Mark owner forfeits rights in domain name by waiting eight years to file complaint

Switzerland

German company JK-Holding GmbH markets tanning beds under the trademark ERGOLINE, which is also protected in Switzerland. Back in 2005, it terminated its distributorship agreement with the respondent, Solarium Service AG, who had registered the domain name 'ergoline-service.ch' in its own name in 1998.

In March 2013 JK-Holding demanded that the respondent cease the use of the ERGOLINE mark in its domain name. When the respondent failed to comply, JK-Holding filed a request for transfer of the domain name under the dispute resolution rules of the Swiss NIC in April 2014.

In Ergoline AG v Solarium Service AG (DCH2014-008, July 9 2014), a sole panellist of the WIPO Arbitration and Mediation Centre held that JK-Holding had forfeited its rights, if any, by waiting for about eight years to file the complaint after becoming aware of the allegedly infringing use (up to 2005, the use was justified by the agreement). The respondent, which had been servicing Ergoline tanning beds since 1992, had built up valuable goodwill ("wertvoller Besitzstand") and could rely, in good faith, on the belief that the trademark owner would not enforce its rights in the mark.

The expert therefore dismissed the request without addressing the (difficult) question of whether such use would be infringing at all (or whether the respondent could rely on the doctrine of exhaustion to use ERGOLINE to advertise its after-market services).

Mark Schweizer, Meyerlustenberger Lachenal, Zurich

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