What happened on June 3, 1997 Anzuege

WIPO Arbitration and Mediation Center


Vitale Barberis Canonico SpA v. CSI Group GmbH / Chris Köppel

Procedure no. DCH2013-0005

1. The parties

The applicant is Vitale Barberis Canonico SpA from Pratrivero (BI), Italy, represented by Studio Barbero, Italy.

The opponent of the application CSI Group GmbH / Chris Köppel from Zurich, Switzerland.

2. Domain name in dispute

The subject of the proceedings is the domain name (hereinafter the "domain name"). The domain registry is SWITCH, Zurich, Switzerland.

3. Procedure

The request was received by the WIPO Arbitration and Mediation Center (the “Center”) in electronic form on March 8, 2013 and in physical form (in Italian) on March 19, 2013. 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 March 12, 2013, the domain registry SWITCH confirmed that the opponent is the owner and administrative contact person of the domain name and informed the center that the language of the registration agreement for the domain name at issue was German. Accordingly, the Center asked the parties to choose one of the following options: a) Submit sufficient evidence of an agreement between the applicant and the opponent stating that the procedure should be carried out in Italian; b) submit the application translated into German; c) Submit a request with supporting evidence that the language of the proceedings should be Italian. A translated request, not signed, was received by the center on March 22, 2013 and April 3, 2013 in physical form. The center asked the applicant to send a signed application on April 12, 2013. According to the information provided by the center, the applicant sent this signed application by email on the same day.

On April 12, 2013, the application was properly served and the dispute settlement procedure was initiated. The deadline for submitting a response was May 2, 2013.

In a letter dated May 10, 2013, the center announced that the opponent had neither submitted a response to the request nor otherwise expressed its willingness to participate in an arbitration negotiation to the center. On the same day, the applicant was informed by the center of the possibility of requesting the continuation of the procedure.

On May 14, 2013, the procedure was continued at the request of the applicant in accordance with Section 19 of the procedural rules and the center appointed Daniel Kraus as an expert on June 3, 2013. The expert determines that he has been properly appointed and has declared his independence in accordance with Section 4 of the procedural regulations.

4. Facts

The applicant is a traditional company that has been active in the field of high-quality clothing and textiles since the 17th century. The Barberis Canonico Trivero family's history of wool began with Ajmo Barbero trading in fine wool.

Current production is around 7 million meters of fabric and sales in 2011 were almost EUR 100 million. 80% of sales are generated through exports and China, which accounts for around 20% of sales, is currently the largest export market ahead of Great Britain ; other markets of particular interest are in Asia, Germany and other European countries. In Switzerland, sales in 2011 amounted to EUR 136,000.

The applicant is the owner of numerous registered international and national trademarks as well as the community trademarks VITALE BARBERIS CANONICO, both as a word mark and as a figurative mark in Italy, Switzerland, the European Union and in many countries around the world:

- International brand VITALE BARBERIS CANONICO n.630.612 from January 6th, 1995 in classes 24 and 25);

- International trademark VITALE BARBERIS CANONICO n. 864.424 of July 13, 2005 in class 35;

The applicant is also the owner of the company rights to the company name "Vitale Barberis Canonico SpA" and has also been the owner, since October 17, 1997, of the domain name , through which the applicant advertises its business operations.

The opponent is also active in the clothing sector. As early as 2010, he contacted a Swiss representative of the applicant because he was interested in developing a project for tailor-made suits with new fabrics and wanted to see a sample of the applicant. After several contacts, there was a phone call in the course of November 2010, during which Mr Köppel (manager of the opponent) informed the applicant's representative that his project was currently suspended and that he would contact him again if there was still interest.

On August 3, 2012, the respondent registered the disputed domain name.

5. Submissions from the party

A. Applicant

The applicant applies for the domain name of the applicant to be transferred to her.

The applicant essentially justifies this application with the fact that the domain name infringes its trademark law with regard to the Swiss trademarks VITALE BARBERIS CANONICO.

Furthermore, the applicant states that the opponent has not been granted any license or other permission to use the VITALE BARBERIS CANONICO brand. After all, the domain name violates the applicant's naming rights and company law, and the use of the domain name by the opponent violates the law of unfair competition.

From the facts it would ultimately emerge that the opponent registered the disputed domain name clearly in bad faith and without a legitimate or legitimate interest.

B. Opponent

The opponent has not submitted a reply and has not agreed to participate in an arbitration hearing in accordance with Art. 15 (d) of the procedural rules.

6. Reasons for the decision

According to paragraph 24 (a) of the procedural regulations, the expert has to decide on the application in compliance with the procedural regulations and based on the submissions of both parties and the submitted documents. According to Paragraph 24 (c) of the procedural regulations, the expert grants 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.

According to paragraph 24 (d) of the procedural regulations, such a violation 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

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

A. Existence of trademark rights

As mentioned above, the applicant is the owner, among other things, of an international trademark VITALE BARBERIS CANONICO, which was registered in 1995, with protection in particular in Switzerland. In Annex 8 of the application, the applicant has attached an extract from the WIPO ROMARIN database, which provides sufficient evidence in accordance with Section 24 (d) (1) of the procedural regulations.

B. Clear violation of the applicant's rights

The domain name in dispute is and was registered on August 3, 2013. The domain name in question does not refer to an active website. However, there is no doubt for the expert that the distinctive part of the domain name can be confused with the brand VITALE BARBERIS CANONICO. In addition, since 1997 the applicant has also been the owner of the domain name , through which the applicant advertises her well-known business.

In a leading decision, the Swiss Federal Supreme Court ruled that the creation of Internet addresses cannot be assigned to the unlawful area. Rather, the identification function of the domain names has the consequence that they have to keep the necessary distance from the absolutely protected marks of third parties in order to avoid confusion (BGE 126 III 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, provided that the unauthorized use creates a risk of confusion, as the corresponding website can be attributed to the wrong one (Cablecom GmbH v. Marco Furrer,WIPO Procedure No. DCH2009-0033 and other references).

In the present case, Article 13 (2) of the Trademark Protection Act of August 28, 1992 (“MSchG”) comes into consideration. According to this, a trademark owner can forbid others to use a mark which is excluded from trademark protection due to their earlier trademark law according to Art. 3 Para to need in business dealings. In the present case, the distinctive part of the domain name at issue can be clearly confused with the applicant's word mark.

The opponent is also active in the clothing sector and was aware of the existence of the VITALE BARBERIS CANONICO mark and brand. In 2010 the opponent called the applicant's Swiss representative and stated that he was interested in developing a project for tailor-made suits with new fabrics and that he wanted to see a sample of the applicant. However, the applicant and the opponent have not concluded a contract. When the opponent nevertheless relied on the applicant's brand to sell his suits, the latter warned him. The opponent did not respond to the warning letter of October 18, 2012 from the applicant. He also refused to transfer the disputed domain name.

Ultimately, according to the documents submitted, it appears to the expert that the opponent registered the domain name with the aim of attaching itself to the reputation and brand awareness of the applicant in order to promote his own business and to prevent the applicant from doing so registers and uses the domain name itself. That is as in the case Acqua Minerale San Benedetto S.p.A. c. Urago Handels AG, WIPO Procedure No. DCH2008-0008, not acceptable.

C. Infringement justifies the transfer

The transfer of the domain name to the applicant is justified in accordance with the legal request of the applicant and in view of the violation of the law by the opponent.

7. Decision

For the reasons mentioned above, the expert decides that the domain name is to be transferred to the applicant in accordance with Section 24 of the procedural regulations.

Daniel Kraus
Date: July 2, 2013