The Claimant is Attilio Meyer AG, Gossau, Switzerland, represented by E. Blum & Co., Switzerland.
The Respondent is Claro. S.C.R.L., Kennedy Investments Ltd., Guatemala City, Guatemala.
2. Domain Name
The disputed domain name <kickdown.ch> (the “Domain Name”) is registered with SWITCH (the “Registrar”).
3. Procedural History
The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2008 by email and on April 14, 2008 in hardcopy. The Request was submitted in German. On April 10, 2008, the Center transmitted by email to the Registrar a request for verification in connection with the domain name at issue. On April 10, 2008 the Registrar 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 Language of Proceeding is English, the Claimant filed a translation of the Request on April 25, 2008 by e-mail and on April 29, 2008 in hardcopy. The Center verified that the Request together with the translation of 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 May 6, 2008. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was May 26, 2008.
On May 27, 2008, the Center notified the Claimant accordingly who, on May 29, 2008, made an application for the continuation of the Dispute resolution proceedings as specified in paragraph 19 of the Rules of procedure and paid the required fees.
On June 11, 2008, the Center appointed Dr. Bernhard F. Meyer as Expert in this case. The Expert finds that it was properly appointed. In accordance with Rules of Procedure, paragraph 4, the Expert has declared his independence of the parties.
4. Factual Background
Claimant is providing printing services. Claimant is the owner of a Swiss trademark, registration No. 468 462 KICKDOWN, filed on July 29, 1999 and registered on January 12, 2000.
Respondent is a legal entity, domiciled in Guatemala.
The Domain Name <kickdown.ch> was registered on October 2, 2000.
5. Parties’ Contentions
A. Claimant
The Claimant objects to the use of the Domain Name by the Respondent and bases its Complaint on the following grounds:
(i) The Claimant has a right in a distinctive sign under the laws of Switzerland or Liechtenstein.
Claimant is the owner of the trademark KICKDOWN. Respondent’s Domain Name is identical with Claimant’s mark. In addition the mark of the Claimant is protected by the rules of the Federal Unfair Competition Act (art. 2 and art. 3 lit. d UCA).
(ii) The registration and/or use of the domain name at issue infringes Claimant’s right in a distinctive sign under the laws of Switzerland or Liechtenstein.
With view to the identical signs and identical respectively clearly similar products use and claim of the Domain Name leads to confusingly similarity according to art. 3 para. 1 lit. c of the Swiss Trademark Act (TMA) and discloses a clear and severe trademark infringement according to art. 13 para 2 lit. e TMA and as well an infringement of the Federal Act against Unfair Competition (art. 3 lit. d UCA).
B. Respondent
The Respondent did not reply to the Claimant’s contentions.
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 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 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. Does Claimant have a right in a distinctive sign?
The Claimant proved ownership of the trademark KICKDOWN (Exhibit No. 3 of the Request).
B. Does the registration or use of the Domain Name at issue constitute a clear infringement of the Claimant’s right?
A registered trademark allows the holder to invoke protection under the Swiss Trademark Act (“TMA”). In particular, the owner of a trademark is entitled to enjoin a third party from using the protected sign for the same goods and services which it is registered for (art. 13 para. 2 TMA in connection with art. 3 para. 1 lit. c TMA). The Domain Name at dispute is indeed identical with Claimant’s trademark. The Expert does not, however, consider this trademark to be famous in terms of Art. 15 TMA. This is important, because under Swiss trademark law only holders of famous trademarks, may prohibit to third parties the use of the mark with respect to any categories of goods or services as long as such use may weaken the mark’s overall recognition. The owner of an ordinary trademark may prohibit the use only with respect to the same class of goods or services for which it is registered (Art. 13 para. 1 TMA).
According to Exhibit 2 of the Complaint, the trademark KICKDOWN is registered for classes 6 (Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores) and 19 (Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal). None of such goods can be found on Respondent’s website. The website corresponding to the Domain Name is mostly filled with photos and links to third parties. Amongst those links it contains twice a link to the domain name <kickdown.li> displaying, amongst others, goods and objects that may fall into the above classes of goods. Those products seem to be largely identical, respectively similar, to those products Claimant’s trademark KICKDOWN was registered for.
However, those possibly infringing products are not offered on Respondent’s website but on the website of a third party. Nothing in the Complaint alleges or proves that such third party is in any way related to Respondent today or that Respondent obtain commercial gain from these particular links, the placement of two links (among many) leading to a third party’s website offering identical or similar goods to the products sold under Claimant’s trademark KICKDOWN is not sufficient to prove an infringement according to art. 13 TMA.
The Claimant also invokes an infringement of Claimant’s rights under Swiss Law against Unfair Competition (“UCA”). Nothing in the request shows that the Respondent actually tried to obstruct Claimant’s business by registering the Domain Name and the Claimant does not prove that Respondent registered the disputed Domain Name in bad faith. Moreover, the Respondent does not provide any printing services under the Domain Name, and, thus, is no competitor of the Claimant according to the UCA.
C. Conclusion
As a result of the above, it is not sufficiently proven that the registration or use of the domain name by Respondent constitutes a clear infringement of Claimant’s right in a distinctive sign. Likewise, it is not sufficiently established that Respondent took measures aimed at causing confusion with Claimant or its products or services, or otherwise acted unfairly.
7. Expert Decision
For the above reasons, the Request is denied.
Dr. Bernhard F. Meyer Expert
Dated: June 25, 2008
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