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WIPO Arbitration and Mediation Center

EXPERT DECISION

Sunrise Communications AG v. Wildvest LLC Domain Admin

Case No. DCH2009-0028

1. The Parties

The Claimant is Sunrise Communications AG of Zurich, Switzerland represented by KRSW WEINMANN.

The Respondent is Wildwest LLC of Charlestown, Saint Kitts and Nevis.

2. Domain Name

The dispute concerns the domain name <www-sunrise.ch>.

3. Procedural History

The Request was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 13, 2009. On October 14, 2009, the Center transmitted by email to SWITCH a request for verification in connection with the domain name at issue. On October 15, 2009, 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. 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 October 23, 2009. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was November 12, 2009. The Respondent has neither filed a Response nor expressed his readiness to participate in Conciliation in accordance with Paragraph 15(d) of the Rules of Procedure.

On November 16, 2009 the Center notified the Claimant accordingly, who on November 17, 2009 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 November 26, 2009 the Center appointed Christophe Imhoos as Expert in this case. The Expert finds that it was properly appointed. In accordance with Rules of Procedure, paragraph 4, the above Expert has declared his independence of the parties.

4. Factual Background

The Claimant provides communications services, i.e. Internet and telecommunication services, in particular sales and distribution of mobile phones under the name of "Sunrise" in Switzerland.

The Claimant holds 70 trademarks with the name SUNRISE in Switzerland (SUNRISE, SUNRISE INTERNET SERVICES, SUNRISE FREE SURF, SUNRISE SWISS, SUNRISE CALL, etc.). The protected goods and services include the classes 9 and 16 for goods, 35-38 and 41-42 for services (Annexes B-G to the Request). The wordmark SUNRISE has protected in Switzerland since 1997.

The Claimant is one of the leading providers of telecommunication services in Switzerland. It is the holder of the domain name <sunrise.ch> (Annex H to the Request).

The Respondent is a legal entity registered in Saint Kitts and Nevis.

The domain name at stake was registered by the Respondent on May 24, 2007.

5. Parties' Contentions

A. Claimant

The Claimant argues as follows:

(i) The Claimant has rights in the distinctive sign SUNRISE under Swiss law:

- according to firm names protection pursuant to Articles 956 of the Swiss Code of Obligations ("CO"), especially in respect of Sunrise Communications AG and Sunrise Internet Services AG (Annexes L-M to the Request);

- according to trademark protection pursuant to Articles 3 and 13 of the Swiss Trademark Act ("TMA"; Annexes C-G to the Request);

- according to the protection set out in Articles 2 and 3(d) of the Swiss Unfair Competition Act ("UCA").

The Claimant further contends that it holds a right to a famous trademark for SUNRISE pursuant to Article 15 TMA.

In addition, the Claimant submits that the Respondent has no rights in the SUNRISE sign. Like some other similar domain name dispute cases (i.e. Raiffeisen Schweiz Genossenschaft v. Wildvest LLC, WIPO Case No. DCH2008-0004 and AutoScout24 GmbH, Scout24 Schweiz AG, T-Online.at Internet Service GmbH v. Wildvest LLC, WIPO Case No. DCH2008-0025), the Respondent has not replied to the Request, hiding behind an offshore entity and being fully aware of its unlawful conduct.

The disputed domain name <www-sunrise.ch> combining the generic element "www" and the distinctive trademark SUNRISE of the Claimant constitutes an attempt of taking an unfair advantage of the said trademark under the UCA.

The Claimant considers that the Respondent, that labels itself as "Internet addicted Investor owning 250 domain names" (Annex I to the Request), is a "domain grabber" and "domain parker". For the Claimant, the Respondent, in displaying on the related website the same goods and services of the Claimant (Annex K to the Request), intends to gain profit out of the herewith generated traffic; such behavior infringes the trademarks rights of the Claimant and constitutes an act of unfair competition; moreover, in listing content specifically found on websites of telecommunication providers like the Claimant, the Respondent misguides Swiss customers and generates the risk of phishing or other violations of user data (Annex K to the Request).

(ii) The registration and/or use of the domain name at issue infringe the Claimant's right in a distinctive sign SUNRISE under the laws of Switzerland:

by using a confusingly similar domain name to the Claimant's company name;

for having in the past already been ordered to transfer the domain names in question to the Claimants in related domain name proceedings (Raiffeisen Schweiz Genossenschaft v. Wildvest LLC, and AutoScout24 GmbH, Scout24 Schweiz AG, T-Online.at Internet Service GmbH v. Wildvest LLC, supra ).

On the basis of the aforementioned grounds, the Claimant requests the transfer in its favor of the domain name <www-sunrise.ch>.

B. Respondent

The Respondent did neither file a Response to the Claimant's Request nor in any other manner reply to the Claimant's contentions.

6. Discussion and Findings

Paragraph 24 of the Rules provides that:

(a) The Expert shall decide on the request on the basis of the pleadings of both parties and the submitted documents in conformity with these Rules.

(b) The Expert may only order the deletion or transfer of the domain name, depending on the remedy requested in the request, or reject the request.

(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 law of Switzerland or Liechtenstein.

(d) In particular, 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.

As a result of the repeated reference to "clarity" in the above-mentioned provision, the right invoked by the Claimant must be unequivocal and the evidence of confusion or other infringement quite obvious to lead to a transfer or deletion of the disputed domain names. Doubt must benefit the Respondent (I-D Media AG v. Id-Média Sà rl, WIPO Case No. DCH2005-0018).

Paragraph 23 of the Rules also provides that if a party, without due cause, fails to comply with the time periods laid down in the Rules, the Expert shall decide on the request on the basis of the case file and that if one party, without due cause fails to comply with a provision of the said Rules, the Expert may draw such inferences therefrom as he considers appropriate.

A. The Claimant has a right in a distinctive sign.

The Claimant has proved the ownership and registration of the trademark SUNRISE and other related names (see Annexes C to G to the Request). The Expert holds therefore that Claimant established its exclusive right in its distinctive sign in Switzerland.

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

The Claimant is the holder of the registered trademark SUNRISE. The domain name in dispute combines the prefix "www" and the name SUNRISE. The name SUNRISE is the most distinctive part of the said domain name and of the Claimant's trademark. The addition of the prefix "www" does not render the disputed domain name significantly different from Complainant's SUNRISE trademark. Hence, the domain name is <www-sunrise.ch> is at least confusingly similar to the Claimant's trademark; such conduct may also constitute typosquatting which would additionally constitute bad faith and a breach of Article 2 UCA (see, e.g., YouTube, LLC v. Matthias Moench, WIPO Case No. DCH2007-0010).

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 (ATF 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 (ATF 128 III 401, 402, <luzern.ch>). The Swiss Federal Supreme Court has held that content of a website operated under a domain name must be taken into account when examining the likelihood of confusion (see sic! 2005, p. 283 <riesen.ch>). It follows that, in an assessment of the risks of confusion under the Swiss TMA, both the degree of similarity of the signs as well as the similarity of the respective goods and/or services may be taken into account. The two elements are interrelated, i.e., the more similar the goods and/or services are, the more distinguishable the respective signs must be, and vice versa (Unigestion Holding S.A. v. ITCG s.c. W. Drewniak, M. Olczykowski, WIPO Case No. DCH2005-0013; Smoby Suisse Sà rl and Smoby S.A. v. Velos Schrade, Inhaber Fredy Zaugg, WIPO Case No. DCH2007-0006).

The holder of a company name may seek protection under the UCA, especially when the circumstances in question are covered by the specific purposes and scope of the UCA. Under Article 3(d) UCA, anyone taking measures aimed at causing confusion with products, works, services or enterprise of a product or service provider, is acting unfairly. Under Article 2 UCA, the protection may be extended to imitations not falling under Article 3(d) UCA, provided specific additional circumstances show the unfairness of the activities (Zurich Insurance Company, Vita Lebensversicherungs-Gesellschaft v. Roberto Vitalini, WIPO Case No. DCH2005-0012).

The domain name <www-sunrise.ch> is no doubt confusingly similar to the Claimant's Company name and trademark SUNRISE. When registering such a domain name the Respondent created a likelihood of confusion to the effect that the Internet users are likely to assume a connection between the Respondent's website and the Claimant's trademark and protected products and services (see spec. Annex K to the Request). The Respondent appears to be trying to take advantage of the Claimant's trademark and related products and services and such conduct violates the Claimant's right in its distinctive sign under Art 3(d) UCA. Moreover, the Expert is also satisfied from the Claimant's submissions (see spec. Annex K to the Request) that the Respondent's activities amount to unfair and unlawful practices, as described above, within the meaning of Article 2 UCA, as held above.

Hence, the Respondent's infringement of the Claimant's rights under Articles 2 and 3(d) UCA clearly justifies the transfer of the domain name <www-sunrise.ch> to the Claimant.

The Expert finds that the Claimant has thus met its burden of proof under the Rules, paragraph 24(d) (ii) and (iii).

7. Expert Decision

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

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Christophe Imhoos
Expert

Dated: December 9, 2009