Notch.ch: Respondent in UDRP wanted to pass domain on after his death

What do you do with your domain upon death? You give it to your kids; that’s a plausible option.

In the case of Notch.ch, the domain’s registration date isn’t certain but its registrant wanted to give it to his son upon death, after holding onto it for “almost 30 years.

That was part of the response in the UDRP filed by two Swiss entities, Notch Interactive AG and Peter Alexander van der Touw. They claimed rights to the NOTCH mark in Switzerland.

The Respondent stated that they are welcome to bypass his son’s inheritance rights if they made a six figure offer for Notch.ch. Instead, they filed a UDRP.

The WIPO panelist noted that Notch.ch was registered for the first time on January 15, 2002 and has been in Respondent’s possession since March 30, 2016. Meanwhile, the Complainant uses the mark NOTCH since 2010.

We might as well wonder if the Respondent even has a son to inherit that domain!

Final decision: Transfer Notch.ch to the Complainants.

WIPO Arbitration and Mediation Center
EXPERT DECISION
Notch Interactive AG, and Peter Alexander van der Touw v. World Stage Entertainment, WSE Media Group (Switzerland)
Procedure No. DCH2021-0027

1. The parties

The applicants are Notch Interactive AG (hereinafter “Applicant 1”), Switzerland, and Peter Alexander van der Touw (hereinafter “Applicant 2”), Switzerland, represented by epartners Rechtsanwälte, Switzerland.

The respondent is World Stage Entertainment, WSE-Media Group (Switzerland), Switzerland.

2. Disputed Domain Name

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

The registry operator is SWITCH, Switzerland. The registrar is NOVATREND Services GmbH.

3. Procedure

The Request was received by the WIPO Arbitration and Mediation Center (the “Center”) by email on December 24, 2021. The request is based on SWITCH’s procedural rules for dispute resolution procedures for “.ch” and “.li” domain names (“Procedural Rules”), which came into force on January 1, 2020.

On December 28, 2021, the registry operator SWITCH confirmed that the respondent is the owner and administrative contact person of the domain name. The center determined that the application met the formal requirements of the procedural regulations.

On January 7, 2022, the application was duly served and the dispute settlement procedure initiated. The deadline for submitting a response to an application was January 27, 2022.

By letter dated January 27, 2022, which the Center received on January 31, 2022, a Mr. Notch Sr. came forward on behalf of the Respondent, requesting (i) an extension of the January 27, 2022 deadline and (ii) all correspondence to cease be sent to him by post because he had server problems and electronic traffic was not guaranteed.

By email dated February 8, 2022, the applicants asked the center to reject the respondent’s applications.

By letter dated February 9, 2022, which reached the Center on February 11, 2022, Mr. Notch Sr. responded.

On February 11, 2022, the Center informed the parties via email that Respondent’s request regarding the form of notices would be denied pursuant to paragraph 6(c) of the Rules of Procedure. The Center extended the deadline for replying to applications until February 18, 2022.

In a letter dated February 24, 2022, the Center reported that the Respondent had not expressed its willingness to participate in an arbitration hearing within the deadline set. The applicants were notified by the Center of the possibility to request the continuation of the process and requested it on February 24, 2022.

By letter dated February 25, 2022, which reached the Center on March 4, 2022, Mr. Notch Sr. reiterated his position.

The trial proceeded in accordance with Article 19 of the Rules of Procedure and the Center appointed Theda König Horowicz as an expert on March 15, 2022. The Expert notes that she has been duly appointed and has declared her independence in accordance with paragraph 4 of the Rules of Procedure.

4. Facts

Applicant 1 is a Swiss stock corporation that was registered in Zurich in 2010 as Notch Interactive GmbH. It provides advertising and communication services. Since September 24, 2010, it has held the Swiss word/image trademark registration No 605823 NOTCH INTERACTIVE + logo in classes 35, 41 and 42.

Applicant 2, resident in Switzerland, is the founder, majority shareholder and Chairman of the Board of Applicant 1. He has held the Swiss trademark registrations for “Notch” and “Notch Interactive” in Classes 9, 35, 40, 41 and 42.

The above trademarks are used by the applicants.

The disputed domain name was registered for the first time on January 15, 2002 and has been in the name of the opponent since March 30, 2016. The domain name is not used.

5. Party Submissions

A. Applicant

The applicants support their application on the basis of their trademark rights registered in Switzerland via NOTCH INTERACTIVE + logo, NOTCH and NOTCH INTERACTIVE.

The registration and use of the disputed domain name is in obvious conflict with these rights and with the company law of applicant 1. The main part of the disputed domain name is identical to the trademarks of the applicants and the company name of applicant 1, so that an infringement Art. 13 MSchG and Art. 956 OR arise. The applicants further explain that their trademark “Notch” has been used intensively for 11 years and is enjoying increased awareness. In addition, the applicant’s trademark had already been registered on May 10, 2010, and thus well before the registration of the disputed domain name. The non-use of the domain name is irrelevant based on the case law of the Federal Court of Justice, according to which an infringement can occur even through acts for private use. There were no reasons that would justify protecting the respondent.

In addition, there would also be a violation of Art. 3 Para. 1 lit. d UWG. This fact can also be fulfilled by the mere registration of domain names.

B. Respondent

A Notch Sen. came forward on behalf of the respondent. In summary, Mr. Notch Sen. believes that he has owned the domain name for almost 30 years and that he plans for the disputed domain name to be passed on to his junior after his death. However, he would agree to negotiate the domain name for a six-figure sum and a small percentage of the applicants’ company.

6. Reasons for Decisions

I. Formalities – Admissibility of the Respondent’s written communications?

According to paragraph 15 (b) of the procedural regulations, the response to the application (including any attachments) must be submitted in electronic form.

However, any communications or statements by Mr. Notch Sen. were made by mail.

According to paragraph 15 (b), the response to the request should contain the following information:

(…)

(ii) the name and contact details of the Respondent,

(iii) if the Respondent is represented in the dispute resolution procedure, the name and contact details of the representative and a corresponding power of attorney,

(…).

Mr. Notch Sr. came forward on behalf of the respondent without revealing his full or real name and address.

Mr. Notch Sr. is not registered as the domain name holder. He has not provided any proof of his exact name or identity, nor has he given any contact information other than a PO Box address. Furthermore, he has not presented any power of attorney that would confirm that he is acting on behalf of the Respondent.

It is therefore unclear who Mr Notch Sen is and in what capacity he has commented in this proceeding.

Thus, the expert comes to the conclusion that paragraphs 15 (b) ii. and iii. of the Rules of Procedure is violated and that the Respondent’s communications are inadmissible. Even if the expert had taken these reports into account, they would have had no influence on the outcome of the case.

II. Substantial

According to paragraph 24(a) of the Rules of Procedure, the expert must decide on the application in compliance with the Rules of Procedure and based on the submissions of both parties and the documents submitted. According to paragraph 24(c) of the procedural regulations, the expert will grant the application if the registration or use of the domain name clearly violates a trademark right to which the applicant is entitled under Swiss or Liechtenstein law.

Pursuant to paragraph 24(d) of the Rules of Procedure, such a breach occurs in particular if

(i) both the existence and the infringement of the asserted trademark right result clearly 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 presented and proved any relevant grounds of defence; and

(iii) the infringement justifies the transfer or deletion of the domain name, depending on the legal request made in the request.

A. The applicants are holders of a trademark right under Swiss law

The applicants have provided sufficient legal evidence that they are the holders of the NOTCH mark in Switzerland.

B. The allocation or use of the disputed domain name by the Respondent constitutes a violation of the asserted trademark rights of the Applicant under Swiss law

The violation of trademark law, company law or UWG is not clear in the absence of use of the domain name. In addition, Applicant 2 is the owner of trademark rights that were registered after the contested domain name was registered.

Name protection according to Art. 29 par. 2 ZGB can be asserted, especially if the relevant part of the name is used by a third party as a domain name (see I. Cherpillod, in Commentaire Romand – Code des Obligations II, 2nd edition, Basel 2017, ad art. 956 CO N16).

According to art. 29 par. 2 ZGB, if someone is adversely affected by someone else assuming his name, he can sue for omission of this arrogance as well as for damages and, where the nature of the impairment justifies it, for payment of a sum of money as satisfaction.

Case law has stated in this regard that the identification function of domain names means that they must be sufficiently distinguishable from the identifiers of third parties protected by an absolute right such as the right to a name; it is sufficient if only the relevant part of the name is taken over by a third party so that there is a risk of confusion. (ATF 128 III 353).

The Federal Court of Justice has further clarified that the content of a website is not decisive in the event of a naming rights infringement (ATF 128 III 353, ATF 128 III 401). The registration of a domain name alone can therefore suffice to affirm a risk of confusion.

In this case, NOTCH is the relevant part of Applicant 1’s name. It is a rather rare name that has a certain originality. Applicant 1 can therefore obviously claim rights over this name.

Applicant 1 has had the name NOTCH since 2010. It therefore enjoys priority over the domain name in question. It should also be noted that Applicant 1 also uses this name extensively, particularly on its website as an advertising agency.

The disputed domain name contains the name NOTCH entirely. The name of the respondent gives an indication that he is very likely to be active in the media sector. The fields of advertising and media have a certain similarity.

For the above reasons, it can be assumed that there may be a risk of confusion and that the disputed domain name infringes Applicant 1’s naming rights.

7. Decision

In accordance with paragraph 24 of the procedural regulations, the expert approves the application and decides that the domain name <notch.ch> will be transferred to applicant 1.

Theda König Horowicz
Expert
Date: April 5, 2022

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