The Claimant is Weight Watchers International Inc. of New York, United States of America, represented internally.
The Respondent is NameInvest Ltd. of the Valley, Anguilla, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
The dispute concerns the following domain name: <weightwatcher.ch> (“Domain Name”).
The Request submitted by the Claimant was received by e-mail on October 7, 2009 and in hardcopy on September 30, 2009, by the WIPO Arbitration and Mediation Center (the “Center”). On the request of the Center on October 2, 2009, SWITCH has confirmed that the Respondent is the holder of the Domain Name. The Center verified that the Request satisfied the formal requirements of the Rules of procedure for dispute resolution proceedings for .ch and .li domain names (the “Rules of Procedure”), adopted by SWITCH, the .ch and .li registry, on March 1, 2004.
In accordance with the Rules of Procedure, paragraph 14, the Center formally notified the Respondent of the Request, and the Dispute resolution proceedings commenced on October 9, 2009. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was October 29, 2009.
No Conciliation conference has taken place within the deadline specified in paragraph 17(b) of the Rules of procedure.
On November 3, 2009, the Center notified the parties that the Respondent has neither filed a formal Response nor expressed its readiness to participate in a Conciliation in accordance with paragraph 15(d) of the Rules of Procedure and invited the Claimant to apply for a continuation of the proceedings. On November 12, 2009 the Claimant made an application for the continuation of the Dispute resolution proceedings in accordance with paragraph 19 of the Rules of Procedure and paid the required fees.
On November 23, 2009, the Center appointed Mr. Michael Bernasconi as Expert in this case. In accordance with Rules of Procedure, paragraph 4, the above Expert has declared his independence of the parties.
The Claimant is a leading, global-branded consumer company and one of the world's leading providers of weight management services, operating globally through a network of Company-owned and franchise operations.
The Claimant is the owner of the trademarks WEIGHT WATCHERS and WEIGHTWATCHERS. It has registered the trademarks in over 100 countries around the world, among others in Switzerland, notably:
- Swiss registration No. 509578, in classes 16, 41, 44, of April 16, 2002.
- Swiss registration No. 435551, in classes 41, 42, of February 20, 1995.
Furthermore, the Claimant holds domain names comprising its trademark WEIGHT WATCHER, including <weightwatchers.ch>.
On December 12, 2004, the Respondent has registered the domain name <weightwatcher.ch> which is linked to a website in the German language offering several services in relation to weight management. The website provides links to other sites of weight management companies. The homepage at <weightwatcher.ch> mentions that the domain name is possibly available for sale (“Diese Domain steht evtl. zum Verkauf”).
The Claimant alleges to have rights in Switzerland in the name “weight watchers” and “weightwatchers” through its business name and its Swiss trademark registrations.
The Claimant contends that the registration of the Domain Name infringes Claimant's right in a distinctive sign under the laws of Switzerland because the Respondent offers very similar services to the Claimant. In addition, the Domain Name is almost identical to the domain name <weightwatchers.ch> of the Claimant, the only difference residing in an additional “s” in the domain name registered by the Claimant. Furthermore, the Respondent has no rights or legitimate interests in the Domain Name and it only tries to take profit from the notoriety of the Claimant's brand WEIGHT WATCHER which is a conduct of typosquatting.
Claimant therefore requests that the disputed Domain Name be transferred to the Claimant.
The Respondent did not reply to the Claimant's contentions.
According to the Rules of Procedure, paragraph 24 (c), “the Expert shall grant the request 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”.
The Rules of Procedure, paragraph 24 (d) specify that “a clear infringement of an intellectual property right exists when
i. both the existence and the infringement of the claimed Right in a distinctive sign clearly result from the wording of the law or from an acknowledged interpretation of the law and from the presented facts and are proven by the evidence submitted; and
ii. the respondent has not conclusively pleaded and proven any relevant grounds for defence; and
iii. the infringement of the right justifies the transfer or deletion of the domain name, depending on the remedy requested in the request”.
The Claimant proved its ownership of numerous trademarks in Switzerland and throughout the world, covering and using the name “Weight Watchers” (cf. Exhibit No. 2 and 3 of the Request).
According to art. 13 para. 2 of the Swiss Trademark Act (TMA) in connection with art. 3 para. 1 lit. c TMA the Claimant as owner of the trademark is entitled to enjoin the Respondent to use a sign similar to WEIGHT WATCHERS in connection with goods and services identical or similar to Claimant's.
The difference between the Claimant's trademark WEIGHT WATCHERS or its domain name <weightwatchers.ch> and Respondent's domain name <weightwatcher.ch> is negligible: It only consists of the removal of one letter without a significant difference from Claimant's sign. The services and goods offered on Respondent's website under the Domain Name include services similar or identical to Claimant's, i.e. diet plans, dietary supplement and other weight management information.
The public may not be able to perceive the difference between <weightwatchers.ch> and <weightwatcher.ch>. Hence, a risk of confusion exists (see also Weight Watchers International Inc. v. Domain Proxies LLC, WIPO Case No. D2007-0798 <wieghtwatchers.com> where a finding of confusing similarity has made and the disputed domain name transferred to the claimant).
Furthermore, the evidence produced by the Claimant shows that the Claimant is in Switzerland and internationally known under its trade name and trademarks.
The Expert notes that under paragraph 4 (a) of the Uniform Domain Name Dispute Resolution Policy (“UDRP”) approved by ICANN on October 24, 1999, the conduct of typosquatting is considered as evidence of bad faith. Typosquatting as referred to in several UDRP decisions and the Rules of Procedure (see e.g. Weight Watchers International Inc. v. Domain Proxies LLC, WIPO Case No. D2007-0798; Briefing.com Inc., v. Cost Net Domain Manager, WIPO Case No. D2001-0970 <breifing.com>; TDC Switzerland Ag v. Algis Skara, WIPO Case No. DCH2006-0028 <sunirse.ch>) may be seen in subtle changes in the spelling of the trademarks of a given complainant. These changes could be the switching, the deletion or the doubling of letters.
In the present case the Expert is satisfied that the expectation of the Respondent was and is that Internet users who seek to visit Claimant's domain name will type erroneously “weight watchers” without a “s” in the URL and so consequently arrive to the website of the Respondent.
Therefore, the Expert, upon review of the evidence available, is of the view that the creation and registration of the Domain Name by the Respondent through the modification of the trademarks of the Claimant did not serve any possible legitimate interests and could only aim at exploiting the reputation of Claimant's name and trademarks. It may come therefore not as a surprise to this Expert that the Respondent seems to have already registered other domain names which were considered as an infringement of the TMA or of the Swiss Unfair Competition Act (see e.g. Comparis.ch AG v. NameInvest Ltd., WIPO Case No. DCH2009-0006; Boy Scouts of America v. NameInvest Ltd., WIPO Case No. DCH2008-1423).
The Respondent offers no evidence that might prove any right in the disputed Domain Name.
Against this background, the Expert holds the view that the Respondent, by registering the disputed Domain Name, was trying to take advantage of the Claimant's widely known trade name and trademarks and infringes the Claimant's trademark rights. Thus, the other arguments of the Claimant do not have to be reviewed.
For the above reasons, in accordance with Paragraphs 24 of the Rules of Procedure, the Expert orders that the domain name <weightwatcher.ch> be transferred to the Claimant.
Michael Bernasconi
Expert
Dated: December 7, 2009