SWISSVOICE mark owner loses out in row over 'swissvoice.com'

International

In Swissvoice AG v Chan, a World Intellectual Property Organization (WIPO) panellist has refused to order the transfer of the domain name 'swissvoice.com' to the complainant - the owner of a SWISSVOICE mark.

Chan Chin Sung, an individual based in Taiwan, registered 'swissvoice.com' on May 27 2000 and has not used it since. Swissvoice AG, a company involved in the telecommunications industry, filed a complaint with WIPO on the basis of its Swiss trademark SWISSVOICE. It claimed that pursuant to Paragraph 4 of the Uniform Domain Name Dispute Resolution Policy, the registrant (i) did not have a legitimate interest in the domain name 'swissvoice.com', and (ii) had registered and used it in bad faith.

WIPO panellist Wolter Wefers Bettink did not dispute Swissvoice's rights in the trademark. Furthermore, he acknowledged that the domain name 'swissvoice.com' was identical to the SWISSVOICE mark since the suffix '.com' only indicated that the domain name was registered in the '.com' generic top-level domain.

However, he refused to rule on whether Chan had a legitimate interest in the domain name, holding that Swissvoice had provided insufficient evidence. He also dismissed its claim of bad faith. Bettink stated that the fact that a domain name containing the word 'Swiss' had been registered by a registrant who was neither a Swiss resident nor a Swiss national did not inherently constitute bad faith registration or use of the domain name. He next reasoned that there was no suggestion of bad faith since Swissvoice had not proved that (i) it had used SWISSVOICE as an unregistered trademark before Chan registered the disputed domain name, or (ii) Chan had any knowledge of Swissvoice's rights in the SWISSVOICE mark at the time he registered the domain name.

This decision appears to contradict the trademark registration practice of the Swiss Federal Institute of Intellectual Property and Swiss trademark case law. In Switzerland, trademarks containing the word 'Swiss' are considered deceptive signs if the products offered under the mark have no connection to Switzerland. Accordingly, only goods and services of Swiss origin can be claimed by a trademark containing the word 'Swiss'. However, it is not necessary that the holder of the trademark be a Swiss resident or national. While it is clear that there are some differences between pure trademark disputes and those involving a domain name and a trademark, the principles governing such disputes should be similar. Thus, the interests of trademark holders may be better served if panellists in arbitration proceedings take on board principles that are more akin to trademark law.

Barbara K Müller, Meyer Lustenberger, Zurich

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