WIPO Arbitration and Mediation Center
Mister Auto SAS v. Malkhaz Kapanadze
Case No. DCH2018-0013
1. The Parties
The Claimant is Mister Auto SAS of Villeurbanne, France, represented by Cairn Legal, Belgium.
The Respondent is Malkhaz Kapanadze of Tbilisi, Georgia.
2. Domain Name
The dispute concerns the domain name <misterauto.ch.
3. Procedural History
The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2018. On June 15, 2018, the Center transmitted by email to SWITCH, the “.ch” and “.li” registry, a request for verification in connection with the disputed domain name. On June 18, 2018, 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 July 2, 2018. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was July 22, 2018.
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 July 23, 2018 the Center notified the Claimant accordingly, who on July 26, 2018 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 August 10, 2018 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
The Claimant owns the international word trademark MISTER AUTO (International Registration (IR) No. 1062701) that was registered under classes 7, 11, 12 and 35 of the Nice Classification on October 7, 2010 and whose protection was extended to Switzerland on November 16, 2011.
The Claimant also owns several domain names under which it carries out its online activities of selling automobile components and accessories, such as <mister-auto.be>, <mister-auto.ch>, and <mister-auto.dk>.
The Respondent registered the disputed domain name on May 28, 2014. The domain name leads to a parking website which contains a selection of links to goods and services competing with the Claimant’s activities.
On December 22, 2016, the Claimant sent a cease and desist letter to the Respondent, drawing its attention upon its trademark rights and inviting him to transfer the disputed domain name along with <misterauto.dk> that had also been registered by the Respondent on March 28, 2014.
The Respondent did not respond to the cease and desist letter.
5. Parties’ Contentions
The Claimant argues that the disputed domain name clearly infringes upon its trademark rights. The disputed domain name is identical to its MISTER AUTO trademark. The Respondent does not have rights or legitimate interests in the disputed domain name. The disputed domain name leads to a parking website which aggregates links containing offers of competing products and services. Such a use cannot be considered a bona fide offering of goods and services and rather demonstrates an intent to sell the disputed domain name, thus a registration and use in bad faith.
The Respondent did not reply to the Claimant’s contentions.
6. Discussion and Findings
In accordance with paragraph 24(c) of the Rules of Procedure, the Expert shall grant the Request if the registration or use of the disputed 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 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 disputed domain name, depending on the remedy requested in the request.
A. The Claimant has a right in a distinctive sign
In the present case, the Claimant demonstrates to enjoy exclusive rights in MISTER AUTO as a trademark validly registered internationally on October 7, 2010 and whose protection was extended to Switzerland on November 16, 2011 (IR 1062701).
B. The registration or use of the domain name constitutes a clear infringement of the Claimant’s right
In the present case, the Expert has no difficulty in holding that the registration or use of the disputed domain name constitutes a clear infringement of this right.
The disputed domain name entirely captures the Claimant’s MISTER AUTO trademark without any further additional element. The exploitation of the website attached to the disputed domain name, which leads to a parking website aggregating links to offers of products and services identical or similar to the ones for which the Claimant’s above mentioned trademark was registered, clearly infringes Art. 13 of the Trademark Act. It further distorts the competition in an unfair manner, a behavior that will typically fall under Art. 2 of the Unfair Competition Act.
The Respondent, which did not take part in the proceedings, did not come forward with any explanation to rebut these findings and explain the reason why it would have chosen a domain name consisting of the Claimant’s trademark.
As a result, the overall circumstances of the case thus make it clear that the requirements of paragraph 24 of the Rules of Procedure have been fulfilled, and that both the registration and use of the disputed domain name clearly fall under Art. 13 of the Swiss Trademark Act and Art. 2 of the Swiss Unfair Competition Act.
7. Expert Decision
For the above reasons, in accordance with paragraph 24 of the Rules of Procedure, the Expert orders that the disputed domain name <misterauto.ch> be transferred to the Claimant.
Dated: August 16, 2018