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WIPO Arbitration and Mediation Center

 

EXPERT DECISION

Association Bosshard.ch v. VitalMedia Anstalt

Case No. DCH2006-0017

 

1. The Parties

The Claimant is Association Bosshard.Ch, Geneva, Switzerland.

The Respondent is VitalMedia Anstalt, Triesen, Liechtenstein, represented by Dr. P. Roth.

 

2. Domain Name

The dispute concerns the domain name <bosshard.ch>.

 

3. Procedural History

The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2006. On August 11, 2006, the Center transmitted by email to SWITCH a request for verification in connection with the domain name at issue. On August 16, 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. In response to a notification by the Center that the Request was administratively deficient, the Claimant filed an amendment to the Request on August 23, 2006. The Center verified that the Request together with the amendment to 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 August 24, 2006. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was September 13, 2006.

The Respondent filed a Response on September 11, 2006, and expressed his readiness to participate in the conciliation on September 13, 2006. In accordance with Rules of Procedure, paragraph 17, the Conciliation conference took place by telephone on October 4, 2006. The Conciliation conference did not result in a settlement between the parties.

On October 11, 2006, the Center notified the Claimant accordingly, who made an application for the continuation of the Dispute resolution proceedings in accordance with specified in paragraph 19 of the Rules of procedure and paid the required fees on the same date.

On October 18, 2006, the Center appointed Dr. B.F. Meyer-Hauser as Expert in this case. The Expert finds that it was properly constituted. In accordance with Rules of Procedure, paragraph 4, the above Expert has declared his independence of the parties.

The Expert notes that the Claimant has submitted an unsolicited Supplemental Filing on November 10, 2006. As the Expert deems itself well informed on the basis of the existing case file the Supplemental Filing will not be considered.

 

4. Factual Background

The Claimant is Association Bosshard.Ch, an association founded on June 15, 2006, according to articles 60 et seqq. of the Swiss Civil Code (hereafter CC). According to the association’s statutes, its purpose is to hold the domain <bosshard.ch> in order to provide persons with the surname “BOSSHARD” with an e-mail address consisting of their first name and the domain <bosshard.ch> (i.e. firstname@bosshard.ch). Furthermore, the website of the association is not to be used by one sole member exclusively. The domain name may be used to provide information of common interest to all members of the association (e.g. information concerning the history of the Bosshard family). In addition, it may be used to provide a hosting service for Internet sites related to the name Bosshard.

All persons called Bosshard can become a member of the association. The present members are: Michel Bosshard (president), Lupe Bosshard and Hйlиne Bosshard.

The Respondent and holder of the domain name <bosshard.ch> is VitalMedia Anstalt, a so-called “Anstalt” according to the laws of Liechtenstein. Its business purpose is to buy, administrate and sell all kinds of assets for its own account, to participate in and finance other companies as well as commercial and financial transactions related to the purpose of the company.

On June 20, 2006, the president of Association Bosshard.Ch, M. Bosshard, sent the Respondent a letter claiming that VitalMedia, by holding the domain name <bosshard.ch>, is infringing the Claimant’s rights in the name Bosshard. M. Bosshard requested the transfer of the domain name into the hands of the Association Bosshard.Ch. At the same time, he announced that in case the Respondent should not react, he would file a claim with the Center requesting the transfer of the domain name.

By letter of June 28, 2006, the Respondent answered the Claimant that, in its opinion, the Claimant did not have rights in the name Bosshard and that it would not proceed to a transfer of the domain name. However, should the Claimant remain interested in the domain name, it may address an offer to the Respondent. In its answer of June 29, 2006, the Claimant offered the Respondent CHF 500.00 for the domain name. No further correspondence followed until the Request was filed with the WIPO Arbitration and Mediation Center on August 10, 2006.

 

5. Parties’ Contentions

A. Claimant

When the Claimant tried to register the domain name <bosshard.ch> in June 2006, it appeared that Vitalmedia Anstalt was holding it. The Claimant contends that the domain name <bosshard.ch> is not being used actively. Users are immediately redirected to the Respondent’s Internet site <suche.ch>.

The Claimant alleges that it has a right to use its distinctive sign Bosshard under the laws of Switzerland or Liechstenstein and that the registration and/or use of the domain name <bosshard.ch> infringes the Claimant’s right. The Claimant asserts that it acquired legal status when the Association Bosshard.Ch was founded in June 2006, and, therefore, benefits from the protection of its personal name (article 29 CC) against any use by third parties of the distinctive element of its name. The Claimant alleges that article 29 CC does not only protect a person’s name but also names of associations. Consequently, Bosshard.Ch has a right to the protection of the distinctive element of its name, which is Bosshard.Ch.

Claimant maintains that Respondent is called Vitalmedia Anstalt, and that Respondent is not related to the name Bosshard, nor does it have anything to do with anything or anybody associated with the name Bosshard. Furthermore, the Respondent allegedly does not have any right in the distinctive sign Bosshard. Its sole interest in holding the domain name is, according to the Claimant, to sell it for profit.

Moreover, Claimant contends that Respondent’s use of the domain name has caused confusion with the association BOSSHARD.CH and thereby has caused damage to the Claimant. The Respondent has no legitimate interest in the domain name and is preventing the Claimant from making use of its distinctive sign.

B. Respondent

In its response, the Respondent contends that it registered the domain <bosshard.ch> on behalf of one of its clients, a company whose name includes the name Bosshard. For the sake of confidentiality, the client’s name allegedly can not be disclosed. The client is still in the process of establishing its business. The domain name has been registered in order to reserve it for future use. As the client’s homepage is said to be still under construction, a link to <suche.ch> was installed. The Respondent further states that the domain name will be transferred to the client after the conclusion of the above mentioned process.

Respondent contends that it is not acting in violation of any law. In its opinion, the “first come, first serve” rule applies in this case, which must lead to a dismissal of Claimant’s request.

 

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 if:

(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”.

The existence of a right in a distinctive sign

The Rules do not require Claimant to base its Request on a registered trademark; it is sufficient for Claimant, according to paragraph 24(c) of the Rules of Procedure, to prove a right in a distinctive sign. The Rules define “a right in a distinctive sign” in paragraph 1 as “any right recognised by the legal system devolving from the registration or use of a sign, which protects the holder of the right from infringement of his interests as the result of registration or use of an identical or similar sign by third parties, including, but not limited to, (…) the right in a personal name (…).”

Because domain names identify persons, products or services via the respective websites, the Swiss Federal Supreme Court recognized that they are comparable to personal names, business names and trademarks and can be regarded as distinctive signs (Kennzeichen; decision of the Swiss Federal Supreme Court [hereafter ATF] of May 2, 2000, <berneroberland.ch>, ATF 126 III 239, 244). If the domain name is identical with or confusingly similar to a protected name, business name or trademark, the judge may, under certain circumstances and after weighing the respective interests at issue, prohibit the use of the domain name (<maggi.com>, ATF of January 21, 2005, 4C.376/2004; ATF 128 III 353 consid. 4.3.2).

Company names registered in the commercial register are protected by article 956 of the Swiss Code of Obligations (hereafter CO). Furthermore, names registered in the trademark register are protected under article 13 of the Swiss Trademark Act. In addition, the holder of a valid trademark or company name may cumulatively seek protection under the Act against Unfair Competition if an infringement of its rights is caused by a competitor.

However, non-profit associations and foundations as well as other organisations pursuing a non-commercial purpose may not invoke the protection of their name under article 956 CO, nor do they benefit from the protection of the law against unfair competition. If they have no registered trademark, the only defence against an illegitimate use of their distinctive sign by third parties is by invoking the protection of the personal name under article 29 CC et seqq. (David/Reutter, Schweizerisches Werberecht, Schulthess 2001, p. 518).

The purpose of article 29 CC et seqq. is to individualise a person or organisation and to confer on that person or organisation the right to identify and distinguish itself by name or distinctive sign. If the holder of a domain name infringes such right, the impaired person or organisation may invoke three different remedies (individually or cumulatively): it may file (a) a request for an injunction, (b) a claim for damages, and/or (c) a claim for satisfaction. Nevertheless, all these remedies are only available upon showing that:

(i) the infringing domain name is identical or confusingly similar to that name,

(ii) the infringement causes an impairment of the affected person’s or organisation’s interests worthy of protection and

(iii) the holder of the domain name does not have a right in the said name.

Impairment of commercial interests is not required under article 29 CC, also non-commercial interests may be worthy of protection (R.H. Weber, e-Commerce und Recht, Schulthess 2001, p. 154). The test shall be applied on a case by case basis. A famous name, for example, generally constitutes an interest worthy of protection. The interest is to be evaluated by assessing expectations of an average internet user when searching for the said name on the internet (<maggi.com>, ATF of January 21, 2005, 4C.376/200; analogously <Der Neue Gotthard-Ring> ATF 90 II 461 p. 465;)

Case law of WIPO Domain Name Dispute Resolution panels follows a similar pattern: while the Policy and Rules for Uniform Domain Name Dispute Resolution (“UDRP”) do not specifically protect personal names, in certain situations where an unregistered personal name is being used for trade or commerce, the complainant may be able to establish common law trademark rights in the name. Reference can be made to the test required for the common law action of passing off. Personal names that have also been trademarked are sufficient to bring an action under the UDRP. However, the name in question should be actually used in trade or commerce and have acquired the requisite distinctiveness or secondary meaning in order to establish unregistered trademark rights. Merely having a famous name (such as a businessman or religious leader) is not necessarily sufficient to show unregistered trademark rights. (see “WIPO Overview of WIPO Panel Views on selected UDRP Questions” No. 1.6, www.wipo.int; WIPO Case No. D2000-0210, Julia Fiona Roberts v. Russell Boyd; WIPO Case No. D2000-0235, Jeanette Winterson v. Mark Hogarth; WIPO Case No. D2000-0581 Rita Rudner v. Internetco Corp.)

A civil court in Basel, Switzerland, has affirmed an impairment of the interest in a personal name according to article 29 CC in a case where a company used a highly uncommon surname as company name (David/Reutter, Schweizerisches Werberecht, Schulthess 2001, p. 518 citing ZivGer BS in BJM 1973 136: Crea).

In casu, the Claimant does not have a registered trademark of its distinctive sign BOSSHARD.CH (and, as an non-profit association, it cannot register a company name protected by the CO). Therefore, it’s only protection may potentially derive from the protection of the personal name under article 29 CC.

The domain name <bosshard.ch> is identical to Claimant’s distinctive sign. However, the Claimant only founded its association in June 2006. It is not famous or even known to the broader public. An average Internet user will by no means expect to reach the site of the association Bosshard when entering the name “bosshard” into a search engine. To the contrary, in view of the obvious usualness of the name “Bosshard”, it is to be expected that there are many registered business names and/or trademarks (known to the public) incorporating the component “bosshard”. Accordingly, the Claimant in these proceedings has not shown the requisite interest in that name such as would warrant in the Expert’s view being protected in the circumstances. Thus, the Expert finds that the Claimant does not benefit from article 29 CC. Accordingly, the Expert finds that the Respondent registered the domain name first and that the rule “first come, first serve” applies in this case.

It follows from the above that the Request must be denied.

 

7. Expert Decision

The Request is denied.

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Dr. Bernhard F. Meyer-Hauser
Expert

Dated: November 1, 2006