several other trademarks containing the wording SUNRISE are registered in favor of the Claimant (Exhibit No. 6 of the Request).

The Respondent registered the Domain Name on September 25, 2006. On the website under the Domain Name various services regarding travel and telecommunication seem to be offered, via links to other websites.

 

5. Parties’ Contentions

A. Claimant

The Claimant bases its Request on the following grounds:

1. The Claimant is owner and has the exclusive rights in the trademark SUNRISE.

2. Consequently, the Respondent infringes Claimant’s rights under the laws of Switzerland by registration and use of the Domain Name.

3. Therefore, the Domain Name shall be transferred to the Claimant. In case the transfer is denied the domain name shall be deleted. As provisional measures the blocking of the Domain Name and a preliminary deletion of the name server assignment are requested.

B. Respondent

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

 

6. 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 defense; 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 Claimant proved ownership of the trademark SUNRISE (Exhibit No. 5 of the Request).

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

A registered trademark allows the holder to invoke protection under the Swiss 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).

Furthermore, Claimant’s trademark can be considered as famous. The trademark SUNRISE is widely known in Switzerland. Its reputation and publicity literally invites its exploitation. Any service offered under the trademark SUNRISE will certainly be seen as a new activity of the Claimant even if such service is not in the communication sector. Therefore, the trademark SUNRISE enjoys a wider protection according to art. 15 TMA.

According to art. 13 para. 2 TMA in connection with art. 3 para. 1 lit. c TMA the Claimant is entitled to enjoin the Respondent to use a sign similar to SUNRISE in connection with goods and services identical or similar to Claimant’s. The difference between the signs SUNRISE and SUNIRSE is negligible. It only consists of the exchange of two letters without significantly altering the appearance of the sign as a whole, especially considering the wider protection of art. 15 TMA. The services and goods offered on Respondent’s website under the Domain Name include services similar or identical to Claimant’s, i.e. mobile phones, network contracts or SMS-services.

The Panel notes that under paragraph 4 (a) of the Uniform Domain Name Dispute Resolution Policy (“UDRP”) adopted by ICANN on August 26, 1999, the conduct of typosquatting is considered as evidence of bad faith. Typosquatting as referred to in several WIPO-decisions (see e.g. Edmunds.com, Inc. v. Triple E Holdings Limited, WIPO Case No. D2006-1095) must be seen in subtle changes in the spelling of complainant’s trademark. These changes could be the switching, the deletion or the doubling of letters. The result does not substantially differ from the trademark. Therefore, the creation of domain names through modification of trademarks could not serve any possible legitimate interests and could only aim at exploiting the reputation of a trademark.

The Respondent offers no evidence that might prove any right in the Domain Name.

Therefore, the Respondent clearly infringes the Claimant’s trademark rights.

 

7. Expert Decision

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

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Tobias Zuberbьhler
Expert

Dated: December 28, 2006