Eco and echo : Greek root of words explained in UDRP decision

Directnic

UDRP has been denied.

A UDRP decision for the domain Echomedia.ch, resulted in some Greek grammar analysis.

Ecomedia AG of Nänikon, Switzerland filed a UDRP against EchoMedia GmbH, of Wollerau, Switzerland.

So one company operates from Ecomedia.ch and the other from Echomedia.ch. The Complainant argued that this would create “unacceptable confusion.”

The WIPO panel drilled into the root of the problem, and the fact that “eco” is used in words such as “economy” and “ecology” while “echo” is the rebound of sound waves.

They advised the two parties to take their dispute to the Swiss courts instead, and dismissed the Complainant’s demands for a domain transfer.

We’d like to commend the panelist for identifying the Greek root of both words, and in a rather pedantic moment, add the following:

The eco prefix is a Latin translation of the word ΟΙΚΟΣ (ikos/home, house) which is used in Greek as a prefix for words such as ΟΙΚΟΝΟΜΙΑ (ikonomia/economy) and ΟΙΚΟΛΟΓΙΑ (ikologia/ecology.)

The “ΟΙ” diphthong is pronounced as a regular “I” would.

Meanwhile, echo is the Latin translation of the Greek word ΗΧΩ (iho) which means – well – echo. While it can be used as a prefix, it’s not as common as “eco” for that purpose. Therefore, the word “Echomedia” is an invented word, indicating media that project an echo.

And there you go, Mr. Portokalos was right. 😀

The translation of the WIPO decision from German follows.

WIPO Arbitration and Mediation Center
EXPERT ULTIMATE
Ecomedia AG, OFFIX Holding AG v. Echo Media GmbH, Cengiz Peker
Method No. DCH2017-0012

1. The parties

The applicants are (1) Ecomedia AG of Nänikon, Switzerland and (2) OFFIX Holding AG of Freudwil, Switzerland, represented by Badertscher Rechtsanwälte AG, Switzerland.

The applicant is EchoMedia GmbH, Cengiz Peker from Wollerau, Switzerland, internally represented.

2. Dispute domain name

The object of the procedure is the domain name <echomedia.ch> (hereinafter the “domain name”).

The Domainvergabestelle is SWITCH, Zurich, Switzerland, the Domainvergabestelle is Hostmax GmbH.

3. Procedure

The application was sent by mail to the WIPO Arbitration and Mediation Center (the “Center”) on 1 September 2017 and by post on 2 September. The application is based on SWITCH’s procedural rules for dispute settlement procedures for “.ch” and “.li” domain names (“procedural regulations”), which entered into force on 1 March 2004.

On 5 September 2017, SWITCH, the domain administrator, confirmed that the applicant was the owner and administrative contact person of the domain name. The center noted that the application meets the formal requirements of the procedural regulations.

On 12 September 2017, the application was duly served and the dispute settlement procedure initiated. The deadline for submission of a petition was 2 October 2017. The petition was already received on 18 September 2017.

On 21 September 2017, the petitioner informed the center that he did not wish to participate in a conciliation dispute. On the same day, the parties were informed that no conciliation ruling would take place due to the email of the applicant of 21 September 2017. The applicant was informed by the Center of the possibility of requesting the continuation of the procedure and applied for it on 21 September 2017.

On 22 September 2017, the proceedings were continued in accordance with Article 19 of the Rules of Procedure and the Center appointed Theda König Horowicz as an expert on 29 September 2017. The expert ascertains that he has been duly appointed and has declared his independence in accordance with paragraph 4 of the Rules of Procedure.

4. The facts

The applicant 1 is active in the field of office communication is a subsidiary of the applicant 2. Both are based in the canton of Zurich.

Since 3 December 1986 the applicant 1 has been registered in the commercial register of the canton of Zurich. The purpose of the company is in particular “the import and export of machines and equipment as well as consumables for office communication”.

Applicant 2 is the owner of the following Swiss trademark registrations:

– mark ECOMEDIA No. P-499914, in classes 16 and 42, since 21 May 2002

– Brand E-SUPPLIES E-BUSINESS BY ECOMEDIA No. P-477097, in Classes 16 and 42, since 4 September 2000.

The applicant has been registered in the commercial register of the Canton of Zug since 30 July 2002 under the name Echomedia GmbH. The purpose of the company is, in particular, “the provision of mobile, digital and multimedial value-added services, purchasing, processing and integration of any digital content as a content service provider”.

The applicant registered the disputed domain name on 19 June 2009 and operates under this domain name a website in which she offers her products and services in the field of mobile and web services.

The applicant 1 sent the petitioner a warning letter on 13 June 2017 in which the petitioner was asked to change her company name and to dispense with the disputed domain name.

5. Party sponsorship

A. Applicants

The applicants claim that they have rights in Switzerland under the name “ECOMEDIA”, since this name is a company part of the applicant 1 and has been registered and registered as a trademark by the applicant 2.

They declare that the applicant, the younger company Echomedia GmbH, which was founded in 2002, does not differ sufficiently from the company name of the applicant 1, the applicants from this younger company first learned in 2017. The practically identical use of “Echomedia” implies an unacceptable risk of confusion with the company name ECOMEDIA, which has existed since 1986. Such a confusion occurred in 2017, when a customer between the website and the mail address of the applicant 1 (“www.ecomedia.ch” and “info@ecomedia.ch”), as well as those of the applicant (“www.echomedia.ch” and “info@echomedia.ch”).

Furthermore, by the registration or use of the disputed domain name by the applicant, there is a breach of the Swiss trademark rights of the applicant 2, in particular because the applicant offers similar services as those of the applicants. There is therefore a likelihood of confusion since advised customers could be in the wrong notion that the services offered under the disputed domain names could come from the applicant 1.

B. Applicant

The petitioner points out that her company name has existed since 2009, that this was approved by the commercial register and that no conflicts of interest with the company of the applicant 1 had been reported. A consensual solution regarding the domain name could be found if the applicants did not seek a procedure in order to force the change of the company name of the applicant.

6. Grounds for decision-making

Pursuant to paragraph 24 (a) of the Rules of Procedure, the expert must decide on the application in accordance with the procedural rules and on the arguments of both parties and the documents submitted. Pursuant to paragraph 24 (c) of the Rules of Procedure, the expert shall submit the application if the registration or use of the domain name is a clear violation of a trademark right which the applicant is entitled to under Swiss or Liechtenstein law.

In accordance with paragraph 24 (d) of the Rules of Procedure, such an infringement occurs in particular where:

(i) both the existence and the infringement of the right of the right to be attested are clear from the text of the law or from a recognized interpretation of the law and from the facts submitted and are proved by the evidence submitted; and

(ii) the respondent has not submitted and demonstrated conclusively relevant defenses; and

(iii) the infringement justifies the transfer or deletion of the domain name, depending on the legal challenge raised in the application.

a. Inventory of license rights

The applicants have proved that you have the trademark “ECOMEDIA” in Switzerland: the applicant 1 has rights over “ECOMEDIA” by her company name and the applicant 2 by two Swiss trademark registrations which contain the ECOMEDIA mark.

b. Clear infringement of license rights

On the basis of the available documents, the expert notes that the company name of the applicant was registered in 2002 in the Commercial Register of the Canton of Zug. The disputed domain name was registered in 2009. The applicants have earlier trademark rights by virtue of the name “ECOMEDIA”, which is clearly similar to the name “EchoMedia”, but did not claim these license rights until 2017 via “ECOMEDIA”.

The question of the forfeiture of the rights of the claimants arises, which question is raised ex officio (p. 49). The question of the forfeiture of the right to sign, taking into account the regulation in the European Union, Basel, 2001, p.

According to jurisprudence, the belated enforcement of an infringement of intellectual property rights may lead to the forfeiture of the claims within the meaning of Article 2, Section 2 of the Civil Code (Bundesgericht, judgment of 1 April 2010, BGer 4A 638/2009). Cumulative prerequisites for this are (i) the inactivity of the claimant, (ii) the recognizability of the infringement, (iii) the building up of a valuable possession of the infringer, and (iv) the good faith of the infringer (see Lorenza Ferrari Hofer, 638/2009, AJP 2010 p. 1613-1615).

The applicants claim that they have learned about them only in 2017, ie 15 years after registration of the company name Echo Media GmbH of the applicant and 8 years after registration of the disputed domain name <echomedia.ch>.

It is true that the length of ignorance alone is not correct to conclude whether or not it has been forfeited. The expert notes, however, that all parties are located in the same geographic area: the applicants in the canton of Zurich and the applicant in the canton of Zug.

In addition, the applicant 1 has a registered trade name in the commercial register for many years and the applicant 2 is the owner of a registered trademark. For these reasons, one could assume that the applicants are subject to a certain obligation to monitor their protected trademark rights. The existence of such monitoring does not appear from the documents before us.

In this context, the expert further notes that the disputed domain name is linked to an active website that promotes the services of the applicant. The applicant is therefore active under her company name and the disputed domain name, in the German language, ie in the same language as that of the applicants. The question therefore really arises whether the applicants have carried out the necessary monitoring measures for their license plates and have established the infringement in a timely manner. In addition, the applicant has apparently built up an acquis in this long period of more than 8 years, but the extent of this can not be assessed by the expert in this rapid procedure and on the basis of the documents available.

The expert also notes that the company name, or the ECOMEDIA brand of the applicants begins with “Eco” and the disputed domain name <echomedia.ch> with “echo”. Although “eco” and “echo” are relatively descriptive and differ only in one letter, the two components, in their usual use, point to different meanings: “Eco” is often associated with “ecology” or “economy”, where ” echo “is rather associated with noise (resonances).

As stated in the WIPO Proceedings of the Procter & Gamble Company contre Triall SA , WIPO Procedure No. DCH 2014-0001 , the expert concludes that the references in these files do not enable him to establish whether the registration or use of the disputed domain name is clear Infringement of the rights of the applicants. The question of possible forfeiture can only be made in the context of a thorough factual and legal examination by the Swiss courts and not in a procedure like this.

Under these circumstances, the expert can not grant the application because the registration or use of the disputed domain name does not result in a clear violation in accordance with paragraph 24 (c) of the procedural regulations.

7. Decision

According to paragraph 24 of the Rules of Procedure, the expert rejects the application.

Theda King Horowicz
expert
Date: 13 October 2017


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