WIPO Arbitration and Mediation Center
Pamp SA and MKS (Switzerland) SA v. Pampsuisse Ltd., Walter Muelli
Case No. DCH2012-0028
1. The Parties
The Claimants are Pamp SA of Castel San Pietro, Switzerland (Claimant 1) and MKS (Switzerland) SA of Geneva, Switzerland (Claimant 2), represented by Cabinet Griffes Consulting SA - Intellectual Property Counsel, Switzerland.
The Respondent is Pampsuisse Ltd., Walter Muelli of Zürich, Switzerland.
2. Domain Name
The dispute concerns the following domain name <pampsuisse.ch> which is registered with SWITCH, the “.ch” and “.li” registry.
3. Procedural History
The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) by courier on October 16, 2012. On October 17, 2012, the Center transmitted by email to SWITCH a request for verification in connection with the disputed domain name. On October 18, 2012, SWITCH transmitted by email to the Center its verification response confirming that the Respondent is listed as the holder of the disputed domain name and providing the relevant contact details. In response to a notification sent by the Center to the Claimants on November 2, 2012 that the Request was administratively deficient, the Claimants filed the electronic version of the Request on November 5, 2012.
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.
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 November 6, 2012. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was November 26, 2012.
The Respondent has neither filed a Response nor expressed its readiness to participate in a Conciliation in accordance with paragraph 15(d) of the Rules of Procedure.
On November 27, 2012 the Center notified the Claimants accordingly who, on December 3, 2012, 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 December 11, 2012 the Center appointed Philippe Gilliéron as Expert in this case. The Expert finds that it was properly appointed. In accordance with Rules of Procedure, paragraph 4, the above Expert has declared his independence of the parties.
4. Factual Background
Claimant 1 is a company active in the precious metals sector that was founded in 1977 and registered in the Register of Commerce of Ticino on March 14, 1977. It is a major producer of gold ingots and also refines other precious metals such as silver and platinum and enjoys the “Good Delivery” accreditation delivered by several entities. Claimant 1 is an affiliated company of Claimant 2, which owns the domain name <pamp.ch> since February 24, 1998, under which Claimant 1 operates online.
Claimant 1 is the holder of the corporate name “Pamp SA” that was registered on March 14, 1977.
Claimant 1 also owns several trademarks consisting in whole or in part of the word “Pamp”, including a Swiss verbal trademark n° P-351371 that was registered on February 16, 1987 under class 14 of the Nice Classification, including but not only as to precious and semi-precious metals and their alloys in bands, bars, foils, wires, ingots, plates, powder, strips and tubes as well as coins, with a priority date as of October 31, 1986.
On September 6, 2012, the Respondent registered the disputed domain name <pampsuisse.ch>. No company however appears to have been registered under the name “Pampsuisse” in the Swiss Register of Commerce. The disputed domain name is linked to a website displaying “Pamp Suisse” and reproducing entire sections of the Claimants’ original website, such as the “company” section and the contact details of Claimant 1 in the “contact” section of the website.
On October 10, 2012, Claimant 1, acting through its legal counsel, sent a cease and desist letter to the Respondent, informing the latter upon its exclusive rights upon the “Pamp” designation both as a corporate name and a verbal trademark, and inviting the Respondent to comply with certain commitments, including with the transfer of the disputed domain name in its favor. Absent any correct and actual address, the letter has however never reached the Respondent and was returned to Claimant 1.
5. Parties’ Contentions
The Claimants argue that Claimant 1 corporate name and trademarks consist of the word “Pamp”, which has to be regarded as a fanciful, original and distinctive element. The disputed domain name, which entirely reproduces the corporate name and trademark held by Claimant 1, thus infringes upon Claimant 1’s exclusive rights.
Furthermore, the Claimants argue that the Respondent has no rights or legitimate interests in the disputed domain name as Claimant 1 did not give any authorization to the Respondent to use its trademarks and corporate name, that the Respondent does not own any intellectual property rights upon the word “Pamp” and has never used such word prior to the registration of these exclusive rights by Claimant 1.
Finally, the Claimants argue that the disputed domain name was registered and is being used in bad faith, as the Respondent intentionally attempts to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Claimant 1.
As a result, the Claimants request that the disputed domain name <pampsuisse.ch> be transferred to Claimant 1.
The Respondent did not reply to the Claimant’s contentions.
6. Discussion and Findings
In accordance with paragraph 24(c) of the Rules of Procedure, the Expert shall grant the Request if the registration or use of the disputed domain name constitutes a clear infringement of a right in a distinctive sign which the Claimants own under the law of Switzerland or Liechtenstein.
Paragraph 24(d) of the Rules of Procedure further adds that in particular, 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 defense; and
(iii) the infringement of the right justifies the transfer or deletion of the disputed domain name, depending on the remedy requested in the request.
A. The Claimants have a right in a distinctive sign
In the present case, Claimant 1 demonstrates to enjoy exclusive rights in the word “Pamp” both as a corporate name validly registered on March 14, 1977 (art. 956 of the Swiss Code of Obligations) and as a verbal trademark n° P-351371 registered under class 14 with a priority date as of October 31, 1986 (art. 3 of the Federal Trademark Act).
B. The registration or use of the disputed domain name constitutes a clear infringement of the Claimants rights
Based upon the above-mentioned exclusive rights of Claimant 1, the Expert has no difficulty in holding that the registration or use of the disputed domain name constitutes a clear infringement of these rights.
There is ample evidence in the file that the Respondent deliberately infringes upon Claimant 1 rights in the distinctive sign “Pamp”.
The disputed domain name entirely incorporates the distinctive sign “Pamp” held by Claimant 1 as a corporate name and trademark, but for the additional geographical designation “Suisse”, which has to be considered as descriptive.
The website attached to the disputed domain name has manifestly been designed so as to create a confusion among users and let them believe that the website would be the official Claimant 1 website. The website relates to precious metals, products for which protection has been sought for under the trademark No. P-351371 held by Claimant 1, and entirely reproduces numerous sections and content taken out of the official website at “www.pamp.ch” held by Claimant 2 and exploited by Claimant 1. The website further entirely reproduces the designation “Pamp” on numerous instances, including in its “contact” section that refers to the seat of Claimant 1. The likelihood of confusion is obvious to this Expert, as well as the infringement of the above mentioned exclusive rights held by Claimant 1.
Furthermore, the Respondent has no valid existence, as evidenced by the fact that there is no valid registration of “Pampsuisse Ltd” in the Swiss Register of Commerce, that the cease and desist letter sent by Claimant 1 to the Respondent at the address indicated in the publicly available WhoIs database and confirmed by SWITCH was sent back to Claimant 1 and that the Notification of Request and Commencement of Dispute Resolution Proceedings sent by the Center to the Respondent at the address listed on the website at the disputed domain name ultimately was delivered to Claimant 1.
All in all, the overall circumstances of the case thus make it clear that the requirements of paragraph 24 of the Rules of Procedure have been fulfilled, and that both the registration and use of the disputed domain name constitutes a clear infringement of Claimant 1 exclusive rights.
7. Expert Decision
For the above reasons, in accordance with paragraph 24 of the Rules of Procedure, the Expert orders that the disputed domain name <pampsuisse.ch> be transferred to Claimant 1, i.e. Pamp SA.
Dated: December 17, 2012