WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Twitter, Inc. v. High Tech Investments LTD
Case No. DCH2011-0030
1. The Parties
The Claimant is Twitter, Inc. of San Francisco, California, United States of America, represented by Melbourne IT Digital Brand Services, United States of America.
The Respondent is High Tech Investments LTD of Providence, Mahe, Seychelles.
2. Domain Name
The dispute concerns the domain name <twitter.ch>.
3. Procedural History
The Request, in the English language, was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 8, 2011. On August 9, 2011, the Center transmitted by email to SWITCH, the “.ch” and “. li” registry (the “Registry”), a request for verification in connection with the disputed domain name. On August 9, 2011, SWITCH transmitted by email to the Center its verification response confirming that the Respondent was listed as holder of the domain name and providing the relevant contact details.
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 on March 1, 2004.
According to information the Center has received from the Registry, the language of the registration agreement for the disputed domain name is German. On August 12, 2011, the Center invited the Claimant to submit a reasoned Request for English to be the language of the proceeding (or a translation of the Request into German or an agreement of both parties to proceed in English). On August 18, 2011, Claimant provided the Center with a letter reasoning why the language of the proceeding should remain English. On August 12 and 18, 2011, the Center received two emails from Respondent, stating that, since a “ch“ domain was at stake, German should be the language for this proceeding.
On August 22, 2011, the Center formally notified the Respondent of the Request and the commencement of the Dispute resolution proceeding in accordance with the Rules of Procedure, paragraph 14. The Center informed the parties that it will accept the Request in English and a Response in either German or English, and that it will be subject to the Expert’s discretion to decide on the language of proceeding. The due date for the Response was September 11, 2011 (paragraph 15(a) of the Rules of Procedure).
No conciliation conference took place within the deadline specified in paragraph 17(b) of the Rules of Procedure since Respondent neither expressed readiness to participate in a conciliation in accordance with the Rules of Procedure, nor filed a Response.
On September 14, 2011 the Center notified the Claimant accordingly who then made an application for the continuation of the Dispute resolution proceeding in accordance with paragraph 19 of the Rules of Procedure and paid the required fees.
On October 5, 2011, the Center appointed Dr. Bernhard Meyer as Expert in this case. The Expert finds that he was properly appointed. In accordance with Rules of Procedure, paragraph 4, the Expert also declared his independence of the parties.
4. Factual Background
Founded in 2006, Claimant offers a social network and micro blogging service, enabling users to send and read users’ messages called „tweets“ through the “www.twitter. com” website and compatible external applications on smart phones or through SMS (Short Message Service). Since its inception, Claimant acquired over 145 million users worldwide and according to Alexi’s web traffic analysis it is ranked as one of the ten most visited websites worldwide.
Claimant is the owner of the trademark TWITTER which is registered:
at the United States Patent and Trademark Office (USPTO), with the registration number of 3619911 since May 12, 2009;
at the Office for Harmonization in the Internal Market (OHIM), with the registration number of 006392997 since January 7, 2009; and
at the Swiss Federal Institute of Intellectual Property (IPI), with the registration number of 567447, since October 25, 2007.
Respondent is a legal entity (Limited Company, LTD) incorporated in the Seychelles. Absent a response, it’s business is unidentified.
5. Parties’ Contentions
Claimant alleges that the registration and/or use of the domain name infringes upon its trademark rights under the laws of Switzerland and requests that the domain name be transferred. Claimant points out that there are strong indications that Respondent has registered hundreds of domain names (e. g. <dinerclub.us>, <playstation.us>, <adidascareers.us>, <victoria-beckham.us>, <volkswagen.ch>, <shellgas.ch>, <facebook. co. uk), many of which may infringe upon third parties’ rights in the respective denominations, with the likely intention of Respondent to sell them to third parties or to the legitimate owners.
Although being correctly served with the Request by the Center, Respondent did not reply to the Claimant’s contentions and failed to participate in this proceeding. Under paragraph 23 (b) of the Rules of Procedure, the Expert is thus entitled to draw such inferences as he deems appropriate.
6. Discussion and Findings
A. Language of the proceeding
According to the Rules of Procedure, paragraph 7 (a), the proceeding shall be conducted in the language of the Registration agreement, without prejudice to the right of the Center, a Conciliator or an Expert, to exceptionally determine otherwise, on application by one or both parties, or at its own discretion in view of the circumstances.
The Center was informed that the language of the present registration agreement was German. However, and as stated by the Claimant, the Expert finds that the Respondent has several connections to the English language. Respondent is a company incorporated in the Seychelles. According to the Seychelles Government site there are three official languages: English, Creole and French. None of them is German. Moreover, the content of many of the Respondent’s registered domain names are in English or are targeting American trademarks. Lastly, the Respondent wrote two emails to the Center in perfect English. This makes it even more difficult to believe that the Respondent does not know the English language.
Given the foregoing and the fact that Respondent failed to participate even though it could have made submissions in both, German or English, the Expert comes to the conclusion that the present proceeding may be continued in English.
B. Infringement of an intellectual property right
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 Claimant owns under the law of Switzerland (paragraph 24 of the of the Rules of Procedure).
The Rules of Procedure, paragraph 24 (d) precise 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.
C. The Claimant has a right in a distinctive sign under Swiss Law
The Claimant bases its request on its United States of America, Swiss and OHIM (Office for Harmonization in the Internal Market) -Community trademarks. As mentioned in the Rules of Procedure, paragraph 24(c), the rights owned under the laws of Switzerland are relevant for “. ch” domain disputes. Consequently, the Expert particularly takes into consideration the Swiss trademark invoked by the Claimant in its request.
In Annex 7 to the Request, Claimant provided a copy of the trademark registration certificate of the trademark TWITTER from the Swiss Federal Institute of Intellectual Property, dated October 25, 2007. Thus, the Expert holds that Claimant established its exclusive right in its distinctive sign in Switzerland.
D. The registration or use of the domain name constitutes a clear infringement of the Claimant’s right
Pursuant to article 13, paragraph 1 and 2, of the Swiss Trademark Act (TMA) of August 28, 1992, the owner of a trademark has an exclusive right to use the trademark to distinguish goods or services for which it was registered. The Swiss Federal Supreme Court repeatedly held that this exclusive right also encompasses the use of a trademark as an element of a domain name, when such domain name is used on a website for promoting and distributing goods and services that are identical with or similar to the goods or services for which the trademark owner has registered the mark (see, e. g. , DTF 126 III 239, 244 <berneroberland.ch>).
Respondent did not provide any reasonable explanation why he registered the disputed domain name and to the Expert’s best knowledge, no such grounds can be seen. On the other hand, Claimant faces substantial disadvantages by this registration: the domain name <twitter.ch> cannot be used to market Claimant’s trademark and the respective services on the Internet.
Domain names can be regarded as distinctive signs also under Swiss competition law (DTF 126 III 245). Art. 2 and 3 (1) (d) of the Swiss Unfair Competition Act (UCA) of December 19, 1986 prohibits measures that are likely to cause confusion with products, works, services, or the business, of others.
Besides that, the registrations of hundreds of domains and Respondent’s conduct in this proceeding show the typical pattern of cyber- and typosquatting which constitutes bad faith and a breach of the Swiss Unfair Competition Act (UCA). By registering the disputed domain name, which is identical to Claimant’s well-known trademark in Switzerland, Respondent created a likelihood of confusion. Internet users are likely to assume a connection between Respondent’s website and Claimant’s services protected by Claimant's trademark. Respondent appears to take advantage of Claimant’s well-known brand and this conduct violates Claimant’s right in its distinctive sign under Art 3(1)(d) UCA.
In light of the above, Claimant has met its burden of proof under the Rules of Procedure, paragraph 24(d)(i).
Furthermore, Respondent has not replied to the Request, so there are no other facts or circumstances before the Expert which could be considered as relevant grounds for defense.
Hence, paragraph 24(d)(ii) of the Rules of Procedure is fulfilled.
The Expert finds that the Request is well founded and that Respondent's infringements of Claimant's rights justify a transfer of the domain name to Claimant in accordance with paragraph 24(d)(iii) of the Rules of Procedure.
7. Expert Decision
For the above reasons, in accordance with Paragraphs 24 of the Rules of Procedure, the Expert orders that the domain name <twitter.ch> be transferred to the Claimant.
Dr. Bernhard Meyer
Dated: October 19, 2011