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WIPO Arbitration and Mediation Center

EXPERT DECISION

RE/MAX International, Inc. v.Andreas Kischka

Case No. DCH2005-0009

1. The Parties

The Claimant is RE/MAX International, Inc. (the “Claimant”), Greenwood Village, CO, U.S.A., represented by R. Peter Spies, Dineff Trademark Law Limited, Chicago, IL, U.S.A.

The Respondent is Andreas Kischka (the “Respondent”), Mauren, Liechtenstein.

2. Domain Name

The dispute concerns the following domain name: <remax.li> (the “Domain Name”), registered with Carambole Sweden AB.

3. Procedural History

The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2005, via e-mail and on April 22, 2005, in hard copy. On April 21, 2005, the Center transmitted by e-mail to SWITCH a request for verification in connection with the Domain Name. On the same day, SWITCH transmitted by e-mail 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 April 25, 2005. In accordance with the Rules of Procedure, paragraph 15(a), the due date for a Response was set as per May 15, 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. The Claimant, moreover, had already expressed its unwillingness to participate in a possible Conciliation in its Request of April 20, 2005. On May 23, 2005, the Center notified the Parties accordingly. Consequently, the Claimant made an Application for the Continuation of the dispute resolution proceedings on May 23, 2005, as specified in paragraph 19 of the Rules of Procedure and paid the required fees.

On May 24, 2005, the Center appointed Tobias H. Zuberbьhler as the Expert in this case. The Expert was properly appointed. He declared his independence of the parties in accordance with the Rules of Procedure, paragraph 4, with his letter of acceptance of May 23, 2005.

4. Factual Background

The Claimant, incorporated in Colorado, U.S.A., in 1979, is a worldwide franchise for real estate brokerage agencies and real estate brokerage services. It is the owner of the following trademarks registered in class 35 and 36 and extended, inter alia, to Liechtenstein:

- Trademark “RE/MAX” (TM Nr. 11034, registered on January 25, 1999 [annex 3 and 16]);

- Trademark “RE/MAX & Balloon Design” (TM Nr. 12875, registered on December 5, 2003 [annex 7]).

The Claimant, moreover, has registered, either in its own name or on its behalf through various affiliates, a broad array of domain names with a denomination technically equivalent with its mark “RE/MAX”, e.g., “remax”, re-max”, re_max”, etc. The Claimant’s main website may be found under <remax.com>.

The disputed Domain Name, <remax.li>, was registered on May 30, 2001.

No website is presently active for <remax.li>; the website under the disputed Domain Name is a generic holding page of “active24.com”, a provider of Internet hosting services.

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 Liechtenstein as well as its rights in a distinctive sign under the Liechtenstein unfair competition laws and therefore requests it be transferred to the Claimant.

B. Respondent

As mentioned above, the Respondent has been duly 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 set forth above, the Claimant is the owner of the trademarks, inter alia, “RE/MAX” (TM Nr. 11034) and “RE/MAX & Balloon Design” (TM Nr. 12875). Exhibit nos. 3, 7, and 16 of the annex to the Request indicate that Liechtenstein is among the registered jurisdictions. The Claimant’s registration of its trademark “RE/MAX & Balloon Design”, however, was after the Respondent had registered the Domain Name. It is therefore highly doubtful whether any rights can be deduced by the Claimant from that second trademark registration with regard to these proceedings. The rights in “RE/MAX” nevertheless have been proved.

The Claimant has thus met its burden of proof as established by 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 <remax.li>. The Claimant, as mentioned above, is the holder of the registered trademark “RE/MAX”. With the exception of the forward slash, “/”, the Domain Name is identical with the Claimant’s mark. Beyond the Domain Name’s striking similarity, the Domain Name may also be considered identical since a forward slash is an invalid character within a domain name. Consequently, there would be no way to fully reproduce the Claimant’s mark in a domain name as registered. For all the foregoing, the Domain Name is identical or at least confusingly similar to the Claimant’s trademark under which the Claimant was known before Respondent’s registration of the Domain Name.

The disputed Domain Name was registered on May 30, 2001 by the Respondent. Until today, no website is active for the Domain Name; the web page under the Domain Name is but a holding page of an Internet services provider.

Dispute resolution practice for ccTLD's for .ch and .li, since its institution in March of 2004, has established that domain names identify persons, products, or services via the respective websites (see, e.g., DCH2004-0017, Feldschlцsschen Getrдnke Holding AG v. Raphael Hintermann). As to the laws of Liechtenstein, the Court of Justice (Fьrstliches Landgericht) of Liechtenstein, in its landmark decision on the subject, has held that domain names, in principle, fall within the scope of a person’s right to bear a name (art. 42 et seq. of the Law on Individuals and Companies, PGR), and that a person may call upon the remedies provided thereunder to protect its name (decision of the Court of Justice, 25.2.00/06PH/CS). Obiter, it said that this would also apply to business names.

As to trademark and competition law, it should be noted that the relevant provisions of the laws of Liechtenstein and Switzerland are identical (see <admin.ch> for the Swiss Unfair Competition Act, SR 241, and the Swiss Trademark Act, SR 232.11, <recht.li> for the Liechtenstein Unfair Competition Act, no. 240, and the Liechtenstein Trademark Act, no. 232.11). Against this background, the Expert will take guidance from precedents of the Swiss Federal Supreme Court, which has recognized that domain names are comparable to personal names, business names, and trademarks and therefore can be regarded as so-called distinctive signs (Kennzeichen; decision of the Federal Tribunal of May 2, 2000, <berneroberland.ch>, BGE 126 III 239, 244; <luzern.ch>, BGE 128 III 401).

Under this practice of the Swiss Federal Supreme Court, if a 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 239, 244 et seq.). At first sight, the above holding (BGE 126 III 244) seems to require that the domain name be actively used as a distinctive sign. There is, however, no active website under the Domain Name; the web page accessible under the Domain Name is not more than a holding page of an Internet service provider. Thus, it appears more than questionable whether, under existing practice, the Claimant may call upon the protectional measures of the Liechtenstein Trademark Act, art. 13 (see DCH2004-0012, Feldschlцsschen Getrдnke Holding AG v. John De Souza, DCH2004-0014, The Toro Company v. Toro User Club).

Domain names can, however, also be regarded as distinctive signs under competition law (BGE 126 III 239, 245). Art. 3 lit. d of the Liechtenstein Unfair Competition Act prohibits measures that are likely to cause confusion with products, works, services, or the business of others.

The Respondent, as demonstrated by the Claimant, is not a representative or a licensee of the Claimant and, furthermore, did not provide any reasonable explanation as to why he registered the disputed Domain Name. In fact the Claimant has established beyond reasonable doubt that the Respondent registered the Domain Name in connection with, or at least in anticipation of, contract negotiations for the Liechtenstein franchise of the Claimant, which have subsequently failed to produce any result. He has, moreover, unsuccessfully endeavored to acquire the Claimant’s franchise for Switzerland beforehand.

The Claimant, due to the current situation, faces disadvantages, as it cannot use the Domain Name <remax.li> to market its products under the corresponding trademark.

By registering the Domain Name <remax.li>, which is identical or at least confusingly similar to the Claimant’s trademark registrations “RE/MAX” in Liechtenstein, 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 services, in particular since the websites under the domain names of an overwhelming number of ccTLD’s are operated by the Claimant or one of its affiliates. It is therefore apparent that the Respondent is trying to take advantage of the Claimant’s brand recognition or trying to prohibit the Claimant from doing business under its mark on the Internet. Hence, the Respondent’s behavior violates the Claimant’s right in a distinctive sign under Art 3 lit. d of the Liechtenstein Unfair Competition Act.

The Respondent’s infringement of the Claimant’s trademark rights under art. 3 lit. d of the Liechtenstein Unfair Competition Act clearly justifies the transfer of the Domain Name to the Claimant. The Claimant has thus met its burden of proof under the Rules of Procedure, paragraph 24(d)(ii) and (iii).

7. Expert Decision

For all of the foregoing reasons, in accordance with paragraph 24 of the Rules of Procedure, the Expert orders that the Domain Name <remax.li> be transferred to the Claimant.

Tobias H. Zuberbьhler
Expert

Date: June 1, 2005