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WIPO Arbitration and Mediation Center

 

EXPERT DECISION

Anton Riemerschmid Weinbrennerei und Likцrfabrik GmbH & Co. KG v. Productos Tropicales

Case No. DCH2005-0004

 

1. The Parties

The Claimant is Anton Riemerschmid Weinbrennerei und Likцrfabrik GmbH & Co. KG (the “Claimant”), represented by Magda Streuli-Youssef, Walder Wyss & Partners, Zurich, Switzerland.

The Respondent is Productos Tropicales (the “Respondent”), represented by Ronny Schьrch, Zurich, Switzerland.

 

2. Domain Name

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

 

3. Procedural History

The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2005 via e-mail and on March 2, 2005, in hard copy. On March 1, 2005, the Center transmitted by e-mail to SWITCH a request for verification in connection with the Domain Name. On March 3, 2005, 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 March 7, 2005. In accordance with the Rules of Procedure, paragraph 15(a), the due date for a Response was set as per March 28, 2005.

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 of Procedure.

On March 29, 2005, the Center notified the Parties accordingly. Consequently, the Claimant, on March 30, 2005, made an Application for the Continuation of the dispute resolution proceedings as specified in paragraph 19 of the Rules of Procedure and paid the required fees.

On March 31, 2005, the Center appointed Tobias Zuberbьhler as Expert in this case. The Expert was properly appointed and has declared his independence of the parties in accordance with the Rules of Procedure, paragraph 4.

 

4. Factual Background

The Claimant, a member of the Underberg Group, is a manufacturer and distributor of liquor and alcoholic beverages. It is the owner of the following international trademarks registered in class 33 and extended, inter alia, to Switzerland:

- Trademark “PITU” (TM Nr. 399731, registered on June 28, 1973);

- Trademark “Pitъ” (TM Nr. 712112, registered on January 22, 1999);

- Trademark “Pitъ” (TM Nr. 755880, registered on January 24, 2001);

- Trademark “PITUCHITO” (TM Nr. 78024, registered on May 10, 2002);

- Trademark “Pitъ” (TM Nr. 790449, registered on July 30, 2002).

The disputed Domain Name <pitu.ch> was registered on April 26, 2001.

No website is presently active for <pitu.ch>. A user entering the Domain Name, however, is automatically forwarded to the Respondent’s website, operated under the domain name <productos-tropicales.ch>.

 

5. Parties’ Contentions

A. Claimant

The Claimant contends that the registration and/or use of the Domain Name at issue infringes the Claimant’s trademark rights under the laws of Switzerland and therefore requests that it be transferred to the Claimant.

B. Respondent

As mentioned above, the Respondent has been notified in accordance with the Rules of Procedure, paragraph 14, but neither filed a Response nor expressed its readiness to participate in a Conciliation in accordance with the Rules of Procedure, paragraph 15(d).

 

6. Discussion and Findings

According to the Rules of Procedure, paragraph 24(a), the Expert shall decide 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 laws 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

As mentioned above, the Claimant is the owner of the international trademarks “PITU” (TM Nr. 399731), “pitъ” (TM Nr.’s 712112, 755880, 790449), and “PITUCHITO” (TM Nr. 78024). Exhibit no. 3 of the annex to the Request indicates that Switzerland is among the registered jurisdictions.

Claimant has thus met its burden of proof under the Rules of Procedure, 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 <pitu.ch>. The claimant is the holder, inter alia, of the registered international trademarks “PITU” and “pitъ”. Thus, the Domain Name is clearly identical to the Claimant’s trademarks under which the Claimant was obviously known before the Respondent’s registration of the Domain Name.

The disputed Domain Name was registered by the Respondent on April 26, 2001 and has been used to market the sale of beverages from South America by way of forwarding to a website under the domain name of <productos-tropicales.ch>.

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 (see, e.g., DTF 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 (DTF 128 III 401, 402, <luzern.ch>). This likelihood of confusion is established without recourse to the contents of the website operated under the domain name (DTF 128 III 401, 403 et seq.). If the domain name corresponds to a protected trademark, the owner of the trademark is entitled to prohibit the use of the domain name by others (BGE 126 III 239, 244 et seq.).

Under Swiss trademark law (Bundesgesetz ьber den Schutz von Marken und Herkunftsangaben vom 28. August 1992, MSchG), a trademark holder may, based on Art. 13 para. 2 MSchG, prohibit third parties the commercial use of a distinctive sign, i.e., inter alia, a trademark, if it falls within the scope of Art. 3 paras. 1 and 2 MSchG.

Whereas the Respondent does not operate a website under the Domain Name, the forwarding of any user entering <pitu.ch> to the website of <productos-tropicales.ch> suffices to consider the Domain Name’s use as commercial in the sense of Art. 13 para. 2 MSchG. In light of the Domain Name’s identity with the trademarks “PITU” and “pitъ”, moreover, there clearly exists a likelihood of confusion between the latter and the former in the sense of Art. 3 paras. 1 and 2 MSchG.

The Claimant has therefore proved the Domain Name’s identity with one of its trademarks and its infringement by the Respondent’s use of the Domain Name at issue by creating a likelihood of confusion as to the origins of the Domain Name and the products marketed under its denomination.

Even under the assumption that the sole forwarding of users entering <pitu.ch> to a website under <productos-tropicales.ch> may not suffice to constitute a commercial use of the Domain Name, Respondent’s use of the Domain Name constitutes a clear infringement of Swiss competition law. Domain names can also be regarded as distinctive signs under Swiss competition law (BGE 126 III 239, 245). Art. 3 lit. d of the Swiss Unfair Competition Act (Bundesgesetz gegen den unlauteren Wettbewerb vom 19. Dezember 1986, UWG) prohibits measures that are likely to cause confusion with products, works, services, or the business of others, and does not presuppose a commercial use. It may, moreover, be applied cumulatively, in addition to trademark law, where the latter leaves room for the former’s protective purpose (see, e.g., decision by the Zurich Commercial Court, sic! 1999, 582 et seq, Rivella – Apiella II).

The Respondent, as indicated by the Claimant, is not a representative of the Claimant and, furthermore, did not provide any reasonable explanation as to why it registered the disputed Domain Name. The Claimant, on the other hand, faces disadvantages as it cannot use the Domain Name <pitu.ch> to market its products under the corresponding trademarks.

By registering the Domain Name <pitu.ch>, which is identical to the Claimant’s international trademark registrations “PITU” and “pitъ” in Switzerland, the Respondent created a likelihood of confusion. An Internet user is likely to assume a connection between the Respondent’s website and the Claimant’s trademark-protected products, in particular when its marketed products include the same classes of goods. It is therefore 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 Art 3 lit. d UWG.

The Respondent’s infringement of the Claimant’s trademark rights under Art. 3 paras. 1 and 2 MSchG and under Art. 3 lit. d UWG clearly justifies the transfer of the Domain Name to the Claimant. Claimant has thus met its burden of proof under the Rules of Procedure, paragraph 24(d)(ii) and (iii).

 

7. Expert Decision

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

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Tobias Zuberbьhler
Expert

Date: April 12, 2005