WIPO Arbitration and Mediation Center

EXPERT DECISION

Wilier Triestina S.p.A. v. Zytka Marzena

Case No. DCH2019-0006

1. The Parties

The Claimant is Wilier Triestina S.p.A., Italy, represented by Alberti Fontana Peron Cera, Italy.

The Respondent is Zytka Marzena, Poland.

2. Domain Name

The dispute concerns the following domain name <wilier.ch> (the “Disputed Domain Name”).

3. Procedural History

The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2019. On June 14, 2019, 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 17, 2019, 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. On June 21, 2019, SWITCH subsequently confirmed that English was the language of the registration agreement for the Disputed Domain Name. 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 June 24, 2019. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was July 14, 2019.

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 15, 2019, the Center notified the Claimant accordingly, who on July 16, 2019, requested the continuation of the proceedings in accordance with specified in paragraph 19 of the Rules of procedure and paid the required fees.

On July 23, 2019, the Center appointed Jacques de Werra 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 is an Italian company operating in the racing bicycle industry since 1906. Its company name “Wilier Triestina” is composed of the abbreviation “Wilier” which stands for “W Italia Libera and Redenta” and “Triestina” (referring to the Italian city of Trieste).

The Claimant owns numerous trademarks including the “Wilier” term (“the Trademark”), including the Swiss trademark WILIER TRIESTINA (figurative trademark), 452617 registered on July 1, 1998, for goods in class 12, and international trademark WILIER, 1394940 registered on February 6, 2018, for goods in classes 12, 18, and 25, covering various countries including Switzerland.

The Claimant operates online by various channels, including through the domain name <wilier.com> and the online shop <shop.wilier.it> which is visited by approximately 25,000 Internet users per month. The Claimant and the Trademark are well known in the bicycling industry; the Claimant has a sales network of approximately 1,500 stores across five continents.

The Respondent has registered the Disputed Domain Name on July 26, 2004. The Claimant learnt about the existence of the Disputed Domain Name in February 2019. The Disputed Domain Name is offered for sale on the “www.sedo.com” platform for EUR 2,000.

5. Parties’ Contentions

A. Claimant

The Claimant claims in essence that the Respondent engages in the practice of cybersquatting, in the sense that it engages in the activity of registering domain names corresponding to third-party trademarks with a view of making a profit on the transfer of the domain to the party concerned. The Respondent is not the holder of any trademark reflecting the Disputed Domain Name and is not conducting any legitimate business activity with the Disputed Domain Name. The Claimant has not licensed or otherwise authorized the Respondent to register the Disputed Domain Name which reflects the Trademark.

On this basis, the Claimant alleges in essence that the Respondent’s registration and use of the Disputed Domain Name infringes Claimant’s rights in a distinctive sign under the laws of Switzerland. The Claimant specifically invokes a violation of article 13 of the Swiss Trademark Act (“STA”), as well as article 3 and art. 2 of the Swiss Unfair Competition Act (“SUCA”).

B. Respondent

The Respondent did not reply to the Claimant’s contentions.

6. Discussion and Findings

A. Decision on the merits

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 or Liechtenstein”.

The Rules of Procedure, paragraph 24(d) specify that “a clear infringement of an intellectual property right exists when:

- 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

- the respondent has not conclusively pleaded and proven any relevant grounds for defence; and

- the infringement of the right justifies the transfer or deletion of the domain name, depending on the remedy requested in the request”.

B. The Claimant has a right in a distinctive sign

The Claimant has established its ownership of the Trademark protected in Switzerland, incorporating the term “Wilier” which corresponds to the Disputed Domain Name.

The Expert holds therefore that Claimant established its exclusive right in its distinctive sign (i.e. the Trademark) in Switzerland. The fact that some of the trademarks owned by the Claimant contain other words and/or figurative elements in addition to the “Wilier” term (e.g. “Triestina”) does not prevent this finding.

C. The registration or use of the domain name constitutes a clear infringement of the Claimant’s right

The Claimant alleges that the registration or use of the Disputed Domain Name constitutes a violation of the Trademark within the meaning of article 13 of the STA on the ground that the Disputed Domain Name is identical or at least confusingly similar with the Trademark.

However, the protection granted under article 13 STA further presupposes that the Trademark shall be used (without authorization) in connection with identical or similar goods or services which can generate a risk of confusion. In this case, the Disputed Domain Name is not actively used (it is only offered for sale) and is consequently not used in connection with goods or services that are identical or similar to those claimed in the Trademark. On this basis, the Claimant cannot benefit from the protection of article 13 STA.

The Claimant alleges that the Respondent has committed a violation of the SUCA, and specifically of article 3 SUCA (the Expert notes that article 3 lit. d SUCA relates to the creation of a risk of confusion) and of the general clause of article 2 SUCA.

The Claimant cannot successfully invoke a violation of article 3 lit. d SUCA because the mere registration of a domain name does not create a risk of confusion unless concrete measures have been taken to actively use the Disputed Domain Name. In this case, the Disputed Domain Name is not actively used and is only offered for sale so that article 3 lit. d SUCA cannot apply. See e.g. Hotel Appenzell v. “XY”, WIPO Case No. DCH2015-0013.

It is however established that the mere registration of a domain name and passive use of a domain name can be considered as unfair pursuant to article 2 SUCA if such registration is made in order to take advantage of the reputation of a third-party sign or if the registration of the domain name is carried out without objectively protectable interests and is thus made clearly at the expense of a third party. See Bewital Holding GmbH & Co. KG v. Roman Willi, WIPO Case No. DCH2018-0008; LLOYD Shoes GmbH v. CSI Group GmbH / Chris Köppel, WIPO Case No. DCH2015-0012.

The Expert finds that the registration by the Respondent of the Disputed Domain Name which contains the distinctive sign WILIER which corresponds to the Trademark was carried out without objectively protectable interests of the Respondent and was made at the expense of the Claimant. In this context, the Expert notes that the Claimant has indicated that the Respondent was a party to a UDRP proceeding relating to the domain name <campagnoloshop.com> which corresponds to a well-established Italian brand in the bicycling industry in which the panel ordered the transfer of the domain name to the complainant. See Campagnolo S.r.l. v. Marzena Zytka, WIPO Case No. D2008-1037. In view of the identity of industry (i.e. bicycling industry) which cannot be considered as a mere coincidence, the Expert finds this fact of particular relevance.

The Respondent, although given the opportunity, has not participated in the proceedings and has not provided any explanations that could potentially have justified the registration or use of the Disputed Domain Name. On this basis, the Expert finds that the Respondent has not conclusively pleaded and proven any relevant grounds for defence (pursuant to paragraph 24(d)(ii) of the Rules of Procedure).

It is established that a violation of article 2 SUCA resulting from the unfair registration of a domain name can justify the transfer of such domain name. See Bewital Holding GmbH & Co. KG v. Roman Willi, WIPO Case No. DCH2018-0008. In this case, the violation of article 2 SUCA resulting from the registration of the Disputed Domain Name by the Respondent constitutes an infringement of the right which justifies the transfer of the Disputed Domain Name in accordance with Paragraph 24(d)(iii) of the Rules of procedure, pursuant to the remedy requested by the Claimant.

On this basis, the Expert finds that the registration of the Disputed Domain Name constitutes a clear infringement of the Claimant’s right which justifies the transfer of the Disputed Domain Name to the Claimant.

The Expert notes that many years have elapsed since the registration of the Disputed Domain Name by the Respondent in 2004 which consequently raises the question of the potential objection of laches (péremption; Verwirkung) which must be analyzed even if it has not been raised by the Parties (here by the Respondent). See S. Brauchbar, Die Verwirkung im Kennzeichenrecht; unter Berücksichtigung der Regelung in der Europäischen Union, Bâle 2001, p. 49. See also The Procter & Gamble Company contre Triall SA, WIPO Case No. DCH2014-0001. Laches implies that the right owner has tolerated the violation of its rights for a long period of time without opposing it and that the author of the violation has in the meantime acquired a position worthy of protection so that the right owner would lose its right to claim legal protection against the violation of its right (see Swiss Federal Court, judgment 4A_638/2009, c. 3.2 not published in ATF 136 III 225; judgment 4C.371/2005 c. 3.1 and the judgments cited, in SJ 2007 I p. 7 and in sic! 2006 p. 500); see also Artemis Suisse SA v. ArtemisRose AG, Manuela Gisler, WIPO Case No. DCH2015-0024; The Procter & Gamble Company v. Triall SA, WIPO Case No. DCH2014-0001.

In this case, the conditions for admitting laches are not met because it is not established that the Claimant would have tolerated the violation of its rights for a long period of time without opposing it as a result of the registration of the Disputed Domain Name by the Respondent. The Claimant has indeed alleged without being contradicted by the Respondent that it has learnt about the registration of the Disputed Domain Name only in February 2019. In addition, the Respondent has not established that he would have in the meantime acquired a position worthy of protection with respect to the Disputed Domain Name also because the Disputed Domain Name has not been put to any active use since its registration (based on the uncontradicted statements made by the Claimant). On this basis, the Expert holds that the objection of laches cannot applicable in this case.

7. Expert Decision

For the above reasons, in accordance with Paragraph 24 of the Rules of Procedure, the Expert orders that the domain name <wilier.ch> be transferred to the Claimant.

Jacques de Werra
Expert
Dated: July 26, 2019