Claimant is République et Canton du Valais of Switzerland, represented by BCCC Attorneys-at-law, of Switzerland.
Respondents are Julen & Schnidrig Engineering and Markus Julen, of Switzerland, represented by Biner Wirz & Bellwald, Agathe Wirz, of Switzerland.
The dispute concerns the domain name <wallis.ch>.
The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2010. On January 28, 2010, the Center transmitted by email to SWITCH a request for verification in connection with the disputed domain name. On January 29, 2010, SWITCH transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant 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, 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 February 4, 2010. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was February 24, 2010.
Respondent filed a Response or expressed his readiness to participate in the conciliation on February 24, 2010. The Center appointed as a Conciliator Michael Treis in this matter on March 11, 2010.
In accordance with Rules of Procedure, paragraph 17, the Conciliation conference took place by telephone on March 30, 2010. The Conciliation conference did not result in a settlement between the parties.
Accordingly, on April 9, 2010, Claimant made an application for the continuation of the Dispute resolution proceedings in accordance with the Rules of procedure, paragraph 19, and paid the required fees.
On April 20, 2010, the Center appointed Daniel Kraus as an Expert in this case. The Expert finds that it was properly appointed. In accordance with the Rules of Procedure, paragraph 4, the above Expert has declared his independence of the parties.
On May 6, 2010, Parties were advised that it had been necessary for the Expert to extend the expected due date for decision by seven days, due to unreadable evidence.
Claimant, République et Canton du Valais, is a Swiss public entity. Respondents are on the one hand a company specialized in development and maintenance of Internet and related services, and on the other hand one of its owners (hereinafter considered as Respondent). As of September 7, 1994, Claimant hired Respondent as a part-time professor at the State Technical School in Computer Engineering. Respondent's percentage of activity for the academic year 2004/2005 was decreased and in October 2004, Respondent Markus Julen quit this part-time-job.
In 1995, while he was a part-time employee of Claimant, Respondent registered the disputed domain name <wallis.ch>. It is not clear from the file whether the canton of Valais, through the School that employed Mr. Julen, had been aware of, and/or had allowed the registration of the domain name <wallis.ch>, nor if it had been informed of or allowed Respondent's activities in the field of tourism, making use of said domain name. Parties do not agree on the issue.
On August 5, 1998, Claimant registered the combined trademark VALAIS-WALLIS with a priority date as of July 29, 1997 for products under classes 29-33.
On April 16, 1999, Respondent informed Claimant that it was the registrant of <wallis.ch> since December 1995 and that it was not going to tolerate an exclusive use of that domain name by Claimant.
On December 8, 1999, Respondent registered the combined trademark WALLIS.CH – LINKS ZUM WALLIS! with a priority date of April 30, 1999 for computer software (class 9), advertisements in particular on the internet (class 35), telecommunication (class 38) and education (class 42). Claimant did not oppose or request cancellation of that trademark. Claimant contends that Respondent had actually never used the trademark on the market, to what Respondent answers that he has used it, in particular by placing it on its website.
On February 29, 2000, respectively March 2, 2000 the parties signed an agreement, according to which Respondent granted to Claimant, represented by Wallis Tourismus, the right to use <wallis.ch> as its home gate, and to have any access to <wallis.ch> directly connected to Wallis Tourismus's website. Claimant agreed to pay to Respondent a yearly amount of CHF 1,500 for the access granted. One can deduce from the cooperation contract between Claimant and Respondent that the former recognized the fact that Respondent had been registered with Switch as the registrant of the domain name <wallis.ch>.
A collaboration based on said contract seems to have worked well until 2007 or 2008. A letter dated May 28, 2008 written by Respondent's representative refers to a request by Claimant to recover the domain name. Respondent however informed Claimant in that letter that he wished to keep the domain name, to which it considers having a better right, based in particular on the fact that the contract explicitly recognizes Respondent's rights on the domain name. Respondent adds in this letter that it is ready to sell the domain name for CHF 100,000, under the condition that sufficient time is foreseen in order for its clients to adapt to the new situation. As alternative, it suggests a long-term use contract to Claimant.
In 2008, the Canton of Valais developed a new marketing strategy for its products and services and registered a collective combined trademark VALAIS, on which appears the word “Valais”, the Matterhorn and a Star. The strategy of the Canton first seemed based on the French version of the Canton's name (“Valais”); the Canton being bilingual, the Swiss-German part reacted strongly to this mono-lingual strategy and Claimant registered the German version WALLIS in June 2008 (Swiss trademarks no. 572076 and no. 576368).
Following the resignation by Wallis Tourismus of the cooperation agreement for the end of December 2009, Respondent disconnected the “redirect” <wallis.ch> which was no longer linked to the website that one can find under <valais.ch>.
On January 7, 2010, Claimant, acting through its counsel, sent a cease and desist letter to Respondent, in which it requested the latter to transfer the domain name in favor of Claimant within five days, whilst Respondent's attention was drawn to the significant marketing investments Claimant had made in relation with the website and the prejudice that resulted from the impossibility to access it from <wallis.ch>.
Since then, the “redirect” to Claimant's touristic website is active again.
Claimant first affirms that he has a right in a distinctive sign under the law of Switzerland. Claimant is publicly known under the names “Valais”, “Wallis” or “Valese” depending on the official Swiss language which is used.
Under Swiss law, public entities such as Claimant enjoy, as any other legal subject, a right to their name based upon article 29. 2 of the Civil Code (hereinafter CC). Claimant argues that such a right has been successfully invoked by public entities against the registration of their distinctive sign as domain names by third parties, both in legal proceedings as well as under the alternative dispute resolution system.
Claimant maintains that its name is also protected under article 2 and 3 lit. d of the Swiss Unfair Competition Act (hereinafter LCD). Finally, as regards the first requirement, Claimant invokes that it owns a collective combined trademark (VALAIS-WALLIS) since July 29, 1997, for products under classes 29-33 (P-453581).
Second, Claimant argues that the registration and or use of the domain name <wallis.ch> infringe Claimant's right in his distinctive sign under the law of Switzerland. Claimant asserts that the registration and subsequent refusal by Respondent to transfer the domain name <wallis.ch> in favor of Claimant amounts to an infringement of article 29. 2 CC, as well as articles 2 and 3 lit. d LCD. The denomination “Wallis” has been used among the public and is known in the geographical area where protection is sought, and Claimant is well known among Switzerland as “Wallis”, “Valais” or “Valese”. A likelihood of confusion exists, as a public entity is entitled to appear as the registrant of a domain name consisting of its designation under the ccTLD of the country where it is located. According to Claimant, the latter therefore enjoys a priority right to own and appear under the domain name <wallis.ch>.
As regards Respondent's trademark WALLIS.CH – LINKS ZUM WALLIS!, Claimant argues that priority based on this trademark has to be dismissed for the following reasons:
- The trademark is combined, and its verbal element “wallis” is generic. Subsidiarily, Claimant enjoys a priority right upon the designation “wallis” based upon its own trademark;
- The canton of Valais, as a public entity, should enjoy a priority right against anyone with regard to the registration of the designation under which it is known in the public as a domain name in the ccTLD of the country of its location.
Finally, Claimant considers that Respondent acted in bad faith and should have transferred the domain name back to his employer once his contractual relations with the latter had terminated.
First, according to Respondent, article 29. 2 CC defines the right of natural persons, but not of public entities, to their name. Although Respondent recognizes a right on its name “Valais”, “Wallis” or “Valese” to Claimant, in his view, this right cannot be exclusive. This is even more true, according to it, in view of Claimant's collective trademark, by which it has waived its exclusive rights on its names.
Second, Respondent ads that the LCD does not apply in the present case, as parties are not in a situation of competition.
Thirdly, Respondent argues that the combined trademark VALAIS-WALLIS owned by Claimant cannot be used to claim rights to parts of the trademark, which anyways do not cover the same classes of products as those covered by Respondent's trademark.
In view of the above, Respondent is of the opinion that Claimant has waived its exclusive rights on its names.
As regards the issue whether the registration and/or use of the domain name <wallis.ch> infringes Claimant's right in a distinctive sign under the law of Switzerland, Respondent argues the following:
- Respondent acted with the consent of the State Technical School in Computer Engineering, and hence of the canton of Valais;
- In the early years of the website “www. wallis.ch”, Claimant was not interested in the domain name <wallis.ch>, but only in <valais. ch>; it was only in June 2008 that Claimant registered the German trademark WALLIS no. 576368;
- Respondent never had the intention to use <wallis.ch> for services not related to the “Wallis” and will continue this policy in the future, as has been the case for the last 15 years;
- The present case cannot be compared with former ones: for example, the Supreme Court has allowed the use of the word “Appenzell” to designate a company (Supreme Court decision 112 II 369); former cases of domain name transfer referred to names of a city but not of a canton (see Supreme Court cases 128 III 401 Luzern and 128 III 353); and, contrary to the case Schweizerische Eidgenossenschaft handelnd durch die Schweizerische Bundeskanzlei v. Stefan Frei, WIPO Case No. DCH2006-0003, the “canton du Valais” never uses the short form “Wallis” to designate itself but always the official name, whereas the short names “Valais” and “Wallis” are used to designate the region and the domain name <valais. ch> is used for touristic but not for political purposes.
As regards trademarks, Respondent alleges the following:
- Claimant had not objected to the registration of Respondent's trademark;
- Said trademark has been used by the Respondent on its website;
- The Supreme Court has recognized the right of the owner of a trademark to the corresponding domain name e. g. in the <berneroberland. ch> case (Supreme Court Decision 126 III 239);
- Claimant has waived its right to the domain name <wallis.ch>, in particular due to the fact that it had not objected to the registration of Respondent's trademark, that the disputed domain name had been used by Respondent for more than fifteen years, whilst its main page licensed to Claimant for almost ten years, taking Claimant until 2007 to express the will to take over <wallis.ch>;
- All the work Respondent had undertaken to bring Wallis onto the Internet, including registration of <wallis.ch>, had been done in its spare time and not under the name of the School and hence of State of Valais.
For all these reasons, Respondent is of the opinion that Claimant may not benefit from the protection of article 29. 2 of the CC for the name “Wallis” and that it has no right to the transfer of the disputed domain name.
According to paragraph 24 of the Rules of procedure, the Expert shall decide on the request on the basis of the pleadings of both parties and the submitted documents in conformity with these Rules of procedure.
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 law of Switzerland or Liechtenstein (paragraph 24 (c) of the Rules of procedure).
In particular, a clear infringement of an intellectual property right exists according to paragraph 24 (d) of the Rules of procedure when
- 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
- the Respondent has not conclusively pleaded and proven any relevant grounds for defense; and
- the infringement of the right justifies the transfer or deletion of the domain name, depending on the remedy requested in the request.
Claimant mainly bases its request on the names “Valais”, “Wallis” or “Valese”, depending on the official Swiss language retained.
Under Swiss law, protection of name results of article 29. 2 CC, according to which the person harmed by the usurper of its name can take action in court in order to stop the usurpation. Contrary to what Respondent asserts, it is not contested under Swiss law that public entities such as Claimant may enjoy, as any other legal subject, a right on the name based on article 29. 2 CC (ATF 112 II 369, 72 II 145, ATF 128 III 353 / Montana; ATF 128 III 401 / Luzern). Cantons, in particular can defend their name based on article 29 CC (Roland Bühler, Basler Kommentar, N. 6 ad art. 29 CC). This has also been confirmed under the present alternative dispute resolution system in the case Schweizerische Eidgenossenschaft handelnd durch die Schweizerische Bundeskanzlei v. Stefan Frei, WIPO Case No. DCH2006-0003.
Contrary to the opinion of Respondent, the name “Wallis” is also protected even if it is not preceded by the term “Kanton”. Contrary to the denominations “Berneroberland” (ATF 126 III 239 3b) or “Lenzerheide-Valbella” (BCH 2004-0016), which represent denominations considered as being in the public domain, the word “Wallis” represents an old and well known public law corporation. The denomination “Wallis” can be used as a synonym to “Kanton Wallis”. The term “Wallis” appears for example on official websites of the Swiss Confederation and is also used in the own Constitution of the canton.
In addition, Claimant owns a collective combined trademark VALAIS-WALLIS since July 29, 1997 for products under classes 29, 30, 31, 32 and 33. The mere fact that Claimant filed a collective trademark, allowing its use by third parties under certain strict conditions, does not mean that Claimant has waived its exclusive right on its names but rather that it precisely makes use of them.
Based on the above, the Expert concludes that Claimant has a right in the distinctive sign “Wallis” under the law of Switzerland.
In the present case, several distinctive signs are at stake. As mentioned by both parties, both Claimant as well as Respondent have registered trademarks which include the term “Wallis”.
Claimant registered the combined collective trademark VALAIS-WALLIS on August 5, 1998; the trademark is registered in classes 29-33, covering mainly food stuffs and beverages.
On its side, Respondent Julen & Schnidrig Engineering is the owner of the trademark WALLIS.CH – LINKS ZUM WALLIS!, registered on December 8, 1999 for classes 9, 35, 38, 41 and 42, mainly for products and services relating to the Internet and computing.
However, as mentioned by Claimant, both Claimant's and Respondent's trademarks contain dominant figurative elements. The verbal elements of the trademarks, be it “valais-wallis” for Claimant or “wallis.ch - Links zum Wallis!” for Respondent are relatively weak and may consequently not be usefully invoked if one is to identify whether one is in presence of a clear infringement of Claimant's rights in this Expert's view.
For this reason, the Expert will concentrate on Claimant's right to its name as well as, if and when relevant, competition law issues, bearing in mind that, when two exclusive rights conflict, a balance of interest needs to be carried out (ATF 125 III 91, ritz. ch). It should also be specified here that one is not confronted in the present case to litigation between homonyms. Whereas the Canton of Valais can base itself on the name “Wallis”, Respondent does not have such a right to the name “Wallis”. In the absence of any risk of confusion between two rights to a same name (as was for example the case in ATF 128 III 353, Montana. ch) a balance of interests between two names is not relevant here. The balance of interests will take into consideration all the circumstances of the case.
Under article 29. 2 CC, complainants have the right to protect their names against uses that create a risk of confusion or wrongly imply an association with a third party. If a third party makes use of the distinctive identifying effect of an name and creates a appearance of a personal, idealistic, spiritual or commercial connection with that name, such activity constitutes an infringement under Swiss law (ATF 116 II 463, consid. 3b, Coca-Cola; 112 II 329, consid. 3g, Appenzell). The same notion of risk of confusion applies in the same way for all distinctive signs (ATF 127 III 33, consid. 4). It is drawn from the one admitted in competition law and in particular in article 3 lit. d LCD which qualifies as unfair the behavior of the person who takes measures which are of nature to create confusion with products, works, services or business of someone else. Any behavior by which the public is led to be mistaken by the creation of a risk of confusion is included, in particular when said risk is established in order to exploit to their benefit the reputation of a competitor (ATF 128 III 353 consid. 4, Montana; see also Schweizerische Eidgenossenschaft handelnd durch die Schweizerische Bundeskanzlei v. Stefan Frei, WIPO Case No. DCH2006-0003).
Several cases, both in Switzerland and abroad, have admitted the risk of confusion in cases of cities or countries, where their name had been registered and used by third parties to provide information on the Internet. In all these cases, it was admitted that the average user of Internet would expect to find, under websites appearing under the domain names relating to cities or countries, information emanating from these authorities (see cases <heidelberg. de>, <braunschweig. de>, <celle. de>, <ansbach. de>, quoated by Rolf H. Weber, e-commerce und Recht, 2001, p. 156-167 as well as ATF 128 III 353 consid. 4, Montana and Schweizerische Eidgenossenschaft handelnd durch die Schweizerische Bundeskanzlei v. Stefan Frei, WIPO Case No. DCH2006-0003).
In the present case, the word “Wallis” is not a designation which belongs to the public domain, contrary to the case of “Berneroberland” (ATF 126 III 239, consid. 3b). It designates, as already mentioned, the Canton of Valais, in German. This name having been registered and used by a third party, the Expert has to determine whether there is a risk of confusion, in the eyes of the public, between the second level domain name “Wallis” registered by Respondent under the ccTLD <. ch> and Claimant's name.
In the present case, the registration and the use of the domain name, at least until an agreement was found, constituted a priori an infringement of Claimant's right. A risk of confusion with Canton of Valais was clearly created. Not only is the canton nationally and internationally known for its touristic activities relating to summer and winter sports; for local, national and international German speaking Internet users, the domain name <wallis.ch> clearly refers to an official website at which one can find general official information and/or official information relating to tourism. At the date of registration and until Claimant and Respondent found an agreement according to which Internet users would be redirected to the official website of the Canton of Valais, Respondent benefited from, and exploited Claimant's reputation by attracting on its website users looking for information on the Canton and on companies established in Valais or at least in the Swiss German part of the Canton.
Respondent's arguments have been stated herein above under point 4. B. Only the relevant arguments shall be considered here.
Respondent first argues that, whilst developing his projects in the field of tourism, it acted in its spare time and with the consent of the State Technical School in Computer Engineering and hence of the Canton of Valais. The mere fact that a server had been rented to the School by one of the Respondents does not mean that the School adhered to the activities of Mr. Julen. Although some submitted press articles seem to support this fact, no element of proof has been submitted which clearly proves that consent to register and then use the domain name <wallis.ch> has been given. Indeed, a letter of the “Union valaisanne du Tourisme” to the Head of the Department of economic affairs mentions that at a technical level, competences of the Superior School of Management and Computing – the school changed name several times - were being used, but no mention is made of Respondent nor of use of names or trademarks.
Besides, use by the “Union Valaisanne de Tourisme“ of an email provided by Respondent does not prove the existence of an agreement to register the domain name, in particular in the early days of the Internet, where most people, in particular outside the world of computing, were not familiar with the ins and outs of domain names and domain grabbing.
Respondent, itself a specialist in the field of computing, was certainly aware of the significance a domain name such as <wallis.ch> could have for the Canton, even in 1995, and should have made sure to act in loyalty with his employer, including the Canton of Valais. It should have requested an express authorization. On the basis of the file, this seems not to have been the case. Even the fact that Claimant did not oppose registration of the domain name cannot be interpreted as an implicit acceptance of said registration, as one cannot expect from competitors to ensure domain name intelligence, and check all domain names that are being registered, as no public registry comparable to the ones accessible for trademarks is available for domain names.
Respondent further claims that the lapse of time and the fact that it had been in a contractual relationship with “Wallis Tourismus”, allowing the Claimant to use the first page of <wallis.ch> as the German entry point to its own touristic homepage, prevent Claimant from requesting the transfer of the domain name <wallis.ch>. These are relevant grounds for defense which are to be examined further. They may be examined jointly under the point of view of forfeiture:
The first question to examine here is as of which point in time Claimant was expected to have been aware of the use of its name by Respondent. As mentioned, one cannot expect from Claimant to be aware of all registrations of domain names. However, Claimant did not oppose the registration of Respondent's trademark WALLIS.CH – LINKS ZUM WALLIS! in 1999. Claimant argues that the fact that he never engaged the costs of opposing the trademark nor of requesting its cancelation was the result of a decision. Whether this was the case or if it was the result of negligence need not be answered here. What is relevant is the fact that at the date of publication of the trademark, on December 31, 1999, Claimant must have been aware of the probable existence of a domain name <wallis.ch> and had the possibility to see who had registered it.
On February 29, respectively March 2, 2000, Respondent and Claimant, through Wallis Tourismus, signed an agreement according to which the former granted to the latter the right to use <wallis.ch> as its homegate and to have any access to <wallis.ch> directly connected to Wallis Tourismus' website. From that point in time at the latest, Claimant knew or at least should have known that its name had been used. Claimant signed a contract which explicitly mentioned at point 1 that Respondent Julen & Schnidrig Engineering was registered as owner of the domain name <wallis.ch> with Switch.
According to evidence provided by both parties, this contract seems to have been applied without problem at least until May 2008, date at which the representative of Claimant has expressed the latter's wish to obtain the transfer of the domain name <wallis.ch>. In February 2009, a cease and desist letter was sent to Respondent and on September 30, 2009 the contract was resigned by Claimant for December 31, 2009.
According to the law, late exercise of one's right to a name can be considered as abusive under article 2. 2 CC. It is not the absolute personality right to the name as such that is subject to forfeiture, but the individual claims resulting from article 29 CC. The condition is that the holder of the name behaves in a way which contradicts its acceptance of the use of the name by a third party until he exercises his right and that the sole assertion of the claims iniquitously disadvantages the other party (Basler Kommentar, Roland Bühler, N. 71 ad art. 29 CC).
According to the Federal Tribunal, a forfeiture of rights for a long lapse of time cannot be accepted easily, as, according to article 2. 2 CC, a right is not protected only where the abuse is obvious (ATF 114 II 111 consid. 4). Forfeiture is admitted only under the condition that the right holder has tolerated the violation of his rights through the use of an identical or similar sign without contradiction during a long time and that, in the meantime, the violator has acquired valuable vested rights to the sign (ATF 128 III 353 consid. 5. 2, and the further case mentioned therein). The longer the right holder accepts the use of the name, the more the infringer may expect bona fide that the right holder will further tolerate the violation and will not expect that he gives back the acquired vested rights (ATF 109 II 340 consid. 2a). In exceptional cases, the right holder can see his rights forfeited even against a third party which deliberately arrogated himself a confusing sign, in particular when, for a long time, no legal measures have been undertaken and have lead to the conviction that the infringement is tolerated (ATF 109 II 343 consid. 2c). In order to be able to oppose the right holder the fact that he has tolerated without contradiction the use by a third party of an identical or similar sign or name, the right holder must have been aware of the violation of his rights (Jann SIX, Der privatrechliche Namensschutz von und vor Domain Namen im Internet, 2000, p. 127).
In the present case, “Wallis Tourismus” had been aware of the existence of the infringing domain name at the latest as of March 2, 2000, when it signed the cooperation contract between the parties; as mentioned above, one could however expect it to have been aware of the existence of that domain name already on December 31, 1999.
The question hence may - and has to - be asked whether eight years of acceptance of the use of one's own name by a third party is not a sufficient time in order to consider the claim for transfer as abusive. In order to answer this question, all elements of the case have to be considered. In casu, this is in particular the case due to the fact that, during all these years, a contract had been passed and applied between the parties, which stated that Respondent Julen & Schnidrig Engineering had been registered with SWITCH as “owner” of the domain name <wallis.ch>, and was actually “leasing back” the use of the name to its owner, the Canton of Valais. Such a provision can however not be interpreted in a way that would mean that the right owner to the name, the Canton of Valais, would have abandoned his personal right. As already mentioned Respondent could and should have known and expected that the holder of such a personal right as a name, in particular of an official collectivity, might one day want to recover it. Had he really wanted to be absolutely sure of its rights, Respondent would have requested an express authorization from the State at the time it registered the domain name. Proof of such authorization however has not been provided.
As regards the condition of the acquisition of vested rights, the present Expert is of the opinion that Respondent has not proved any acquisition of a position which is worthy of protection. Although Respondent uses the websites “www. wallis.ch/jse” and “www.wallis.ch/tschiffra”, these websites only provide links to other websites, which are not dependent on the domain name <wallis.ch>. Respondent has not proved that it acquired an important position on the market, or that it imposed the name Wallis for its own business. Besides, although put forward, no important investment linked to the development of a business based on the eight year long contractual relation has been proven. On the contrary, it seems that Respondent's websites have not been updated for a long time and that none of the websites whose links are still active on Respondents portal use an email address with a <wallis.ch> termination.
In conclusion, the Expert is of the opinion that Claimant's right to its name is not forfeited and that Respondent has not conclusively pleaded and proven any relevant grounds for defense.
For the above reasons, in accordance with paragraph 24 of the Rules of Procedure, the Expert orders that the domain name <wallis.ch> be transferred to Claimant.
Daniel Kraus
Expert
Dated: May 11, 2010