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WIPO Arbitration and Mediation Center

 

EXPERT DECISION

JEKO AG vs. Mr. Jйrфme Haegeli

Case No. DCH2005-0014

 

1. The Parties

The Claimant is JEKO AG, Bern, Switzerland, represented by Ueli Grьter, Attorney-at-Law, Zьrich, Switzerland.

The Respondent is Jйrфme Haegeli, Lajoux, Switzerland.

 

2. The Domain Name

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

 

3. Procedural History

The request was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on June 27, 2005, and in hardcopy on June 29, 2005.

On June 29, 2005, the Center transmitted by email to SWITCH a request for verification in connection with the Domain Name. On the same day, 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 (“Rules of Procedure”) adopted by SWITCH, the “.ch” and “.li” Registry, on March 1, 2004.

In accordance with paragraph 14 of the Rules of Procedure, the Center formally notified the Respondent of the Request and the dispute resolution proceedings commenced on June 30, 2005. In accordance with paragraph 15(a) of the Rules of Procedure, the due date for the Response was July 20, 2005.

On July 18, 2005, the Respondent filed a brief Response in French. The telephone conciliation, as provided in the Rules of Procedure, was conducted on August 2, 2005. It failed since the Parties could not reach an agreement.

In view of the fact that the Claimant made an application for the continuation of the dispute resolution proceedings, as specified in paragraph 12(c) of the Rules of Procedure, the Center appointed Thomas Legler as Expert in this case on August 22, 2005. The Expert was properly appointed and has declared his independence of the Parties in accordance with paragraph 4 of the Rules of Procedure.

By a Procedural Order dated August 30, 2005, the Expert ordered the Respondent to submit a short submission together with the relevant proof with regard to certain facts. Due to a technical reason, the Respondent did not receive the Procedural Order on time. Based on this information, the Expert extended the due date for the Respondent’s reply to the Order to September 20, 2005. On September 19, 2005, the Respondent filed its supplemental submission as requested by the Expert.

 

4. Factual Background

The Claimant is a company domiciled in Bern, which seems to be active in the field of market research and polling. The Claimant does not submit evidence on its activity. It is owner of the combined trademark “Jeko” filed in Switzerland on April 17, 2003, for classes 9, 16, 35, 41 and 42.

The Claimant has been incorporated on April 4, 2000, under the corporate name JEKO AG.

The Respondent registered the Domain Name on July 1, 1998. He uses the nickname “Jeko” privately and professionally since the early 1990’s.

 

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the Respondent has no right at all to the name “Jeko” and infringes its name right according to article 29 of the Swiss Civil Code, its trade name (article 956 of the Swiss Code of Obligations) as well as its trademark (article 13 para. 2 of the Swiss Trademark Law). Moreover, the Claimant indicates that the Respondent is also in conflict with the Swiss Unfair Competition Law.

The Claimant stresses the fact that Claimant’s customers, when using the Internet, are typing the name “Jeko” and expecting to reach Claimant’s homepage and not the one of Respondent. Hence, according to Claimant, there is a risk of confusion between the Claimant and the Respondent.

B. Respondent

The Respondent indicates that he acquired the Domain Name <jeko.ch> on July 1, 1998, whereas the Claimant has been incorporated only in 2000. He further submits evidence according to which his nickname is “Jeko” since the early 1990’s. Although, his homepage is, at first sight, under construction, he nevertheless uses the Domain Name for his various email accounts as well as for the exchange of files and pictures. For this purpose, the Respondent submits various excerpts from his mail and web server and screen shots from his website with hidden access to pictures and files. Moreover, the Respondent produces correspondence reflecting the fact that the Claimant had previously asked him for the transfer of the Domain Name. It also follows from that correspondence, that the Respondent offered a link to Claimant’s own homepage. Left without response to that offer, he then received a cease and desist letter from Claimant’s lawyer.

 

6. Discussion and Findings

According to paragraph 24(a) of the Rules of Procedure, 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 (paragraph 24(c) of the Rules of Procedure).

In particular, according to paragraph 24(d) of the Rules of Procedure, 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) 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. Claimant rights in a distinctive sign

As mentioned above, Claimant is the owner of the Swiss combined trademark JEKO. A priori, he may also invoke the protection of his trade name JEKO AG (article 956 CO) as well as of its personal name (article 29, para. 2 CC). However, as it will be shown below, the only valid ground on which the Request can be based, is the right in his personal name.

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

It has been established by Respondent’s evidence, that he is using the Domain Name for private purposes, i.e. for his various email accounts and for exchanging files and pictures (only accessible via passwords). In particular, the Respondent does not use the Domain Name for commercial purposes, let alone for competing with Complainant’s business.

In view of the foregoing, neither trademark law nor the protection sought by Claimant under the legislation for protection of trade names or for unfair competition are applicable (see for trademark law: SIWR-Marbach, p. 197, David, Markenschutzgesetz, N° 27 ad article 13; for trade names: art. 956 CO, ATF 107 II 362, 92 II 278 and sic! 10/2002, p. 686; for unfair competition: ATF 120 II 78, 123 IV 211, 125/376, and David, Schweiz. Wettbewerbsrecht, p. 9).

Hence, the only legal basis on which Claimant could base its Request for transfer of the Domain Name is article 29 of the Swiss Civil Code protecting personal names.

By registering its trade name JEKO AG on April 4, 2000, with the Register of Commerce of the Canton of Bern, the Claimant has simultaneously acquired a right to that name according to article 29 CC.

With regard to the Respondent, who claims the same name as its nickname, the following legal principles have to be applied. Pursuant to Swiss law, nicknames also fall under the protection of article 29 CC if they have a certain originality or have been accepted as such in the public (“durchschnittliche Auffassung der beteiligten Verkehrskreise”; ATF 92 II 305 and Bьhler, Basler Kommentar zum schweizerischen Privatrecht, Basel 2002, article 29 CC, N° 16). Whether the public has, in this sense, accepted a certain nickname has to be decided according to objective elements, but abstractly and without a polling (Bьhler, op. cit., article 29 CC, N° 21 und 23 ff). The Expert considers the nickname “Jeko” as quite fanciful. Moreover, the Respondent has submitted evidence that he is known by this nickname privately and professionally since the early 1990’s. The Expert therefore concludes that the Respondent may invoke personal rights on his nickname, although its use is territorially and factually restricted (Bьhler, op.cit, article 29 CC, N° 29 ff).

Accordingly, both Parties may invoke personal name rights under article 29 CC. In cases of such conflicting absolute rights, the Federal Tribunal does not strictly apply the principle of priority (ATF 128 III 353, 364). The Federal Tribunal favours the solution where the various interests are taken into account and balanced against each other (ATF 4C.376/2004 of January 21, 2005; ATF 128 III 353, 363 ff; ATF 126 III 239, 245; ATF 125 III 91, 93; Rosenthal Entwicklungen im Domain Namen-Recht, sic! 2000, 421). The Federal Tribunal bases the balancing of the various interests in particular on the evaluation what the average Internet user is expecting when typing a particular domain name. The application of this principle does however not lead to a clear conclusion in the present case, since the names of both Parties are not of well-known character and their use territorially and factually restricted. Indeed, one cannot say that the average Internet user will expect behind the Domain Name either the website with the services offered by the Claimant nor the personal website of the Respondent.

If the balancing of the various interests does, like in the present case, not lead to a conclusive result, the principle of “first come, first served” has to be applied. Since the Respondent has acquired the Domain Name already in 1998, whereas JEKO AG has been incorporated only in 2000, the Respondent prevails.

C. The question where there are relevant grounds for a defense for the sake of completeness

For the sake of completeness, the Expert will also briefly address whether the Respondent has relevant grounds for his defense pursuant to paragraph 24(d)(ii) of the Rules of Procedure.

The Respondent registered his Domain Name in 1998 and has submitted evidence according to which he uses his nickname in good faith since the early 1990’s. The Respondent has even offered to the Claimant to put a link on his personal website which would point towards Claimant’s homepage in order to eliminate any risk of confusion.

In the light of the foregoing, Respondent’s acts do not show any bad faith and his use of the Domain Name therefore appears not to be unjustified (unbefugt) with regard to the personal name right, nor unfair if one would apply the Unfair Competition Act (what would not be appropriate as set out above) (see WIPO decision DCH2004-00016, Tourismusverein Lenzerheide – Valbella v. Max Bдr Ferienwohnungsvermietung).

 

7. Decision

For the above reasons, in accordance with Paragraphs 24 of the Rules of Procedure, the Complaint is denied.

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Dr. Thomas Legler
Sole Panelist

Dated: September 21, 2005