Complaint for academia.ch denied at WIPO

The Complaint was filed with the WIPO Arbitration and Mediation Center.

The Complainant, Academia Sprach- und Lernzentrum Basel AG of Basel, Switzerland.

The Respondent was academiesuisse, Demourian Achille, of Geneva, Switzerland.

Even thought both parties were from Switzerland, they both filed their Complaint and Response in English. (Complainant also filed the Complaint in German.) So the Expert determined that English would be the language of the proceedings and the decision was therefore rendered in English.

The disputed domain name academia.ch was registered on July 13, 2003.

The decision was made using 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. This is not exactly the same as UDRP but quite similar.

The Complainant based its allegation to have rights in a distinctive sign only on trademark law. According to the case record before the Panel, the Complainant has a trademark application for registration of ACADEMIA and ACADEMIA SPRACH- UND LERNZENTRUM. However, contrary to the Complainant’s contention, the Complainant’s applications for the said trademarks are not granted, but still pending (status July 10, 2012). Thus, it can be noted that under Swiss law, where the trademark is not registered, no trademark rights can be alleged yet.

Further, it was noted that the Complainant applied for the registration of said trademarks on November 4, 2011, which means over six years after its registration in the commercial registry and more than eight years after the Respondent’s registration of the Domain Name.

Finally, “academia” is a descriptive word. Hence, the protection of the alleged trademarks of the Complainant may be denied by the Swiss trademark office on the ground that they constitute common property.

Consequently, in the Panel’s view, the Complainant failed to meet the first requirement of paragraph 24(d) of the Rules of Procedure and failed to establish that it has rights in a distinctive sign under the laws of Switzerland.

The Expert ordered that the Domain Name <academia.ch> remained registered with the Respondent. The Request was denied without prejudice to the Complainant’s right to re-file a request once it obtains rights in a distinctive sign under Swiss law.

I am not sure how the Complainant will get passed the fact that academia is a descriptive work and also that the domain was registered 6 years before Complainant started it’s company and 8 years before Complainant applied for a trademark, even if the trademark for “academia” is accepted.

So the Complaint failed at the first element of the Rules of Procedure for Dispute Resolution Proceedings for .ch, because the Complainant didn’t have a registered trademark. Complaints failing at the first element are becoming a trend as two more cases, for domain names kols.com and hitorque.org also failed in the first element of the UDRP last week.