WIPO Arbitration and Mediation Center

EXPERT DECISION

Academia Sprach- und Lernzentrum Basel AG v. academiesuisse, Demourian Achille

Case No. DCH2012-0007

1. The Parties

The Claimant is Academia Sprach- und Lernzentrum Basel AG of Basel, Switzerland, internally represented.

The Respondent is academiesuisse, Demourian Achille, of Geneva, Switzerland, internally represented.

2. Domain Name

The disputed domain name <academia.ch> (“Domain Name”) is registered with SWITCH in Zurich, Switzerland.

3. Procedural History

The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2012. On March 27, 2012, the Center transmitted by email to SWITCH, the “.ch” and “.li” registry, a request for verification in connection with the Domain Name. On March 28, 2012, 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 April 11, 2012. 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 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 April 13, 2012. Pursuant to paragraph 15(a) of the Rules of Procedure, the due date for the Response was May 3, 2012, which was extended by the Center, following a request of the Respondent, to May 8, 2012.

The Respondent filed with the Center a Response on May 8, 2012, in which it expressed its unwillingness to participate in a Conciliation procedure in accordance with paragraph 15(d) of the Rules of Procedure.

On May 9, 2012, the Center notified the Claimant accordingly, which on May 16, 2012, 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 June 13, 2012, the Center appointed Michael A.R. Bernasconi as Expert in this case. The Expert finds that he was properly appointed. In accordance with the Rules of Procedure, paragraph 4, the Expert has declared his independence of the parties.

4. Language of the proceedings

Paragraph 7(a) of the Rules of Procedure provides:

“The proceedings shall be conducted in the language of the Registration agreement, without prejudice to the authority of the Dispute resolution service provider, a Conciliator or an Expert, exceptionally to determine otherwise on application by one or both parties or at their own discretion in view of the circumstances of the Dispute resolution proceedings. The language of the Registration agreement may be determined from the Whois service of the Registry.”

SWITCH informed the Center by email dated March 28, 2012, that English was the language of the Registration agreement. While the Claimant submitted its Request in English as well as in German, without explicitly demanding a specific language for the proceedings, the Respondent remained silent with respect to the language of the proceedings, but filed its Response in English. Furthermore, there are no circumstances which would militate for a particular language respectively against English as the language of the proceedings at hand. Thus, the Expert determines that English shall be the language of the proceedings and that the decision is therefore rendered in English.

5. Factual Background

The Claimant is a language and study centre with different locations in Basel, Lucerne, Visp and Zurich.

The Claimant was entered in the corporate registry of Basel-Stadt on July 7, 2005. It has registered several domain names with SWITCH, such as <academia-basel.ch>, <academia-luzern.ch> or <academia-wallis.ch>.

The Claimant applied for the registration of the word trademark ACADEMIA SPRACH- UND LERNZENTRUM and the combined word and figurative trademark ACADEMIA on November 4, 2011, each for the class 41. The requests for the respective trademarks are still pending (status July 10, 2012).

The Respondent has registered the Domain Name on July 13, 2003.

6. Parties’ Contentions

A. Claimant

The Claimant requests the transfer of the Domain Name. It asserts that it has obtained legal protection for the combined word and figurative trademark ACADEMIA as well as for the word trademark ACADEMIA SPRACH- UND LERNZENTRUM and therefore has rights in a distinctive sign under the laws of Switzerland. The Claimant states that these rights are infringed by the Respondent: firstly, because there is a likelihood of confusion in the use of the Domain Name and secondly, because the Respondent does not need the Domain Name itself, while the Claimant faces substantial disadvantages for not being able to use the Domain Name.

B. Respondent

The Respondent argues that the Claimant’s applications for the registration of the said trademarks are still pending and that the word “academia” is generic and not specific to the Claimant’s alleged trademarks, which is why the Claimant has no rights in a distinctive sign under the laws of Switzerland. Furthermore, the Respondent maintains that, even if there would be a right of the Claimant in a distinctive sign under the laws of Switzerland, the Domain Name and/or its use does not infringe such right, as it was never used in a way that could harm the Claimant. In addition, the Respondent states that it is surprising that the Claimant did not check the availability of the Domain Name when choosing a business name for its entity in 2005. Moreover, the Respondent holds that there is no confusion possible between the Domain Name and “academia Sprach- und Lernzentrum Basel AG”, inter alia because the Respondent is specialized in the dissemination of academic works and the financing of research projects, while the Claimant represents a language school.

7. Discussion and Findings

According to paragraph 24(c) of the Rules of Procedure, “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 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 rights in a distinctive sign under the laws of Switzerland

Paragraph 24(a) of the Rules of Procedure states that

“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.”

That implies that the Expert solely takes into account the parties’ submissions for its decision and does not seek after exceeding information or further evidence.

The Claimant bases its allegation to have rights in a distinctive sign only on trademark law. Therefore, the Expert only examines whether the trademarks ACADEMIA (combined word and figurative trademark, Swissreg application No. 62409/2011, for class 41) and ACADEMIA SPRACH- UND LERNZENTRUM (word trademark, Swissreg application No. 62407/2011, for class 41) are owned by the Claimant or not. The Expert does not look for rights which the Claimant does not allege.

According to the case record before the Expert, the Claimant has a trademark application for registration of ACADEMIA and ACADEMIA SPRACH- UND LERNZENTRUM. However, contrary to the Claimant’s contention, the Claimant’s applications for the said trademarks are not granted, but still pending (status July 10, 2012). This means that the Claimant applied for the said trademarks before the Swiss Federal Institute for Intellectual Property, but they are not registered yet.

According to the Swiss Trademark Protection Act (“MSchG”), the first person to file for the trademark will be the owner of that trademark (“principle of priority”), but such trademark right will only vest at the time it is entered in the trademark register (articles 5 and 6 MSchG). Hence, the filing of the trademark does not administer the possibility to enforce the trademark (see Christoph Gasser, in: Michael Noth/Gregor Bühler/Florent Thouvenin [editors], Commentary on the Swiss Trademark Protection Act, article 5 MSchG N 12). Thus, it can be noted that under Swiss law, where the trademark is not registered, no trademark rights can be alleged yet (see also Prom Night Events v. YourFormal Pty Ltd / Your Formal Australia Pty Ltd, Samir Kapoor, WIPO Case No. D2011-1707). In this regard, the Swiss Federal Institute of Intellectual Property (“IPI”) states on its website:

“As soon as the correctly filled-out form is received by the Institute, your mark is under so-called provisional filing protection which lasts until it successfully passes the examination and is actually registered as a trademark. In cases of a trademark conflict, the decisive date is that of the application and not the actual registration.” (https://www.ige.ch/en/service/frequently-asked-questions/trademarks/filing-procedure.html, last visited July 10, 2012)

Further, it has to be noted that the Claimant applied for the registration of said trademarks on November 4, 2011, which means over six years after its registration in the commercial registry and more than eight years after the Respondent’s registration of the Domain Name. From this, the Expert finds that the Claimant was not in need of the requested trademarks and the Domain Name, assuming that it would have verified already at the time of the choice of its business name whether there was a possibility of obtaining a respective trademark or the Domain Name.

Finally, “academia” is a descriptive word. Hence, the protection of the alleged trademarks of the Claimant may be denied by the IPI on the ground that they constitute common property.

Consequently, given the above and on the basis of all evidence submitted by the parties, in the Expert’s view, the Claimant has failed to meet the first requirement of paragraph 24(d) of the Rules of Procedure and has failed to establish that it has rights in a distinctive sign under the laws of Switzerland.

B. The registration or use of the Domain Name constitutes a clear infringement of the Claimant’s rights

As the Claimant does not have any right in a distinctive sign (see above Section 7.A.), the Expert is not required to consider whether the registration or use of the Domain Name constitutes a clear infringement of the Claimant’s rights. Moreover, the Expert also does not have to examine whether the Respondent has conclusively pleaded and proven any relevant grounds for defence nor whether the infringement of the rights justifies the transfer of the Domain Name.

8. Expert Decision

For the above reasons, in accordance with paragraph 24 of the Rules of Procedure, the Expert decides that the Request is denied, without prejudice to the Claimant’s right to re-file a request once it obtains rights in a distinctive sign under Swiss law.

The Expert orders that the Domain Name <academia.ch> remains registered with the Respondent.

Michael A.R. Bernasconi
Expert
Dated: July 10, 2012