The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 22, 2005. On August 26, 2005, the Center transmitted by email to SWITCH a request for verification in connection with the domain names at issue. On August 26, 2005, 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, 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 29, 2005. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was September 18, 2005.

The Respondent filed a Response and expressed his readiness to participate in the conciliation on September 15, 2005. The Center appointed a conciliator in this matter on September 19, 2005.

In accordance with the Rules of Procedure, paragraph 17, the Conciliation conference took place by telephone on October 6, 2005. The Conciliation conference did not result in a settlement between the parties.

On October 12, 2005 the Center notified the Claimant accordingly, who on October 13, 2005 made an application for the continuation of the dispute resolution proceedings in accordance with paragraph 19 of the Rules of Procedure and paid the required fees.

On October 18, 2005 the Center appointed Pierre Kobel as Expert in this case. The Expert finds that he was properly constituted. In accordance with Rules of Procedure, paragraph 4, the Expert has declared his independence of the parties.

4. Factual Background

Claimant describes itself as a multimedia company offering e-marketing services, information technology solutions, business consulting services and integration of web-based marketing and IT solutions.

The Claimant holds the following trademarks:

- Swiss word trademark Nr. 455-628 “ID-MEDIA” registered on October 28, 1998, for services in classes 35, 38, 42;

- International trademark Nr 746 674 “I-D Media” registered on June 27, 2000, with extension for Switzerland for products and services in classes 16, 35, 38, 41, 42.

Respondent was incorporated on August 28, 2000, under the company name IDWeb Sàrl, subsequently modified into Id-Média Sàrl on March 29, 2004. Its purpose is to conceive and realize communication products and advertisement campaigns in the field of the Internet and multimedia.

Respondent registered the disputed domain names on February 14, and March 4, 2004.

5. Parties’ Contentions

A. Claimant

Claimant is seeking a transfer of the disputed domain names. Claimant contends that article 13 paragraphs 1 and 3 of the Swiss Trademark Act (hereafter the “TMA”) provides exclusive rights to the holder of a trademark to identify the goods or services for which the trademark has been registered. A valid trademark allows its holder to oppose the use of a similar or identical sign as a domain name. Claimant alleges that the registration of the disputed domain name is creating and maintaining a likelihood of confusion under article 13 pararaph 1 and 2 TMA and under article 3 lit. d of the Swiss Unfair Competition Act (hereafter the “UCA”). The disputed domain names are partly identical to the trademarks held by the Claimant. As a result, an Internet user is likely to assume a connection between the Respondent’s website and Claimant’s trademarks. According to Claimant, Respondent is trying to take advantage of the Claimant’s brand recognition.

B. Respondent

Respondent explains that it is a very small company active in the French-speaking part of Switzerland. Respondent alleges that it has changed its company name from “Id-web Sàrl” into “Id-média Sàrl” on March 29, 2004, to better reflect the scope of its activities. “id-média” (in small prints) corresponds to the name of the company which offers its services under different labels as evidenced by a small brochure displaying Respondent’s activities and main customers. Graphic design activities are offered under the name “id-print”, web sites design under the name “id-web”, conceptualization of software products under the name “id-soft” and consulting services under the name “id-consulting”.

Respondent alleges that the claimant already holds several domain names matching its activities, such as <www.idmedia.de>, <www.id-media.de>, and <www.idmedia.com>, whilst the domain name <www.id-media.com> was registered by a third company. As a result, Respondent believes that Claimant does not need the disputed domain names.

The Respondent points out to several companies already using id-media or idmedia domain names to identify themselves (<www.idmedia.fr>, <www.idmedia.be>, <www.idmedia.nl>, <www.idmedia.it>, and <www.idmedia.ru>).

Respondent also claims that Claimant’s trademark is not known in Switzerland. It is one company among many others active in the field of web design and multimedia in Switzerland. It does not have any branch or offices in Switzerland.

As a result there is no risk of confusion between the Claimant and the Respondent distinctive signs.

Furthermore, Respondent alleges that the parties’ rights into the name corresponding to the disputed domain names are in conflict. Claimant holds trademarks whereas the Respondent holds a valid company name under article 956 of the Swiss Code of Obligation (hereafter “CO”). Respondent contends that his right should prevail over the right of the Claimant. The disputed domain names match the company name under which Respondent is known in the French-speaking part of Switzerland. On the other hand Claimant already uses domain names <www.idmedia.de>, <www.id-media.de> and <www.idmedia.com>, and therefore does not have any interest in the disputed domain name. Respondent contests that Claimant is active in Switzerland. As a result the balance of interests should be in its favour. Another solution would cause great harm to the Respondent.

6. Discussion and Findings

According to paragraph 24 of the Rules of Procedure:

(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 of Procedure.

(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 rights invoked by Claimants must be unequivocal and the evidence of a confusion or other infringement quite obvious to lead to a transfer or deletion of the disputed domain names. Doubts must benefit the Respondent.

A. The Claimant has a right in a distinctive sign

Claimant’s trademarks were registered in 1998 and 2000, in Switzerland, for services covering publicity via electronic media, including the Internet, hosting of html-pages and preparation of Internet documents, production of computer programs. Their validity is not challenged by the Respondent.

However, Respondent holds exclusive rights in a distinctive sign under article 956 of the Swiss Code of Obligations (hereafter “CO”), i.e. its company name. Such company name was registered on March 29, 2004.

B. The registration or use of the Domain Names at issue constitutes a clear infringement of the Claimant’s right

Under article 13 paragraph 2 TMA, the holder of a trademark may prohibit third parties from using the sign for business stationery, publicity or in any other manner in business (lit. e). This allows the holder of a prior trademark to exclude usage of its trademark as a company name (See Message of the Swiss Federal Council dated November 21, 1990, N. 222.15, p. 25; ATF 120 II 144, 148), provided the material scope of the registered trademark is affected (Loewe Opta/Loewe SA, Tribunal cantonal of Fribourg dated April 23, 1997, sic! 5/1997 p. 488, 489).

On that basis, Claimant could in principle request a competent court to order Respondent to modify its company name or to refrain from using a company name confusingly similar to its trademark.

However, if the Respondent’s exclusive right is valid, the issue is the one of a conflict between equally valid exclusive rights in a distinctive sign. This is the issue dealt with in the Rytz case quoted by Respondent (ATF 125 III 91). In that case, the claimant’s trademark had been registered subsequently to the company name of the respondent. As a result, the principles set forth in the above-mentioned cases (ATF 120 II 144; Loewe sic! 5/1997 p. 488) could not apply and the claimant’s trademark could not prevail over the defendant’s company name on the basis of article 13 para 2 TMA. The more recent Maggi case decided by the Swiss Supreme Court on January 21, 2005, is another example of conflict between equally valid exclusive rights, this time in a personal name (art. 29 of the Swiss Civil Code) (Urteil vom 21. January 2005 in der Sache Rome Maggi gegen Société des produits Nestlé SA, 4C. 376/2004). The Swiss Supreme Court decision confirmed a prior Cantonal court decision ordering the transfer in favour of the claimant (see Société des Produits Nestlé SA v. Pro Fiducia TreuhandAG,WIPO Case No D2001-0916). In such cases, Swiss law does not define a preeminence of one type of distinctive sign over the others (ATF 125 III 91, 93; 4C. 376/2004, c.3.2) and does not prescribe one set of uniform rules to resolve such conflicts. The Court must weigh the opposing interests of the parties in the conflicting distinctive signs, in order to determine the fairest solution (ATF 125 III 91, 93). When carrying out such analysis, the courts always found in favour of the notorious prior trademark versus the subsequent and confusingly similar distinctive sign (4C. 376/2004, c. 3.2 in fine).

Within the framework of the Rules of Procedure, there can be a “clear infringement” of the Claimant’s rights in the sense of paragraph 24 of the Rules of Procedure only if the circumstances of the case and the evidence submitted show without doubt, that (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 Expert believes that the facts alleged by the Parties and the limitations on his powers do not allow any finding of a clear infringement of the Claimant’s rights.

Despite Claimant’s awareness of Respondent’s company name, the Request does not contain the relevant facts and does not deal with the above-mentioned legal issues.

On the first issue, that is the possible precedence of the trademark of Claimant over the company name of Respondent on the basis of the Loewe jurisprudence (sic! 5/1997 p. 488), the Request is silent. It does not contain any specific claim pertaining to the validity of the registered company name and does not contain any development on the issue itself. The legal argumentation contained in the Request is drafted as if Respondent's company name did not exist or matter. Given the limited contents of the Request, the Expert cannot assume that the Request contains an implicit claim challenging the validity of Respondent's company name. Furthermore, it is doubtful whether within the framework of the Rules of Procedure, the Expert has any power at all to decide upon such an issue. The Rules of Procedure allow a decision on the disputed domain name, not a decision affecting the validity of a registered distinctive sign.

As a result, the prevailing situation is one of two conflicting valid exclusive rights over a distinctive sign. The Request does not contain any argument showing that the balance of interests should tilt in favor of Claimant. The allegations contained in the Request, completed by the contents of the Response, actually tend to indicate that Claimant’s trademark is not notorious in Switzerland. Besides the original transfer of the trademark by “der 4Media Group AG” to Claimant in June 1999, Claimant has not filed any evidence of use of the trademark in Switzerland. The file does not display evidence of activity in Switzerland and Claimant does not seem to have any branch or subsidiary registered in Switzerland.

On the other hand, Respondent offered evidence of business relationships under the company name “Id-Média”, through a short marketing brochure displaying its company name in small prints “id-média” as well as examples of activities and customers.

Besides the absence of evidence of any actual use of the trademark in Switzerland, the file reveals that Claimant already uses several domain names matching its German and also international activities (<www.idmedia.de>, <www.idmedia.com>).

Last but not least, the Expert finds that the issues at stake would actually require a thorough examination of the facts through a full presentation of the evidence. This is not possible in the framework of a streamlined dispute resolution procedure. The Expert is supposed to order the transfer or the cancellation of the disputed domain name or to reject the claim, solely on the basis of (1) the limited written statements and documentary evidence filed by the parties and (2) a finding of a “clear infringement” of Claimant’s exclusive rights. In light of the necessarily streamlined procedure established by the Rules of Procedure, it is unlikely that a second exchange of briefs within the framework of article 21 lit. (c) would have substantially furthered the case. The parties were aware of the conflicting exclusive rights and have had an equal opportunity to present their case. It is worth noting in this respect that Claimant did not ask for the right to complete its Request after the conciliation.

In light of the above, the Expert finds that there is no clear infringement of Claimant’s exclusive rights.

7. Expert Decision

For the above reasons, the Request is denied.

Pierre Kobel
Expert

Date: November 4, 2005