Fiat loses dispute over 'fiat500.ch' domain name
In Fiat Group Automobiles Switzerland SA v Mattioli, a World Intellectual Property Organization (WIPO) expert has refused to transfer the domain name 'fiat500.ch' to Fiat Group Automobiles Switzerland SA and Fiat SpA (Case DCH2007-0020, February 15 2008).
Fiat SpA is the manufacturer of the popular Fiat Cinquecento cars, which were produced from 1957 to 1975. Fiat SpA registered the word mark FIAT in Switzerland in 1956. The international trademark FIAT CINQUECENTO (the Italian for 'Fiat 500') has been protected since 1992. Fiat SpA also registered the international trademark FIAT 500 in 2006, when the Fiat Cinquecento model was relaunched. Fiat Group Automobiles Switzerland SA is the beneficiary owner of these trademarks.
Claudio Mattioli, a car enthusiast, registered the domain name 'fiat500.ch' in 1997. Mattioli offers no commercial products on his website, except a book and some model toy cars. The website is aimed mainly at fans of the Fiat Cinquecento and contains a forum. On December 11 2007 Fiat SpA and Fiat Group Automobiles Switzerland SA filed a complaint with the WIPO Arbitration and Mediation Centre, seeking to obtain the transfer of the domain name 'fiat500.ch'.
Pursuant to Paragraph 24(c) of the Rules of Procedure for Dispute Resolution Proceedings for '.ch' and '.li' Domain Names adopted by SWITCH (the registry for '.ch' and '.li' top-level domain names), the expert shall grant a request for transfer 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 expert held that the FIAT mark was well known worldwide under Article 15 of the Swiss Trademarks Act. He also found that the use of the domain name infringed all three of Fiat's trademarks. However, the expert accepted Mattioli's argument that he had a right to inform the public. According to the expert, the use of a trademark as a means of information does not usually infringe trademark rights. Infringement occurs where, for example, the domain name suggests a special relationship between the domain name owner and the trademark owner. In this case, the expert found no evidence that Mattioli claimed to be a Fiat agent or authorized Fiat dealer. Therefore, he concluded that there was no likelihood of confusion among the public.
Furthermore, the expert noted that since Fiat commenced the proceedings over 10 years after the domain name was registered, its rights in the domain name were forfeited. The expert thus dismissed Fiat's complaint.
This decision shows that trademark owners must act quickly in such cases or risk forfeiting their rights. However, while the expert in this case was quick to conclude that Fiat had forfeited its rights, the courts do not make such findings lightly (see Schweizerische Eidgenossenschaft v Frei (Case DCH2006-0003) and "Swiss government settles disputes over domain names").
Marco Bundi, Meisser & Partners, Klosters
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