WIPO Arbitration and Mediation Center

EXPERT DECISION

Nicoventures Holdings Limited v. Hemag Nova AG

Case No. DCH2021-0015

1. The Parties

The Claimant is Nicoventures Holdings Limited, of United Kingdom, represented by Demys Limited, United Kingdom.

The Respondent is Hemag Nova AG, of Switzerland.

2. The Domain Name

The dispute concerns the following domain name <vuse.ch>.

3. Procedural History

The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 25, 2021. On May 25, 2021, the Center transmitted by email to SWITCH, the “.ch” and “.li” registry, a request for verification in connection with the disputed domain name. On May 26, 2021, SWITCH transmitted by email to the Center its verification response confirming that the Respondent is listed as the holder of the disputed 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 procedures for “.ch” and “.li” domain names (the “Rules of Procedure”), adopted by SWITCH, on January 1, 2020.

In accordance with the Rules of Procedure, paragraph 14, the Center formally notified the Respondent of the Request, and the Dispute resolution procedure commenced on June 1, 2021. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was June 21, 2021.

The Respondent filed a Response in German and expressed its readiness to participate in the conciliation on June 1, 2021. The Center appointed Daniel Kraus in this matter on July 6, 2021.

In accordance with Rules of Procedure, paragraph 17, the Conciliation conference took place by telephone on June 24, 2021. The Conciliation conference did not result in a settlement between the parties.

On June 25, 2021, the Center notified the Parties accordingly the continuation of the Dispute resolution proceedings in accordance with specified in paragraph 19 of the Rules of Procedure.

On July 6, 2021, the Center appointed Theda König Horowicz as Expert in this case. The Expert finds that it was properly appointed. In accordance with the Rules of Procedure, paragraph 4, the above Expert has declared his independence of the parties.

3. Factual Background

The Claimant is an entity belonging to the British American Tobacco Group (“BAT Group”) which purpose is to hold and enforce the IP rights of the said BAT Group., The BAT Group was founded in 1902,trades tobacco worldwide and is listed on the London Stock Exchange. Reynolds American, Inc. also belongs to the BAT Group.

The BAT Group manufactures, distributes and markets a wide range of tobacco products and e-cigarettes under many brands including “Vuse Digital Vapor Cigarette”. The name VUSE has been used since June 2013 in relation to e-cigarettes.

The VUSE brand is promoted notably through the official website <vuse.com>.

The Claimant holds several trademark registrations worldwide for VUSE including the Swiss trademark registration VUSE No 637846, which was registered on December 13, 2012, in classes 9 and 34.

The Respondent is a company incorporated in Switzerland and operates online shops.

The disputed domain name was registered on October 13, 2013.

On March 5, 2021, the Claimant sent a warning letter to the Respondent requesting for the transfer of the disputed domain name. The letter was not answered.

4. Parties’ Contentions

A. The Claimant

The Claimant alleges to have trademark rights in Switzerland over the name VUSE, which pre-dates the registration of the disputed domain name.

The Claimant further alleges that the Respondent is not legitimately and commonly known by the name VUSE. The Respondent is not a licensee of the Claimant and has not been authorized by the Claimant to use its VUSE marks. The Claimant has found nothing to suggest that the Respondent owns any VUSE marks or that it legitimately trades under this name.

The Claimant observes that the disputed domain name resolves to a website operated by the Respondent which displays and sells products manufactured by third parties unrelated to the Claimant, including its competitors. The use of the VUSE mark in the disputed domain name thus takes unfair advantage of and infringes the Claimant’s rights.

B. The Respondent

The Respondent alleges to be the owner of over a hundred of domain names. The Respondent denies that the disputed domain name is linked to the website “www.e-zigarette.ch”. Actually, the disputed domain name resolves to an inactive website.

The Respondent also indicates that it did not receive the warning letter, which was sent to a non-existent email address. Furthermore, the Claimant would own trademarks in Switzerland, which were registered in 2018 and 2019, i.e. after the registration of the disputed domain name in 2013.
Finally, the Respondent indicates that the Parties have been negotiating in relation to a potential selling of the disputed domain name to the BAT Group, but no agreement could be made regarding the price.

5. Discussion and Findings

I. Language of the proceedings / Admissibility of Respondent’s submission

According to the Rules of Procedure, paragraph 7, the procedure shall be conducted at the Claimant’s choice in English, German, French or Italian.

The Claimant chose English.

The Respondent filed its submission in German.

The Rules of Procedure paragraph 21(a), notably provide that the Expert shall ensure that the Parties are treated equally and that each party has an opportunity to properly present its case.

In this frame, the Expert notes that the Claimant did not react over the fact that the Respondent’s submission was established in German. Furthermore, the evidence provided by the Respondent in this case shows that the parties negotiated in German over the disputed domain name prior to the filing of the complaint.

Under the circumstances, the Expert considers the Respondent’s submission in German that was filed in time as admissible.

II. Substantive issues

According to the Rules of Procedure, paragraph 24(c), the Expert shall grant the request if the allocation 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 in disputes over a domain name under the country-code Top-Level Domain (“ccTLD”) “.ch”.

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;

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 revocation of the domain name, depending on the remedy requested in the request.

A. The Claimant has a right in a distinctive sign

The Claimant has evidenced to be the owner in Switzerland of the trademark VUSE which has been registered in Switzerland since December 13, 2012, in classes 9 and 34.

As pointed out by the Respondent, the Claimant also owns two later Swiss registrations of 2018 and 2020 for trademarks comprising VUSE.

The first condition under paragraph 24(d) of the Rules of Procedure is thus fulfilled.

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

According to Article 3 combined with Article 13 paragraph 1 of the Swiss Trademark Act, a trademark right gives its owner the exclusive right to use a trademark in relation to the goods and services for which it has been registered.

According to consistent Swiss case law, very distinctive trademarks enjoy a higher level of protection than more ordinary trademarks and the risk of confusion must be admitted easier than for trademarks with an ordinary distinctiveness (ATF 122 III 382).

The Claimant owns and uses the highly distinctive trademark VUSE in classes 9 and 34, notably for e-cigarettes.

The disputed domain name contains the mark VUSE in its entirety with the only addition of the ccTLD “.ch” which is not relevant in the examination of the case.

The disputed domain name is thus identical to the Claimant’s trademark.

The Claimant has shown that the Parties are active in the same business area, more specifically in the business of e-cigarettes and related goods. Indeed, the Respondent is commercializing several e-cigarettes brands, including “vuse” e-cigarettes, through its website <e-zigarette.ch>. On the said website, it also sells other e-cigarette brands, which are in direct competition with the Claimant.

The Claimant states that the disputed domain name redirects to the above-mentioned <e-zigarette.ch> website while the Respondent points out that the disputed domain name resolves to an inactive webpage.

Based on the case file, the Expert finds that the Claimant made a prima facie case showing that a connection was made between the disputed domain name and the Respondent’s website. Indeed, the Claimant provided a print of the <e-zigarette.ch> website of March 5, 2021, showing the use of its VUSE mark in the website. The Respondent’s print provided as evidence does not mention any date and does not establish since when the disputed domain name would be inactive. No history of use respectively of non-use is given by the Respondent.

In addition, even if the disputed domain name is currently inactive and as underlined above, the Claimant’s VUSE trademark is highly distinctive. Furthermore, it is hold by the Respondent which is active in the business of selling e-cigarettes and related goods. The fact that the Claimant’s mark is entirely reproduced in the disputed domain name and that the disputed domain name is composed of this sole element, without any other additions, does create a risk of confusion for the Internet user who will expect to find Claimant’s official Internet presence under the disputed domain name. Domain names identical to a complainant’s trademark carry a high risk of implied affiliation.

In addition, the Respondent is active in the cigarettes business and it therefore obviously knew about the Claimant’s trademark when registering the disputed domain name containing the Claimants prior and highly distinctive VUSE trademark which is an invented word, not a descriptive word which would have a meaning in relation with the goods for which it is used.

Furthermore, the disputed domain name was registered by the Respondent shortly after the registration of the Claimant’s trademark and negotiations were later held between the parties where the Respondent expressed its willingness to transfer the disputed domain name against payment of CHF 50,000, a very high and substantial offer which was refused by the Claimant.

In this frame, the Respondent does not allege that it would have been authorized by the Claimant to register and use the VUSE mark and does not provide any legitimate reasons for which the disputed domain name shall be, respectively shall remain registered in its name. It does indeed not provide any explanations on a legitimate past use or potential future legitimate use of the disputed domain name respectively of a goodwill it would have acquired through the disputed domain name. It does also not explain for which reasons the amount of CHF 50,000 requested against the transfer of the disputed domain name would be an appropriate amount being reminded that it pretends not to have used it.

The Expert also notes that by owning the disputed domain name, the Respondent prevents the Claimant to register the disputed domain name, which entirely reproduces its highly distinctive VUSE trademark and to reflect its trademark in a domain name, which would identify its presence on the Swiss market since it is a ccTLD “.ch”.

In the light of all these elements, the Expert finds that the disputed domain name violates Article 13 of the Swiss Trademark Act, as well as Articles 2 and 3 d of Swiss Unfair Competition Law.

The second condition of paragraph 24(d) of the Rules is therefore fulfilled as well.

6. Expert Decision

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

Theda König Horowicz
Expert
Dated: July 21, 2021