YouTube, LLC v. Matthias Moench
Case No. DCH2007-0010
1. The Parties
The Claimant is YouTube, LLC, (Google Inc.), Mountain View, California, United States of America, represented by Schellenberg Wittmer, Switzerland.
The Respondent is Matthias Moench, Horni Mesto, Czech Republic.
2. Domain Name
The dispute concerns the following domain names, registered with SWITCH:
3. Procedural History
The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2007. On June 20, 2007, the Center transmitted by email to SWITCH a request for verification in connection with the domain names at issue. On June 23, 2007, SWITCH transmitted by email to the Center its verification response confirming that the Respondent is listed as the 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, 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 August 2, 2007. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was August 22, 2007.
No Conciliation conference has taken place within the deadline specified in paragraph 17(b) of the Rules of procedure.
The Respondent has neither filed a Response nor expressed his readiness to participate in a Conciliation in accordance with paragraph 15(d) of the Rules of Procedure.
On August 29, 2007, the Center notified the Claimant accordingly who, on August 31, 2007, 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 September 26, 2007, the Center appointed Dr. Bernhard F. Meyer-Hauser 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 is a company incorporated under the name You Tube, in California, USA, and since November 2006, a subsidiary of Google, Inc., a company incorporated in Delaware, USA.
Founded in February 2005, as a leader in online video sharing and other online services, Claimant owns numerous trademark and service mark registrations with the designation “YouTube” in several countries, including Switzerland.
The domain name <youtube.com> was registered in February 2005 and has been used by Claimant as a website since April 2005.
In particular, Claimant registered its trademark in Switzerland under the numbers:
- CH 559078 (word mark) on July 30, 2006.
- CH 559081 (“You Tube” logo) on July 30, 2006.
- CH 559188 (“You Tube” logo) on July 30, 2006.
The registrant of the disputed Domain Names, according to the “Whois” database of SWITCH, is Respondent, Mathias Moench, who registered the domain names between January and May 2007.
5. Parties’ Contentions
Claimant asserts that Respondent, on its website “www.youtube.ch”, offers to his subscribers a file sharing service identical to Claimant’s. The other six Domain Names in dispute lead to web portals with several hyperlinks, providing access to various web contents and internet services related or similar to Claimant’s internet services or other services.
Claimant owns the right in a distinctive sign according to Article 13 of the Swiss Federal Trademark Protection Act (“TPA”).
Additionally, Claimant submits that the term “YouTube” is a distinctive and protected term under Article 3 (1) (d) of the Swiss Unfair Competition Act (“UCA”). Since competition claims are based on the priority of use, Claimant has an established priority in Switzerland since it started using the term “YouTube” and made the website “www.youtube.com” accessible on the internet as early as in 2005.
Furthermore, Claimant takes the view that the Domain Names at issue are identical and/or confusingly similar to its trademarks in Switzerland. The Domain Names owned by Respondent, if at all, differ only in one letter from Claimant’s trademark and obviously attempt to take advantage of typing errors of Internet users.
The use of Claimant’s distinctive sign as a domain name by Respondent for the promotion of its own business and services constitutes an infringement of Claimant’s trademark and qualifies as unfair competition in bad faith. It is apparent that Respondent is attempting to attract internet users to his own websites by unfairly exploiting the reputation of Claimant’s name and trademark.
Although being correctly served of 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), the Expert is thus entitled to draw therefrom such inferences as he deems appropriate.
6. Discussion and Findings
According to paragraph 24 of the Rules of Procedure, the Expert shall make a decision based upon mainly two elements:
- if Claimant owns a right in a distinctive sign, and
- if the registration of the Domain Names by Respondent constitutes a clear infringement of such right under the laws of Switzerland or Liechtenstein.
A. Claimant has a right in a distinctive sign
Given the fact that Claimant proved three registrations of the YOUTUBE word mark and logos, the Expert holds that Claimant established its exclusive right in its distinctive sign in Switzerland.
B. The registration or use of the Domain Name at issue constitutes a clear infringement of the Claimant’s right
The Domain Names at issue are:
Claimant is the holder of the registered word mark and logos “YouTube” and was also the registrant of the domain name <youtube.com> well before Respondent registered the disputed Domain Names. A simple visual and phonetic test reveals that the Domain Names are identical or at least confusingly similar to Claimant’s trademark and logos under which Claimant is nationally and internationally known. The fact that Respondent not only filed one but seven variations of Claimant’s trademark and logo is further evidence that Respondent is trying to unfairly exploit the recognition and reputation of Claimant’s mark. The registrations and Respondent’s conduct in this proceeding shows all attributes of cyber- and typosquatting which constitutes bad faith and a breach of Article 2 of the Swiss Unfair Competition Act (UCA).
The Swiss Federal Supreme Court has held that domain names are comparable to personal names, business names and trademarks and therefore may be regarded as so-called distinctive signs (decision of the Swiss Federal Supreme Court of May 2, 2000, <berneroberland.ch>, BGE 126 III 239, 244). If a domain name collides with a protected trademark, the owner of the trademark may, under certain circumstances, be entitled to prohibit the use of the domain name by others (BGE 126 III 244-245).
Domain names may be regarded as distinctive signs under Swiss competition law (BGE 126 III 245). Art. 3 (1) (d) UCA prohibits measures that are likely to cause confusion with products, works, services or the business of others.
So, by registering the Domain Names at issue which are identical or at least very similar to Claimant’s well known trademark and logos in Switzerland, Respondent created a likelihood of confusion. Internet users are likely to assume a connection between Respondent’s website and Claimant’s trademark-protected products. Respondent appears to be trying 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.
7. Expert Decision
For the above reasons, in accordance with paragraphs 24 of the Rules of Procedure, the Expert orders that the domain names, <yotube.ch>, <youtoub.ch>, <youtub.ch>, <youtube.ch>, <yuotube.ch>, <yutoube.ch>, <yutube.ch>, be transferred to the Claimant