The Claimant is easyGroup IP Licensing Ltd, London, United Kingdom, represented by Fontanet Jeandin & Hornung, Geneva, Switzerland.
The Respondent is Pascal de Vries, Basel, Switzerland, represented by Caro
Law Firm, Zurich, Switzerland.
2. Domain Name
The dispute concerns the domain name <easyhotel.ch>.
3. Procedural History
The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) via email on September 5, 2005, and by Post on September 7, 2005. The Center transmitted by email to SWITCH a request for verification in connection with the domain name at issue. On September 12, 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, 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 September 19, 2005. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was October 9, 2005.
The Respondent filed a Response on October 6, 2005. The Center appointed a conciliator, and, in accordance with the Rules of Procedure, paragraph 17, the Conciliation conference took place by telephone on November 2, 2005. The Conciliation conference did not result in a settlement between the parties.
The Claimant made in his request an application for the continuation of the Dispute resolution proceedings as specified in the Rules of Procedure, paragraph 12. The Claimant filed on November 7, 2005, a request for continuation of the proceedings in accordance with the Rules of Procedure, paragraph 19, and paid the required fees.
The Center appointed Theda König Horowicz as Expert
in this case on November 15, 2005. The Expert finds that it was properly constituted.
In accordance with Rules of Procedure, paragraph 4, the Expert has declared
his independence of the parties.
4. Factual Background
The Claimant is part of the easyGroup of companies and holds in several countries domain names and trademarks relating to “easyHotel”.
The Claimant registered the domain names <easyhotels.ch> on October 10, 2004, <easyjethotel.ch> on August 25, 2005, and <easyjethotels.ch> on October 20, 2004. All the said names are currently linked to the website “www.easyhotel.com” on which customers can book rooms in hotels belonging to the easyGroup.
The Respondent is member of the board of the Swiss Company Dexion AG, Basel, Switzerland, which is active in the field of IT services.
The Respondent registered the domain name at issue on June 11, 2005 which is linked to a website promoting the IT services of Dexion AG for hotels. Dexion AG applied for the Swiss trademark EASYHOTEL on June 23, 2005, in international classes 38 and 42. The trademark has been registered by the Swiss Trademark Office on September 5, 2005 and published on September 20, 2005.
On June 24, 2005, the easyHotel Basel sent a warning
letter to the Respondent asking for the transfer of the domain name <easyhotel.ch>.
5. Parties’ Contentions
A. Claimant
The Claimant alleges to have rights in the name “easyHotel” as he owns several domain names and trademarks comprising the said name, notably in Switzerland.
The Claimant further alleges that the domain name at issue is identical to his domain names and trademarks thus creating a confusion for the customers in violation of articles 3 letter d) and 2 of the Swiss Law on the Unfair Competition.
The Claimant also considers that the registration of the domain name at issue infringes article 13 paragraph 1 of the Swiss Trademark Law.
B. Respondent
The Respondent states that only the Swiss intellectual property rights of the Claimant have to be taken into consideration and that the “.ch” domain names owned by the Claimant do not constitute a legitimate title under the laws of Switzerland.
The Respondent also considers that the Claimant failed to submit any legal titles evidencing his ownership over the Swiss trademarks “EASY HOTEL” and “EASYHOTEL”, in international class 43.
The Respondent further alleges that “easyhotel” cannot be considered as a well-known trademark in Switzerland and that he acted in good faith when registering the domain name at issue as he was at that time not aware of the opening of an easyHotel in Basel.
In addition, the Respondent indicates that his Company operates a different business that the Claimant and therefore appeals to a completely different clientele. A risk of confusion would thus be excluded.
He finally adds that the Claimant tries to monopolize the name “easy” in the same way as a domain squatter by registering a high number of domain names including “easy” without using them. He also reproaches that the Claimant never tried to solve this matter amicably.
In conclusion, he requests the rejection of the claim.
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 law of Switzerland”.
The Rules of Procedure, paragraph 24 (d) precises that “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
The Claimant bases his request on several domain names and trademarks, notably on CTM, UK, US and Swiss trademarks.
As mentioned in the Rules of Procedure, paragraph 24 (c), only the rights owned under the laws of Switzerland are relevant for “.CH” disputes.
Consequently, the Expert will solely take into consideration the “.CH” domain names and Swiss trademarks invoked by the Claimant in his request.
Trademarks
The Claimant alleges to be the owner of the Swiss trademarks “EASY HOTEL” and “EASYHOTEL”, in international class 43.
In this regard, he provided a list of trademarks showing that he would have applied for the said trademarks this year, that is respectively on April 27, 2005 and June 1, 2005. Said list mentions that these applications would be pending.
The Expert finds that the list given by the Claimant does not constitute sufficient evidence: no certificate of application and/or registration has been enclosed with the request.
In addition, Article 5 of the Swiss Trademark Law provides that “trademark rights shall be generated on entry in the Register” which means that trademark rights are not existing on the sole basis of an application, but only on the basis of a registration.
Furthermore, the Claimant has not provided any evidence showing that his other foreign trademarks could benefit from a protection in Switzerland under Article 6bis of the Paris Convention.
Considering the above, the Expert considers that the Claimant has failed to prove that he has rights in Switzerland over the trademarks “EASY HOTEL” and “EASYHOTEL”.
Domain names
The Claimant indicates to be the owner of three “.CH” domain names, that is <easyhotels.ch>, <easyjethotel.ch> and <easyjethotels.ch>.
According to the Rules of Procedure, paragraph 1, a right in a distinctive sign “is 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 registered business name, a personal name, a trade mark, a geographical indication and the defensive rights devolving from the law on unfair competition.”
The Swiss Supreme Court has found that a domain name can in certain circumstances be considered as a distinctive sign (ATF 126 III 239).
The Claimant has shown that his “.CH” domain names are not only registered but also currently used in connection with an official website of the easyGroup.
The Expert is of the opinion that the first condition of the Rules of Procedure, paragraph 24 (c), may be fulfilled. However, in view of the findings under below, it is not necessary to conclude under this condition.
B. The registration or use of the Domain Name at issue constitutes a clear infringement of the Claimant’s right
As indicated above, the Claimant has failed to prove that he is the owner in Switzerland of a valid trademark registration for the name “easyhotel” and no rights can thus be invoked by him on the basis of the Swiss Trademark Law, in particular on Article 13, paragraph 1.
The question arises whether the registration and use of the domain name <easyhotel.ch> constitutes a clear infringement of the Swiss Unfair Competition Law which applies to domain names (ATF 126 III 239, 245), notably under Article 3, paragraph 1 d) and Article 2.
It is undisputed that the airline services provided by the easyGroup and the name “easyJet” are well-known in Switzerland.
However, the situation is - for the time being - different for “easyhotel”, notably as this hotel booking service has been launched only this year in Switzerland.
In this regard, the Claimant alleged that the Respondent tried profiting from the reputation of his “.CH” domain names comprising “easyhotel”, considering that the Respondent registered the domain name in dispute shortly after the launch of an easyHotel in Switzerland.
The Expert however finds that this allegation is not sufficient to conclude that the Respondent has violated the Swiss Unfair Competition Law.
Furthermore, the Claimant states that his domain names comprising “easyhotel” would have gained some reputation in Switzerland without however giving sufficient evidence in this regard, as requested by the Rules of Procedure, Paragraph 24 (d) i.
In addition, the Respondent has provided several relevant arguments of defence showing that he did not register and use the domain name <easyhotel.ch> in bad faith. In particular, the Respondent has shown that:
- Respondent did not only register <easyhotel.ch>, but his Company, Dexion AG, also uses it in connection with an active website;
- the website www.easyhotel.ch promotes the own services of the Respondent’s company Dexion AG and does not refer at all to the business of the Claimant or of one of its competitors;
- the content of the website www.easyhotel.ch is very different from the websites and from the ads of the Claimant who is notably known by the public for using the colours white and orange as well as a distinctive writing, particularly for the name “easy”;
- the services of both parties may be similar, but do present some differences (selling room services and accommodations, for the Claimant - versus - selling and installing software to businesses including hotels, for the Respondent);
- Respondent did not only register the domain name at issue, but his Company is also the owner of a Swiss trademark registration for EASYHOTEL, in international classes 38 and 42.
Considering the above, the Expert concludes that the
registration and use of the domain name in dispute does not clearly infringe
any rights held by the Claimant’s rights under Swiss law and does therefore
not justify the transfer of <easyhotel.ch> to the Claimant.
7. Expert Decision
For the above reasons, the Request is denied.
Theda König Horowicz
Expert
Date: December 2, 2005
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