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WIPO Arbitration and Mediation Center

EXPERT DECISION

Stone Group AG v. Hans Eisenring AG

Procedure no. DCH2016-0023

1. The parties

The applicant is Stone Group AG from Uznach, Switzerland, represented by MSG Rechtsanwälte & Notare AG, Switzerland.

The opponent is Hans Eisenring AG from Sirnach, Switzerland, represented by Hepp Wenger Ryffel AG, Switzerland.

2. Domain name in dispute

The subject of the proceedings is the domain name (hereinafter the “disputed domain name”).

The registry is operated by SWITCH; the domain registry is united-domains AG.

3. Procedure

The request was received by the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2016 by email and post. The application is based on the SWITCH procedural regulations for dispute settlement procedures for “.ch” and “.li” domain names (“procedural regulations”), which came into force on March 1, 2004.

On October 11, 2016, the domain registry SWITCH confirmed that the respondent is the owner and administrative contact person for the domain name in dispute. The center determined that the application complies with the formal requirements of the procedural regulations.

On October 17, 2016, the application was duly served and the dispute settlement procedure was initiated. The deadline for submitting a response was November 6, 2016.

The response to the application was received by the center on November 3, 2016 by email and by post on November 4, 2016. On November 4, 2016, the respondent announced that she was not ready to take part in an arbitration hearing. On the same day, the center informed the applicant of the possibility of requesting the continuation of the dispute settlement procedure, which she did on November 16, 2016.

On November 16, 2016, the procedure was continued in accordance with Section 19 of the procedural regulations, and the center appointed Tobias Zuberbühler as an expert on November 21, 2016. The expert determines that he has been duly appointed and has declared his independence in accordance with Section 4 of the procedural regulations.

4. Facts

The applicant is a Swiss stock corporation that has been entered in the commercial register since 2002. According to the excerpt from the commercial register, their purpose is the "design, project planning, CAD planning, manufacture, assembly of and trading in natural stone of all kinds in the areas of kitchen and fireplace covers, wall and floor panels, as well as interior fittings and facade constructions".

The applicant is the owner of the Swiss word / figurative marks "STONE - Stone Group AG" and "STONE LOUNGE" (priority: April 17, 2012), which are registered in classes 19, 37 and 42 for goods and services with natural stones.

The applicant markets its products and services via the website “www.stone.ch”, which is linked to its main website “www.stonegroup.ch”. The corresponding domain name was registered on January 15, 1998 and, according to the applicant, was taken over by the applicant on June 10, 2009.

The opponent is a Swiss stock corporation that has been registered in the commercial register since 1988 with the purpose of "manufacturing, assembling and selling kitchens and all associated equipment and accessories" as well as "processing, assembling and trading natural stones".

The respondent has a right of use (from Strasser Steine ​​GmbH; Appendix 3 to the reply to the request) to the Swiss word mark No. 691947 "ST-ONE" (priority: 10 August 2016), which is used, among other things, for kitchen furniture and the installation of kitchen equipment in the classes 20, 37 and 42 is registered.

The domain name in dispute was registered for the first time on March 1, 2001 and, according to the applicant's claim, was taken over by the opponent on February 2, 2016. The domain name is linked to the website “www.eisenring-kuechenbau.ch” of the respondent, through which natural stone kitchen islands “ST-ONE” are offered.

5. Submissions from the party

A. Applicant

In summary, the applicant submits the following:

The only difference between the disputed domain name and that of the applicant is the addition of a hyphen. The domain names are almost identical. It cannot be assumed that consumers will immediately perceive the designation “st-one” as two words and thus as “st-1”. Rather, it can be assumed that the label is pronounced as “stone”. It is not understandable why the respondent uses the letters “st” and not “he” (for Hans Eisenring) before the word “one” and why the number “1” is not used for “one”. The opponent's approach gives the impression of a conscious reference to the applicant's license plate number and services in order to be able to benefit from their reputation.

It should also be noted that the two parties offer similar products and services, targeting the same audience. Some of them even advertise in the same living magazines. This reinforces the impression that the two companies may have an economic connection (indirect risk of confusion).

The applicant's domain name () was not only registered earlier, it was also used earlier than the domain name in question. Based on the priority principle, the applicant's right to mark has priority over that of the opponent.

B. Respondent

In summary, the respondent submits the following:

The brand ST-ONE is a combination of the first two letters "ST" of the company name of the brand owner "Strasser Steine ​​GmbH" and "ONE", in English "one". The sign is clearly understood as a new word and not as "STONE".

Obviously, the Institute for Intellectual Property (“IGE”) perceived the trademark “ST-ONE” in the sense of “ST-1”, since the trademark was registered without objection. It should be indisputable that the term “stone” belongs to the common property and would be descriptive for goods made of natural stone. If the IPI had perceived “st-one” as a “stone”, it would have rejected the trademark application.

The applicant's two word / figurative marks are only protected in the form shown. In addition, because of the hyphen, “st-one” has a different meaning of its own than the English word “stone”. The mark “st-one” differs more than enough from the brands shown, both in wording, in spelling and in the form of presentation. A risk of confusion under trademark law or company law is therefore excluded.

Furthermore, the applicant's claim that her domain name has been in use for a long time and longer than the domain name in question is not true. The fact is that the content of the website “www.stonegroup.ch” was only put on the website “www.stone.ch” in the course of the preliminary correspondence between the parties.

There is also no indication that an unfair act has occurred. In addition, in the fairness check, whether there could be miscalculations on the part of the average buyer, not only the respective domain name is to be assessed, but also the content of the respective websites. When entering the domain name in dispute, the user is immediately redirected to the respondent's homepage. On this website and all accessible documents, the logo of Hans Eisenring AG is clearly and unmistakably shown, which rules out any confusion with Stone Group AG or miscalculations on the part of average consumers.

6. Reasons for the decision

According to Paragraph 24 (c) of the procedural regulations, the expert approves the application if the registration or use of the domain name constitutes a clear violation of a trademark law to which the applicant is entitled under Swiss or Liechtenstein law.

The following details can be found under Paragraph 24 (d) of the procedural regulations:

A clear violation of a trademark law exists in particular if

(i) Both the existence and the violation of the asserted trademark law are clearly evident from the wording of the law or from a recognized interpretation of the law and the facts presented and are proven by the evidence submitted; and

(ii) the respondent has not conclusively put forward or proven any relevant defenses; and the infringement justifies the transfer or deletion of the domain name, depending on the legal request made in the request.

A. The applicant has trademark rights

The applicant has proven that she is the owner of Swiss trademark rights to the word and figurative marks STONE - Stone Group AG and STONE LOUNGE. In addition, the applicant claims that she has been the owner of the domain name since June 10, 2009.

B. The registration and use of the domain name do not constitute a clear violation of the applicant's rights

In a leading decision, the Swiss Federal Supreme Court held that domain names identify the people, products, things or services behind them in their function and are therefore comparable to personal names, companies or brands (see BGE 126 III 239, 244).

If a symbol is protected by name, company or trademark law, its owner can prohibit unauthorized persons from using this symbol as a domain name because unauthorized use creates a risk of confusion, as the corresponding website can be attributed to the wrong one (BGE 4C.141 / 2002 in sic ! 2003 438 ff.).

According to Article 13 Paragraph 2 of the Trademark Protection Act ("MSchG"), the trademark owner can forbid others to use a symbol that is excluded from trademark protection under Article 3 Paragraph 1 of the MSchG. According to Article 3 Paragraph 1 lit. The risk of confusion between two brands results from the combination of character identity or similarity and identity or similarity of the goods and services.

At the beginning it should be noted that both parties have registered trademark rights. The applicant has been entered in the commercial register under the company name "Stone Group AG" since the beginning of 2002 and is the owner of the Swiss word / figurative marks STONE - Stone Group AG and STONE LOUNGE with priority since April 17, 2012. In contrast, the opponent has a right of use on the word mark ST-ONE (priority: August 10, 2016). In addition, the applicant is asserting better rights from her domain name , as the domain name in question was registered on March 1, 2001, but has allegedly only been used by the opponent since February 2, 2016.

From a legal point of view, the decisive factor is whether there is a likelihood of confusion between the identifiers of the parties. The likelihood of confusion between signs that are similar to an earlier mark in accordance with Article 3 (1) (c) MSchG and are intended for the same or similar goods or services depends in particular on the distinctiveness of the earlier mark, the similarity of the signs and the similarity of the goods and services ( Noth / Bühler / Thouvenin-Joller, SHK Trademark Protection Act, Bern 2009, Art. 3 N 45).

Since both parties sell natural stones (the opponent in the area of ​​kitchen islands, the applicant also for other uses) and in some cases advertise in the same living magazines, one can assume that the relevant public overlap to a large extent.

The level of attention of the public can vary depending on the type of service (loc. Cit., Art. 3 N 51). It should be noted that the average Internet user knows that every detail of domain names plays a role and that even the smallest deviations can be significant. In the case of domain names used exclusively on the Internet, even relatively minor deviations can thus establish sufficient differentiation (loc. Cit., Art. 3 N 56).

With regard to the distinctive character of the company name "Stone Group AG", the word / figurative marks STONE - Stone Group AG and STONE LOUNGE as well as the domain name of the applicant, the expert believes that the following factors must be taken into account:

In principle, a normal distinctiveness can be assumed originally. At the same time, it must be checked whether there are special circumstances which justify the assumption of an originally lower or higher distinctiveness (loc. Cit., Art. 3 N 81-82).

The term “stone” is directly descriptive for the goods and services of the applicant (natural stone) and therefore has no distinctive character. The applicant's word / figurative marks also essentially describe the applicant's products and services and therefore have very little distinctive character.

In contrast, the opponent's brand ST-ONE is characterized by a certain originality, in that the word “stone” is broken down into individual components (“st” and “one”), which the average attentive Internet user should be able to recognize as such. Accordingly, the IPI has basically also approved the registration of the corresponding trademark.1

In other words, Internet users should be able to distinguish the opponent's trademark and the domain name in question from the applicant's (public domain or weak) trademarks. In addition, it must be taken into account that the hyphen is unusual in a short word such as “stone” and for this reason alone, the public should ask (with appropriate attention) why the hyphen was used.

In the case law it is not yet clearly clarified (and disputed in the doctrine) whether the confusion between a label and a domain name is based solely on the wording of the domain name or on the content of the respective website and the services offered on it (cf. . BSK MSchG-Isler, 3rd edition 2017, Art. 13 N 28 mwH). The facts In the present case, in the opinion of the expert, it justifies using the content of the applicant's website when assessing the likelihood of confusion, because no one looking for the applicant on the Internet would think of putting a hyphen within the word “stone "To use. In other words, internet users with an average level of attentiveness should be expected to take a quick look at the website to see which company is behind such an unusual domain name as . However, as soon as internet users go to the opponent's website, confusion is ruled out: a clear reference to the opponent's company (Hans Eisenring Küchenbau) appears on the opponent's homepage, and the design of the website differs significantly from that of the website Applicant.

Thus, in the opinion of the expert, it is extremely unlikely that there could be miscalculations on the Internet (or due to advertisements from both companies in magazines). There is also no indirect risk of confusion because the relevant public can sufficiently differentiate between the two companies Stone Group AG and Hans Eisenring AG.

Against the background outlined above, in the opinion of the expert, there is no risk of confusion between the domain name in question and the applicant's identifier and thus no clear violation of the applicant's trademark rights through the domain name in dispute.

There is also no violation of the Federal Law against Unfair Competition (“UWG”), since the opponent cannot be accused of unfair behavior. It is unlikely that the respondent wanted to use the applicant's trademark or services when registering the domain name in question. As mentioned, the opponent's website does not contain any references to the applicant, and the opponent's website differs significantly from that of the applicant. The numerous competitors in the trade and sale of stones or natural stones should be allowed to use the generic term "stone" in business dealings, especially in a playful modification (as in the present case).

In view of the circumstances in the present case, the expert finds that the requirements of Paragraph 24 (d) (i) of the procedural regulations are not met, so that the further requirements for a transfer of the disputed domain name do not need to be examined in more detail.

7. Decision

For the reasons mentioned above, the expert decides that the application will be rejected.

Tobias Zuberbühler
expert
Date: December 5, 2016


1 In this context, one should take into account that the three-month objection period only expired after the application was submitted.