NESTE / neste.ch
WIPO Arbitration and Mediation Center
Neste Oyj v. Cui Long
Case No. DCH2016-0021
1. The Parties
The Claimant is Neste Oyj of Neste, Finland, represented by Roschier Brands, Attorneys Ltd., Finland.
The Respondent is Cui Long of Huzhou, China.
2. Domain Name
The dispute concerns the following domain name <neste.ch> (the "disputed domain name").
3. Procedural History
The Request in English was received by the WIPO Arbitration and Mediation Center (the "Center") by email on September 20, 2016 and in hardcopy on September 22, 2016. On September 20, 2016, the Center transmitted by email to SWITCH, the ".ch" and ".li" registry, a request for verification in connection with the disputed domain name. On September 21, 2016, SWITCH transmitted by email to the Center its verification response confirming that the Respondent is listed as the holder of the disputed domain name and providing the relevant contact details and confirming that the language of the registration agreement is French. On September 28, 2016, the Claimant requested that English be the language of the proceeding. The Respondent made no submission in this regard.
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, on March 1, 2004.
In accordance with the Rules of Procedure, paragraph 14, the Center formally notified the Respondent in both English and French of the Request, and the proceeding commenced on September 29, 2016. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was October 19, 2016.
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 October 20, 2016 the Center notified the Claimant accordingly, who on November 2, 2016 made an application for the continuation of the proceeding in accordance with specified in paragraph 19 of the Rules of procedure and paid the required fees.
On November 7, 2016 the Center appointed Christophe Imhoos as Expert in this case. The Expert finds that he was properly appointed. In accordance with Rules of Procedure, paragraph 4, the above Expert has declared his independence of the parties.
4. Factual Background
The Claimant introduces itself as a forerunner in oil refining and renewable solutions with high-quality refining assets and a strong home market base around the Baltic Sea Area. The Claimant further explains that it is the world's leading producer of renewable diesel and the world's largest company providing renewable fuel from waste and residues; that it has a retail network of over 1'000 stations as a captive market channel for its premium-quality products in Finland, the Northwestern Russian Federation, Estonia, Latvia and that cleaner traffic, energy and life are moved forward by about 5'000 professionals.
The Claimant owns the word mark NESTE, registered in Switzerland under trademark No. 2P-325271, filed on February 1, 1983, registered on August 29, 1983 and valid until January 31, 2023. Likewise, the Claimant is the owner of the figurative mark NESTE, registered in Switzerland under trademark No.
P-354743, filed on March 10, 1987, registered on August 11, 1987 and valid until March 8, 2017.
The disputed domain name <neste.ch> was initially registered on 5th December 2005 by the German affiliate of the Claimant, NESTE GmbH with the Registrar NETIM. Renewal of the disputed domain name was due by the end of 2015 but the domain name holder let the registration lapse. On March 1, 2016, the Respondent registered the disputed domain name <neste.ch>. The disputed domain name currently resolves to a website displaying pay-per-click links.
5. Parties' Contentions
Firstly, the Claimant contends that it has a right in a distinctive sign under the laws of Switzerland to the effect that it is the owner of the word mark and figurative mark NESTE mentioned above, registered in Switzerland.
Second, the Claimant contends that the registration and/or use of the disputed domain name infringes its right in a distinctive sign under the laws of Switzerland.
The registration or use of the disputed domain name <neste.ch> is a violation of the Claimant's trademark rights in NESTE within the meaning of Article 13 of the Swiss Federal Act on the Protection of Trade Mark and Indications of Sources (RS 232.11) as the disputed domain name is identical to the point of confusion with the mark and which provides that a trade mark right confers on the proprietor the exclusive right to use the trade mark to identify the goods or services for which it is claimed and to dispose of it.
The Claimant further argues that the Respondent does not have rights or legitimate interests in the disputed domain name <neste.ch>. It has not licensed or otherwise permitted the Respondent to register the disputed domain name.
In addition, the Claimant submits that the Respondent has registered the disputed domain name <neste.ch> and is using it in bad faith.
The first evidence is shown by the circumstances described above, namely when the Respondent acquired the disputed domain name. The second evidence can be found in the Respondent's website and behavior: the domain name is sold for USD 1,500 and several attempts have been made by the Respondent to sell it to the Claimant for that amount (Annex 10 to the Request). Furthermore, the Claimant points out that the Respondent has registered around 400 domain names that are substantially identical to third party trademarks, i.e. <bakermckenzie.lu>, <miele.com.co>, tripadvisor.mk>, etc..
To conclude, the Claimant considers that the use of the disputed domain name <neste.ch> is illegitimate and infringes the trademarks of Claimant as the Respondent is not using the disputed domain name to establish a website or to sell or offer any goods or services, or, at least, without causing confusion with the registered trademarks.
The Respondent did not reply to the Claimant's contentions.
6. Discussion and Findings
6.1. Language of the proceeding
In accordance with article 7(a) of the Rules of Procedure, the proceedings shall be conducted in the language of the Registration agreement, without prejudice to the authority of the Dispute resolution service provider, a Conciliator or an Expert, exceptionally to determine otherwise on application by one or both parties or at their own discretion in view of the circumstances of the Dispute resolution proceedings. The Panel, considering the Claimant's request for English to be the language of the proceeding, the lack of a contesting response from the Respondent and the location of both parties, determines that English shall be the language of the proceeding.
6.2. Substantive issues
In accordance with article 24(c) of the Rules of Procedure, the Expert shall grant the Request if the registration or use of the disputed domain name constitutes a clear infringement of a right in a distinctive sign which the Claimants own under the law of Switzerland or Liechtenstein.
Article 24(d) of the Rules of Procedure further adds that in particular, a clear infringement of an intellectual property right exists when:
(i) both the existence and the infringement of the claimed right in a distinctive sign clearly result from the wording of the law or from an acknowledged interpretation of the law and from the presented facts and are proven by the evidence submitted; and
(ii) the Respondent has not conclusively pleaded and proven any relevant grounds for defense; and
(iii) the infringement of the right justifies the transfer or deletion of the disputed domain name, depending on the remedy requested in the request.
The rights invoked by the Claimant must be unequivocal and the evidence of confusion or other infringement obvious to lead to a transfer or deletion of the disputed domain name; doubts must benefit the Respondent (I-D Media AG c. Id-Média Sàrl, WIPO Case No. DCH2005-0018).
Article 23 of the Rules of Procedure also provides that if a party, without due cause, fails to comply with the time periods laid down in the Rules of Procedure, the Expert shall decide on the request on the basis of the case file and that if one party, without due cause fails to comply with a provision of the said Rules, the Expert may draw such inferences therefrom as he considers appropriate.
A. The Claimant has a right in a distinctive sign
The Claimant has proven its registration of the trademarks NESTE in Switzerland. The Expert holds therefore that the Claimant established its exclusive right in its distinctive sign in Switzerland.
B. The registration or use of the disputed domain name constitutes a clear infringement of the Claimant's right
As proven by the Claimant, the Respondent has clearly infringed the provisions laid down in Article 13 of the Swiss Federal Act on the Protection of Trade Mark and Indications of Sources ("TmPA"), referred to above, which confers exclusive rights of use to the proprietor of the trademark in question.
In failing to answer the Complaint, the Respondent deprived itself to prove any relevant grounds for defense, in particular circumstances that would have shown its legitimate interest in registration and use of the disputed domain name <neste.ch>.
Moreover, the Respondent's pattern of conduct and behavior described and evidenced above by the Claimant clearly demonstrate the lack of good faith of the Respondent, especially within the meaning of article 2 of the Swiss Federal Act on Unfair Competition which prohibits commercial behaviors and practices that are contrary to good faith.
The overall circumstances of the case make it therefore clear that the requirements of paragraph 24 of the Rules of Procedure have been fulfilled, and that both the registration and use of the disputed domain name constitutes a clear infringement of the Claimant's exclusive rights.
7. Expert Decision
For the above reasons, in accordance with paragraphs 24 of the Rules of Procedure, the Expert orders that the domain name <neste.ch> be transferred to the Claimant.
Dated: November 28, 2016