WIPO Arbitration and Mediation Center
EXPERT DECISION
Raiffeisen Schweiz Genossenschaft v. Nguyen Huong Quynh
Case No. DCH2007-0023
1. The Parties
The Claimant is Raiffeisen Schweiz Genossenschaft, St. Gallen, Switzerland.
The Respondent is Mrs. Nguyen Huong Quynh, Hanoi, Vietnam.
2. Domain Name
The dispute concerns the domain name which is registered with SWITCH.
3. Procedural History
The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2007 by email, hardcopy of which was received on December 14, 2007. On December 14, 2007, the Center transmitted by email to SWITCH a request for verification in connection with the domain name at issue. On that same date, SWITCH transmitted by email to the Center its verification response confirming that the Respondent is listed as the holder of the domain name and providing the relevant contact details. 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, the .ch and .li registry, on March 1, 2004.
In accordance with the Rules of Procedure, paragraph 14, the Center formally notified the Respondent of the Request, and the Dispute resolution proceedings commenced on December 19, 2007. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was January 8, 2008.
The Respondent has neither filed a Response nor expressed her readiness to participate in a Conciliation in accordance with Paragraph 15(d) of the Rules of Procedure.
On January 10, 2008 the Center notified the Claimant accordingly, who on January 18, 2008 made an application for the continuation of the Dispute resolution proceedings in accordance with specified in paragraph 19 of the Rules of procedure having already paid the required fees.
On January 22, 2008, the Center appointed Christophe Imhoos as Expert in this case. The Expert finds that it 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 carries out banking activities in Switzerland and registered its trademark RAIFFEISEN in Switzerland under No. CH 543754 in classes 14, 16, 18, 25, 27-28, 35-36, 38, 41-42 on October 17, 2005 (see Exhibits 4 and 5 to the Complaint).
The Respondent operates under the website at stake banking activities and generates links for the said activities in part to its competitors (e.g. POSTFINANCE) and in part to some unrelated businesses (music, personals and dating; Exhibits Nos. 2 and 3 to the Complaint). It registered the disputed domain name on November 13, 2006 according to SWITCH.
5. Parties’ Contentions
A. Claimant
The Claimant argues the following:
(i) The Claimant has a right in a distinctive sign under the laws of Switzerland.
The Claimant has been registered as “Cooperative” (“Genossenschaft”) in the Commercial Register of the Canton of St. Gallen since February 2, 1919 and trades under the registered trademark (see above) RAIFFEISEN (Exhibits Nos. 4 and 5 to the Complaint). It is therefore entitled to seek protection of its business name pursuant to Article 956 of the Swiss Code of Obligations (“CO”), Article 13 of the Swiss Trade Mark Act (“TMA”) and Article 3(d) of the Swiss Unfair Competition Act (“UCA”).
The Claimant concludes that its rights in a distinctive sign under the laws of Switzerland are established.
(ii) The registration and use of the domain name at issue infringes the Claimant’s right in a distinctive sign under the laws of Switzerland.
The Respondent uses the domain name in a confusingly similar manner to its registered trademark RAIFFEISEN which is protected by law pursuant to Articles 13 of the TMA, 956 CO and 3(d) of the UCA infringing thereby its rights in a distinctive sign under the laws of Switzerland.
The Respondent has committed several breaches of Swiss law as mentioned above, especially when using the domain name in a confusingly similar manner with the Claimant’s name RAFFEISEN in order to attract and divert customers to its own business and to redirect them to other on-line locations, among which a Claimant’s competitor, “Postfinance”, and to other dubious offers leading, among others, to sex offers (Exhibits Nos. 4 and 5 to the Complaint). The Respondent generates the risk that the Claimant’s customers be misleaded by such offers and services, misusing thereby the Claimant’s business name.
The Claimant requests, on the basis of the aforementioned grounds, the transfer in its favor of the domain name .
B. Respondent
The Respondent did not reply to the Claimant’s contentions.
6. Discussion and Findings
Paragraph 24 of the Rules provides that:
(a) The Expert shall decide on the request on the basis of the pleadings of both parties and the submitted documents in conformity with these Rules.
(b) The Expert may only order the deletion or transfer of the domain name, depending on the remedy requested in the request, or reject the request.
(c) The Expert shall grant the request if the registration or use of the domain name constitutes a clear infringement of a right in a distinctive sign which the Claimant owns under the law of Switzerland or Liechtenstein.
(d) 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 defence; and
(iii) the infringement of the right justifies the transfer or deletion of the domain
name, depending on the remedy requested in the request.
As a result of the repeated reference to “clarity” in the above mentioned provision, the right invoked by the Claimant must be unequivocal and the evidence of confusion or other infringement quite obvious to lead to a transfer or deletion of the disputed domain names. Doubt must benefit the Respondent (I-D Media AG c. Id-M�dia S�rl, WIPO Case No. DCH2005-0018).
Paragraph 23 of the Rules also provides that if a party, without due cause, fails to comply with the time periods laid down in the Rules, 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 proved the registration of the trademark RAIFFEISEN (See Exhibit No. 4 to the Complaint). The Expert holds therefore that Claimant established its exclusive right in its distinctive sign in Switzerland.
B. The registration or use of the Domain Name at issue constitutes a clear infringement of the Claimant’s right
The Claimant is the holder of the registered trademark RAFFEISEN. A simple visual and phonetic comparison reveals that the domain name is at least confusingly similar to Claimant’s trademark; such conduct may already constitute cyber- and typosquatting which would constitute bad faith and a breach of Article 2 of the UCA (see e.g. YouTube, LLC v. Matthias Moench,WIPO Case No. DCH2007-0010).
Because domain names identify persons, products, or services via the respective websites, Swiss Federal Supreme Court practice recognizes that domain names are comparable to personal names, business names, and trademarks and therefore can be regarded as distinctive signs (ATF 126 III 239, 244, ). Swiss practice further acknowledges a likelihood of confusion if the (commercial) use of a domain name similar to a name (or mark) creates the risk of a wrong association of the website (ATF 128 III 401, 402, ). Whether the contents of a website operated under the domain name must be taken into account when examining the likelihood of confusion, currently appears to be subject to a change in practice. Whereas in earlier decisions the Swiss Federal Tribunal held that the content of a website under the corresponding trademark shall be disregarded (see sic! 2003, p. 822 ; ATF 128 III 401, 403 et seq. ), a more recent decision suggests otherwise. The Swiss Federal Supreme Court has held that content of a website operated under a domain name must be taken into account when examining the likelihood of confusion (see sic! 2005, p. 283 ). It follows that, in an assessment of the risks of confusion under the Swiss Trademark Act, both the degree of similarity of the signs as well as the similarity of the respective goods and/or services may be taken into account. The two elements are interrelated, i.e., the more similar the goods and/or services are, the more distinguishable the respective signs must be, and vice versa (Unigestion Holding S.A. v. ITCG s.c. W. Drewniak, M. Olczykowski,WIPO Case No. DCH2005-0013; Smoby Suisse S�rl and Smoby S.A. v. Velos Schrade, Inhaber Fredy Zaugg,WIPO Case No. DCH2007-0006).
The holder of a company name may seek protection under the UCA; especially when the circumstances in question are covered by the specific purposes and scope of the UCA. Under Article 3(d) of the UCA, anyone taking measures aimed at causing confusion with products, works, services or enterprise of a product or service provider, is acting unfairly. Under Article 2 of the UCA, the protection may be extended to imitations not falling under Article 3(d) of the UCA, provided specific additional circumstances show the unfairness of the activities (Zurich Insurance Company, Vita Lebensversicherungs-Gesellschaft v. Roberto Vitalini,WIPO Case No. DCH2005-0012).
The domain name is no doubt confusingly similar to the Claimant’s Company name and trademark RAIFFEISEN. When registering such a domain name the Respondent created a likelihood of confusion to the effect that the Internet users are likely to assume a connection between the Respondent’s website and the Claimant trademark and protected products and services (see spec. Exhibit No. 2 to the Complaint). The Respondent appears to be trying to take advantage of the Claimant’s trademark and related products and services and such a conduct violates the Claimant’s right in its distinctive sign under Art 3(d) of the UCA. Moreover, the Expert is also satisfied from the Claimant’s submissions(Exhibits Nos. 2 and 3 to the Complaint) that the Respondent’s activities amount to unfair and unlawful practices, as described above, within the meaning of Article 2 of the UCA, as held above.
Hence, the Respondent’s infringement of the Claimant’s rights under Articles 2 and 3(d) of the UCA clearly justifies the transfer of the domain name to the Claimant.
The Expert finds that the Claimant has thus met its burden of proof under the Rules, paragraph 24(d)(ii) and (iii).
7. Expert Decision
For the above reasons, in accordance with Paragraphs 24 of the Rules of Procedure, the Expert orders that the domain name be transferred to the Claimant.
Christophe Imhoos
Expert
Dated: February 5, 2008
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