WIPO Arbitration and Mediation Center

EXPERT DECISION

Conforama Holding v. Dubin Sergey

Case No. DCH2013-0024

1. The Parties

The Claimant is Conforama Holding of Lognes, France, represented by Bugnion S.A., Switzerland.

The Respondent is Dubin Sergey of Hurghada, Egypt.

2. Domain Names

This dispute concerns the domain names <cnforama.ch>, <conferama.ch>, <confoama.ch>, <conforaa.ch>, <conorama.ch> and <onforama.ch>.

3. Procedural History

The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2013. On November 20, 2013, the Center transmitted by email to SWITCH, the “.ch” and “.li” registry, a request for verification in connection with the disputed domain names. On November 21, 2014, SWITCH transmitted by email to the Center its verification response confirming that the Respondent is listed as the holder of the disputed domain names 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”) as 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 29, 2013. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was December 19, 2013.

Since the Respondent had neither filed a Response nor expressed his readiness to participate in a Conciliation in accordance with paragraph 15(d) of the Rules of Procedure, the Center invited the Claimant on December 20, 2013 to submit an application for the continuation of the Dispute resolution proceedings. The Respondent replied to the Center’s email communication on December 21, 2014, stating that he “want[ed] to give [Claimant] these domains”. The Center acknowledged receipt of this communication on December 23, 2013 and invited the Claimant to consider requesting a suspension of the Dispute resolution proceedings to explore a possible settlement between the parties. The Claimant requested a suspension of the Dispute resolution proceedings on December 24, 2013. The Dispute resolution proceedings were suspended between January 6, 2014 and March 7, 2014, on which date the Center re-instituted the Dispute resolution proceedings upon request of the Claimant which paid the relevant fees for continuation of the Dispute resolution proceedings.

On March 18, 2014, the Center appointed Tobias Zuberbühler as Expert in this case. The Expert finds that he was properly appointed. In accordance with the Rules of Procedure, paragraph 4, the Expert has declared his independence of the parties.

4. Factual Background

The Claimant is a well-known furniture retailer in Switzerland and the owner of several international registrations for the trademark CONFORAMA (No. 448422, 613729, 850189 and 1168112) designating Switzerland and dating back to 1979.

The Respondent registered the disputed domain names on July 14, 2013. All disputed domain names are connected to parking sites with sponsored links to competitors of the Claimant.

5. Parties’ Contentions

A. Claimant

The Claimant’s position can be summarized as follows:

The disputed domain names are confusingly similar to the Claimant’s trademark because they incorporate in their entirety and with the same sequence of letters the Claimant’s CONFORAMA trademarks, which are slightly misspelled in order to confuse people (typosquatting).

The Respondent has no rights or legitimate interests in respect of the disputed domain names, because he has never been and is not currently commonly known by the disputed domain names. He does not hold any trademark or other right consisting in whole or in part in the denomination “Conforama”. Moreover, the Respondent is not using the disputed domain names in connection with any bona fide products or services.

On the contrary, the sites accessible under the disputed domain names are SEDO parking sites, containing pay-per-click commercial hypertext links. Clicking on any of the links automatically redirects the user to various sponsored links and to advertisement websites, generating money for their holder based on the “pay-per-click” model.

The disputed domain names thus infringe the Claimant’s name and trademark rights according to Swiss laws. Moreover, these domain names have been registered in bad faith. Therefore, the requirements of paragraph 24 of the Rules of Procedure are met.

B. Respondent

The Respondent has not filed any substantive response to the Request, but merely stated the following in an email to the Center on December 21, 2013: “Hello, I want to give you these domains.”

6. Discussion and Findings

A. The Claimant has a right in a distinctive sign

The Claimant has proven ownership of several CONFORAMA trademarks designating Switzerland (section 4 above).

B. The registration and use of the disputed domain names constitute a clear infringement of the Claimant’s rights

A registered trademark allows the holder to invoke protection under the Swiss Trademark Act (“TMA”). In particular, the owner of a trademark is entitled to enjoin a third party from using the protected sign for the same goods and services which it is registered for (Article 13 TMA).

In this case, the Respondent has clearly engaged in so-called “typosquatting”, i.e. in registering and using domain names with subtle changes in the spelling of (typically well-known) trademarks. Swiss legal doctrine and panelists in “.ch” Dispute resolution proceedings have consistently acknowledged and held that typosquatting violates Article 13(1) TMA and/or Article 3(d) of the Swiss Unfair Competition Act (Mark Schweizer, 5 Jahre SWITCH-Streitbeilegungsverfahren: Fair.ch?, AJP 8/2009 971, 980, referring to various .ch-decisions in fn. 76; for more recent decisions cf. Société des Produits Nestlé S.A. v. James McAvoy, WIPO Case No. DCH2013-0026, <nesspresso.ch>; comparis.ch AG v. Cifagro enterprise u.a., WIPO Case No. DCH2012-0031, <omparis.ch>; Scout24 Holding GmbH and Scout24 International Management AG v. IP Matters Corp, Case No. DCH2012-0008, <imoscout24.ch>).

The Panel notes furthermore that typosquatting has also been considered as evidence of bad faith under the Uniform Domain Name Dispute Resolution Policy (“UDRP”) adopted by ICANN on August 26, 1999.

The Respondent thus clearly infringes the Claimant’s trademark rights and violates unfair competition law.

7. Expert Decision

For the above reasons, in accordance with paragraph 24 of the Rules of Procedure, the Expert orders that the disputed domain names <cnforama.ch>, <conferama.ch>, <confoama.ch>, <conforaa.ch>, <conorama.ch> and <onforama.ch> be transferred to the Claimant.

Tobias Zuberbühler
Expert
Dated: April 1, 2014