VeL fails to obtain transfer of 'velba.ch'
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In Vereinigung ehemaliger Lehrlinge v Heim (Case DCH2008-0009, July 31 2008), a World Intellectual Property Organization (WIPO) panel has refused to order the transfer of the domain name 'velba.ch' to Vereinigung ehemaliger Lehrlinge.
Vereinigung ehemaliger Lehrlinge (which translates as 'association of former apprentices') is an association of Asea Brown Boveri apprentice alumni established in Baden, Switzerland. The respondent, Adrian Heim, was chairman of the association's board. In this capacity, Heim registered the domain name 'velba.ch'. The association used the website attached to the domain name to release official news and other communications. The yearly invoices issued by the domain name registry were addressed to and paid by the association.
When Heim left the association's board, he instructed the registry to forward future bills to him and started an independent forum for members of the association under the domain name 'velba.ch'. VeL subsequently requested that Heim transfer the domain name to it, but Heim refused to comply. The association thus filed a complaint before the WIPO Arbitration and Mediation Centre.
In Switzerland, associations with written bylaws are considered as legal entities and their names are protected in the same manner as family names. In addition, nicknames and acronyms may be protected if they are widely used together with, or instead of, the name of the company as defined in the bylaws.
In the present case, the association claimed that it was well known under its acronym VeL. In addition, it argued that it had used the domain name 'velba.ch' on official documents (eg, advertisements, periodicals and application forms) for a period of three years.
The panel refused to transfer the domain name to the association. It held that it was impossible to ascertain whether Heim had acted in his own name or on behalf of the association in registering the domain name 'velba.ch'. However, even if it was proven that Heim had registered the domain name on behalf of the association, there was no evidence that the latter had a better right over the term 'velba'. Assuming that the association had any rights at all, such rights would refer to the official name of the association or its acronym VeL, and not to the term 'velba'. In addition, although the suffix 'ba' could be interpreted as the abbreviation of the word 'Baden' (where the statutory seat of the association is situated), there was no evidence that 'velba' had acquired a secondary meaning. Therefore, as the association did not own any other registered rights (eg, trademarks or trade names), the complaint was dismissed and the association was instructed to bring the case before the ordinary courts.
This decision shows that associations, clubs and unions should ensure that their domain names are registered in their own name; otherwise, any board member or other agents may become the legal owner of an association's domain name.
Lucas David, Walder Wyss & Partners, Zurich
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