Interests of ARIEL mark owner outweigh those of same name individual
P&G and Gamble are well-known manufacturers and distributors of consumer goods throughout the world. They own various trademarks for ARIEL and have held a registration for ARIEL in Switzerland since 1924. An individual named Ariel Hauser registered the domain name 'ariel.ch' on April 21 2001. The domain was not linked to an active website. Subsequently, P&G and Gamble sent a cease and desist letter to Hauser, requesting the transfer of the domain name. Hauser did not respond to the letter nor to the subsequent reminder. Therefore, on June 7 2006 P&G and Gamble filed a complaint with the WIPO Arbitration and Mediation Centre requesting the transfer of the 'ariel.ch' domain name.
Pursuant to Paragraph 24(c) of the Rules of Procedure for Dispute Resolution Proceedings for '.ch' and '.li' Domain Names, adopted by SWITCH, the '.ch' and '.li' registry, the expert shall grant the 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 law of Switzerland or Liechtenstein.
The expert first held that P&G and Gamble have a right in the ARIEL mark, which covers bleaching preparations and other substances for laundry. However, as Hauser could also claim rights to the name - Ariel being his first name - the expert had to strike a balance as to whether the trademark right would prevail over the right to a name according to Article 29 of the Swiss Civil Code.
In order to do so, the expert had to answer the crucial question of whether ARIEL was to be qualified as a well-known trademark in Switzerland. She found that in accordance with the evidence submitted by P&G and Gamble, which consisted of advertisements, advertising and sales figures, and audio files, it was shown that the ARIEL mark had acquired a high level of significance and recognition in Switzerland. Therefore, the expert concluded that ARIEL was considered as a strong mark known by a large part of the Swiss public.
In citing the famous 'maggi.com' decision of the Swiss Federal Supreme Court, in which an individual called Romeo Maggi lost the domain name to Nestlé SA, the owner of the MAGGI mark (see Rights in MAGGI mark outweigh individual's rights in his name), the expert concluded that the interest of a company in being easily found on the Internet by its customers under its well-known mark is greater than the interest of an individual to use his or her name as part of an internet address. Therefore, the expert considered the conditions of Paragraph 24(c) as met and ordered the transfer of 'ariel.ch'.
This decision confirms that a well-known trademark prevails over an individual's name, unless the latter proves that his or her interests outweigh those of the mark owner. However, the decision also shows that the rules applying to '.ch' domain names are much wider than those of the Uniform Domain Name Dispute Resolution Policy as no bad faith is required. This condition would have been almost impossible to prove in the case at hand as the domain name was identical to the respondent's first name and was not yet active.
Marco Bundi, Meisser & Partners, Klosters
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