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WIPO Arbitration and Mediation Center



EXPERT DECISION



AutoScout24 GmbH, Scout24 Schweiz AG, T Online.at Internet Service GmbH

v. Wildvest LLC
Case No. DCH2008 0025

1. The Parties
The Claimants are AutoScout24 GmbH, of Munich, Germany; Scout24 Schweiz AG, of Flamatt, Switzerland; and T Online.at Internet Service GmbH, of Vienna, Austria.
The Respondent is Wildvest LLC, of Charlestown, Saint Kitts and Nevis.

2. Domain Name
The disputed 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 November 24, 2008. On November 26, 2008, the Center transmitted by email to SWITCH a request for verification in connection with the disputed Domain Name. On November 27, 2008, 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 December 3, 2008. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was December 23, 2008.
The Respondent has neither filed a Response nor expressed his readiness to participate in a Conciliation in accordance with Paragraph 15(d) of the Rules of Procedure.
On December 30, 2008, the Center notified the Claimant accordingly, who on January 5, 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 January 19, 2009, the Center appointed Philippe Gilliéron 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
AutoScout24 GmbH is the holder of several trademarks, including:
  The Swiss verbal trademark AUTOSCOUT (n° 547979), registered on May 30, 2006 under classes 12, 35 and 36 of the Nice Classification;

  The Swiss verbal trademark AUTOSCOUT24 (n° 547980), registered on May 30, 2006 under classes 12, 35 and 36 of the Nice Classification.


Scout24 Schweiz AG was incorporated under the laws of Switzerland and registered under this name on May 5, 1997. Scout24 Schweiz AG also holds the domain name .
T Online.at Internet Service GmbH is the holder of several trademarks, including:
  The Swiss verbal trademark Scout24 Market (n° 480283), registered on September 7, 2000 under classes 16, 35, 38 and 42 of the Nice Classification;

  The Swiss verbal trademark Scout Market (n° 480284), registered on September 7, 2000 under classes 16, 35, 38 and 42 of the Nice Classification;

  The Swiss verbal trademark Scout 24 (n° 552203), registered on August 2, 2006 under classes 35, 36, 38, 39, 42, 43 and 44 of the Nice Classification.
The Respondent registered the Domain Name on May 24, 2007.

5. Parties’ Contentions
A. Claimant
The Claimants first contend that they all belong to the same corporate group.
They then assert that the trademark AUTOSCOUT24 is a well known trademark based upon a survey conducted by Demoscope. Considering the similarity of services provided by the parties and the similarity of their signs, the Claimants affirm that there exists a likelihood of confusion between the Domain Name and the different trademarks owned by AutoScout24 GmbH, respectively T Online.at Internet Service GmbH.
The Claimants finally allege without in depth analysis that infringes upon Scout24 Schweiz AG’s corporate name.
B. Respondent
The Respondent did not reply to the Claimant’s contentions.

6. Discussion and Findings
Paragraph 24(a) of the Rules of Procedure instructs the Expert to “[…] decide on the request on the basis of the pleadings of both parties and the submitted documents in conformity with these Rules of procedure”.
In view of the Respondent’s failure to submit a Response, the Expert shall decide this administrative proceeding on the basis of the Request, paragraph 23(a) of the Rules of Procedure.
According to paragraph 24(c) of the Rules of Procedure, “[T]he 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”. Paragraph 24(d) of the Rules of Procedure further adds that “[I]n 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”.

A. The Claimant has a right in a distinctive sign

The evidence submitted to the Expert proves that:


  AutoScout24 GmbH in particular owns the Swiss verbal trademarks AUTOSCOUT and AUTOSCOUT24;

  Scout24 Schweiz AG has exclusive rights in its corporate name, according to Article 956 of the Swiss Code of Obligations;

  T Online.at Internet Service GmbH finally owns several Swiss verbal trademarks including SCOUT 24, SCOUT MARKET as well as SCOUT24 MARKET.
Considering what precedes, the Expert holds that the Claimants have established rights in distinctive signs in Switzerland.

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

The Complaint requests the transfer of in favor of Scout Schweiz AG.


The first question to address in the present case consists of knowing whether Scout24 Schweiz AG can invoke the trademarks held by AutoScout24 GmbH and T Online.at Internet Service GmbH in its favor.
a) Trademarks
The Claimants assert in their Complaint that “[t]he filing of a common request is justified because claimants are all member of an affiliated corporate group”. The Claimants thus seem to believe that their affiliation to the same corporate group would entitle the affiliated members to invoke the trademarks held by the different members. The Expert cannot accept this assertion for two reasons:
First of all, paragraph 24(a) of the Rules of Procedure instructs the Expert to “[…] decide on the request on the basis of the pleadings of both parties and the submitted documents in conformity with these Rules of procedure”. In the present case, the Claimants do not bring any evidence that would demonstrate to this Expert their affiliation to the same corporate group. The Expert is of the opinion that the mere allegation of one party cannot be taken as granted in the absence of any evidence. Such an acceptance would amount to a shift of the burden of proof and leave it up for the Respondent to prove that the Claimants do not belong to the same corporate group. One can however not see why such a shift would be justified. The Respondent’s default is no reason for such an alleviation, and paragraph 23(a) of the Rules of Procedure, which instructs the Expert to decide “on the request on the basis of the case file” in that case, does not command such a shift. As a consequence, this allegation will not be considered decisive in the present case.
Secondly, the holders of trademarks have the exclusive rights to decide when, how and by whom their trademarks will be used. The Claimants however bring evidence that convinces the Expert that AutoScout24 or T Online.at Internet Service GmbH would have licensed or permitted Scout24 Schweiz AG to use their trademarks in any way. It is true that both Swiss scholars and the case law agree that an implied consent has to be admitted within a corporate group (see: Meier, L’obligation d’usage en droit des marques, Lausanne 2005, p. 104; David, MSchG, 2nd ed., Basel 1999, Art. 11 N. 23; Willi, MSchG, Zurich 2002, Art. 11 N. 60. For the case law: Commerce Court of Berne, sic! 2008 901 N. 19; Administrative Federal Supreme Court, sic! 2008 638 N. 5). The Claimants however have to bear the consequences of their own omissions. Considering the fact that no evidence was submitted to prove their belonging to the same group, a license or an express consent to use AutoScout24 or T Online.at Internet Service GmbH’s trademarks would have had to be proved in another way. Absent such evidence, the Expert considers that Scout24 Schweiz AG cannot invoke these trademarks in its favor.
Considering that Scout24 Schweiz AG cannot dispositively invoke AutoScout24 or T Online.at Internet Service GmbH’s trademarks in its favor to prevail in this case, the Expert will now turn to the possible protection conferred to the Claimant’s corporate name to examine whether it can prevail under this legal ground.
b) Corporate name
As a registered company, Scout24 Schweiz AG enjoys the protection granted by Article 956 (2) of the Swiss Code of Obligations. According to this provision, anyone who suffers a prejudice due to the illegitimate usage of its corporate name may require an injunction from the Court to cease such usage.
Article 956(2) of the Swiss Code of Obligations can however only be invoked against the usage of a distinctive sign as a corporate name, i.e. as a sign used to identify a corporation rather than its products or services (Gilliéron, Les divers régimes de protection des signes distinctifs et leurs rapports avec le droit des marques, Berne 2000, p. 112 N. 90; Dessemontet, La propriété intellectuelle, Lausanne 2000, p. 292 N. 619; Joller, Die Verwechslungsgefahr im Kennzeichenrecht, Berne 2000, p. 80 81 as well as p. 259; Widmer, Zur Methodik der Beurteilung von Firmenkollisionen, sic! 2009 3, 4. For the case law, see for instance: BGE 107 II 356 N. 3).
One question therefore becomes whether is used as a corporate name to identify the entity behind the website, or as a trademark that would enable users to identify products or services. The usage of a domain name as a corporate name rather than as an identifier of products or services is not excluded and will depend upon the circumstances; such in particular would be the case for famous entities on the web such as Amazon, eBay or Google. The Swiss case law already had the opportunity to apply Article 956 of the Swiss Code of Obligations against domain name (see: BGE 125 III 191; District Court of Lausanne, sic! 2002 55). This however will not always be the case, and circumstances will have to be appraised on a case by case basis.
In the present case, is placed on a parking website that generate click through advertising payments. The links provided on the website undoubtedly compete with Scout24 Schweiz AG’s corporate goal, which consists of offering a platform that enables users to exchange their goods or services, in particular in the automobile industry. The Expert however is of the opinion that will more likely create a likelihood of confusion with the domain name and the related trademark rather than with Scout24 Schweiz AG. This belief is confirmed by the survey provided by the Claimants, according to which more than a third of the Swiss population would spontaneously refer to as the website to go to for automobile auctions, i.e. as an identifier of services rather than a corporate entity. Consequently, the Expert considers that, based upon all the circumstances of the present case and the evidence submitted, Article 956 of the Swiss Code of Obligations cannot of itself determine the outcome in the present case.
While the Claimants solely base their claim upon trademarks’ and corporate name’s exclusive rights, they surprisingly omit to invoke the Swiss Unfair Competition Act, more particularly Articles 2 and 3(1) (d) of the Act, which appear to be the most relevant provisions in the present case. Considering however that the Expert has to take into account the applicable legal provisions ex officio, these provisions will now be put under scrutiny.
c) Unfair Competition
The Swiss Supreme Court held that domain names may be regarded as distinctive signs under Swiss competition law (BGE 126 III 245). Article 3(1)(d) of the Swiss Unfair Competition Act prohibits measures that are likely to cause confusion with products, works, services or the business of others. Unlike Article 956 of the Swiss Code of Obligations, Article 3(1)(d) of the Swiss Unfair Competition Act does not request the distinctive sign of one party to be used in a particular way to fall under the scope of this provision. The decisive criterion consists to know whether the Claimant’s sign had acquired its distinctiveness prior to its usage by a third party in the geographic area where that distinctiveness got acquired, and whether there exists a likelihood of confusion between that usage and the Claimant’s distinctive sign; the question to know whether the sign was used as a trademark or corporate name is thus irrelevant (see: Gilliéron, p. 49 et seq. N. 13 et seq.; Pedrazzini/Pedrazzini, Unlauterer Wettbewerb, 2nd ed., Berne 2002, N. 5.64 et seq.).
More generally, Article 2 of the Swiss Unfair Competition Act prohibits any type of behavior which leads to a distortion of competition on the Swiss market. Such in particular is the case of conducts which tend to exploit one’s reputation in its favor without necessary creating a likelihood of confusion stricto sensu.
In the present case, the Expert is convinced that the Respondent’s registration and usage of clearly demonstrates its bad faith and enable the application of both Art. 2 and 3(1) (d) for the following reasons:
First of all, by registering , the Respondent appears to be trying to attract Internet users that would mistakenly type a hyphen rather than a point between “www” and “autoscout24”. This conduct violates the Claimant’s right in the distinctive part of its corporate name, i.e. “Scout24”, whose distinctiveness undoubtedly got acquired prior to the Respondent’s domain name registration, as the former got registered on May 5, 1997, while the latter only got registered ten years later on May 24, 2007. The mere addition of the word “auto” to “Scout 24” does obviously not exclude the likelihood of confusion, as this element is a merely descriptive one which refers to the activities carried out by the Respondent; more than that, considering that Scout24 Schweiz AG develops its activities in the automobile sector as well, this addition on the contrary increases that risk. As held by prior Experts as well as Swiss scholars, such an exploitation amounts to an unfair behavior that falls both under Article 3(1)(d) as well as Article 2 of the Swiss Unfair Competition Act (Raiffeisen Schweiz Genossenschaft v. Wildvest LLC, WIPO Case DCH2008 0004; see also Pedrazzini/Pedrazzini, Unlauterer Wettbewerb, 2. Aufl. 2002, N 4.19). The fact AutoScout 24 GmbH or T Online.at Internet Service GmbH also have rights in this designation does obviously not prevent Scout24 Schweiz AG to exclude its own rights upon this sign.
Secondly, the Respondent’s website refers (as previously noted) to a portal website containing several links to direct competitors of Scout24 Schweiz AG in the automobile sector. The Expert further infers that the Respondent is benefiting from this confusion by receiving “click through” commissions in accordance with conventional practice on the Internet when customers reach a site through a link on a portal. The question is whether the Respondent deliberately chose these links or whether they were automatically generated does not need to be solved. Particularly, in circumstances where a respondent does not disclose the exact manner in the domain name parking service web page has been set up and does not disclose exactly what keywords it has chosen, the Expert considers that it is entitled to infer that the respondent had some influence upon the sponsored link selection process. As holder of the website, the Respondent is responsible for its content and has to take appropriate measure to make sure that its website will not infringe upon third parties’ rights. Considering that the Respondent has to be held liable for its website’s content, the Expert has no doubt that the Domain Name was registered and is being used in bad faith. As held under the UDRP, “where […] the links are apparently to competitive websites, especially when there is no indication that the links are not sponsored by or affiliated with the relevant trademark owner, such activity indicates bad faith under the Policy” (VeriSign, Inc. v. Domain Admin, E-Promote, WIPO Case D2006 1501). This wording also applies here; such a behavior obviously falls under Article 2 of the Swiss Unfair Competition Act, and thus infringes upon the Claimant’s rights.
Finally, the Respondent already got involved in a prior decision related to the Swiss bank Raiffeisen (Raiffeisen Schweiz Genossenschaft v. Wildvest LLC, WIPO Case DCH2008 0004), where it had registered that name using the same process, i.e. , and was requested to transfer the domain name in favor of the Claimant. It would thus appear that the Respondent got the idea to register Swiss trademarks and corporate names to divert consumers and generate click through advertising payments. Such a practice does obviously not amount to a legitimate interest, but on the contrary demonstrates the Respondent’s bad faith.
Considering the fact that the Respondent did not respond to the Request or respond otherwise, one cannot find any relevant ground for defense that would justify the registration of . Based upon the Request and the circumstances previously described, the Expert is convinced that fair competition has been distorted to the detriment of Scout24 Schweiz AG, due in part to the undue exploitation of the distinctive part of its corporate name “Scout24” to provide services that compete with its own services. Consequently, these infringements justify the transfer of the domain name in favor of Scout24 Schweiz AG.

7. Expert Decision
For the above reasons, in accordance with paragraph 24 of the Rules of Procedure, the Expert orders that the domain name be transferred to Scout24 Schweiz AG.

                                                             

Philippe Gilliéron



Expert
Dated: February 2, 2009

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