WIPO Arbitration and Mediation Center EXPERT DECISION C AG v. Ancient Holdings, LLC Case No. DCH2008-0013 1. The Parties
The Claimant is C AG, Zürich, Switzerland represented by Kanzlei Caro, Zürich, Switzerland.
The Respondent is Ancient Holdings LLC, Charlestown, Saint Kitts and Nevis. 2. Domain Name
The dispute concerns the following domain name . 3. Procedural History
The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2008. On August 29, 2008, the Center transmitted via email to Switch, the “.ch” and “.li” registry, a request for verification in connection with the domain name at issue. On September 1, 2008, Switch transmitted via 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 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 September 3, 2008. In accordance with the Rules of Procedure, paragraph 15(a), the due date for a Response was September 23, 2008.
No Conciliation Conference has taken place within the deadline specified in Paragraph 17(b) of the Rules of procedure. The Respondent has neither filed a Response nor expressed his readiness to participate in Conciliation in accordance with Paragraph 15(d) of the Rules of Procedure.
However, on September 29, 2008, the Respondent wrote an email requesting the transfer of the domain name to the Claimant.
On September 29, 2008, the Center notified the Claimant accordingly, who on October 7, 2008, made an application for the continuation of the Dispute resolution proceedings in accordance with what is specified in paragraph 19 of the Rules of procedure and paid the required fees.
On October 13, 2008, the Center appointed Professor François Dessemontet 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
Since 1996, the Claimant is active in Switzerland, first under the company name “Comparis GmbH”, and it has been registered on May 31, 1996 in the Registrar of Commerce of Reinach, Canton of Basel Land, Switzerland. Since June 29, 2000, the Claimant has been registered under the company name “Comparis .ch AG” at its new seat of Zurich, Switzerland.
The Claimant holds trademark rights on the verbal trademark COMPARIS, which has been registered as Swiss number 472823 since November 25, 1999, and amplified under number 556320 on July 14, 2006.
Further, the Claimant owns the domain name , which it registered on May 22, 1996. The Claimant owns as well the domain names , , and .
The Respondent has registered the domain name on April 30, 2008. It allegedly offers services which are very similar to those which are provided by the Claimant. A visit on the website “www.” on October 19, 2008 shows that many companies offering similar services to those of the Claimant are listed with the corresponding links. 5. Parties' Contentions A. Claimant
The Claimant asserts that it is active as a company providing comparison between the offers of enterprises in the area of insurance, finance, real estate and other services. It is well known that the Claimant enables its customers to appraise the price/performance ratio of the service providers and to contact the service providers on that basis, so as to receive bids from these companies. The Claimant is strongly present in Swiss media through references and by reason of paid advertising, so that its trademark may be deemed to be a “famous” trademark within the meaning which is assigned to it by Swiss practice.
By registering and using the domain name , the Respondent attempts unduly to benefit from the Claimant's high recognition among the consumers. It would be enough for a user to slightly misspell the real domain name for him to land on the domain name . This is a violation of the Claimant's trademark rights, especially when one considers the almost identical sequence of vowels and consonants in the two domain names at issue. Furthermore, the Respondent is active also in the field of comparing services provided in the financial and real estate sector, so that the users may not immediately notice that they did not land on the correct site but on the site of a competitor of the Claimant. B. Respondent
The Respondent did not reply to the Claimant's contentions but requested the transfer of the domain name to the Claimant. 6. Discussion and Findings
With reference to paragraph 24 of the Rules of Procedure, the Expert first finds that the facts and contentions of the Claimant must be averred for the Expert to order the transfer of the domain name at issue, since the Respondent did not default in the strictest meaning of this term. However, it will not got unnoticed that the Respondent itself requested that the domain name be transferred to the Claimant in its mail of September 29, 2008. A. The Claimant has a right in a distinctive sign
There is no doubt that the Claimant has shown proof of the Swiss trademark's registration dating back to 1999 and modified in 2006 without prejudice. It is not necessary for the Expert to take position here on the issue whether the trademark COMPARIS is really a well known trademark. As the Parties are active in the same area for which the trademark is registered, no derogation to the specialty principle of trademark protection, as might be available under the article 15 of the Swiss Trademark Law of 1991 concerning well known trademarks, is needed in order for the Claimant to obtain the transfer of the infringing domain name. B. The registration or use of the Domain Name at issue constitutes a clear infringement of the Claimant's right
There are two reasons for which the registration of the domain name infringes on the Claimant's rights.
First, the domain name at issue is confusingly similar to the trademarks belonging to the Claimant. The number of letters, the consonants and the vowels are strictly identical. The visual image of the trademark and of the disputed domain name are extremely similar. No other distinction than this small change in the sequence of the “a” and the “p” can be made between the verbal trademark of the Claimant and the domain name which the Respondent has registered. It should be noted that schools in Switzerland and elsewhere have been teaching for more than three decades a whole-word recognition approach which emphasizes less the distinction between particular letters but more an understanding of the look and feel global image of the words. To some extent, many research engines also work according to this approach. Therefore, it is highly likely that the users do not give much attention, if any attention at all, to the difference between “c” and “”.
Second, the conduct of the Respondent may in the Panel's view be characterized as “unfair competition” within the meaning of Articles 2 and 3 d of the Swiss Act against Unfair Competition of 1986, as it is clearly of nature to provoke confusion between the Parties and their activities.
Finally, the content of the webpage “www.” suggests to the Panel that the Respondent benefits from the reputation of the Claimant in order to direct the consumers' attention to other concurrent companies offering the same services.
The Respondent itself appears to understand that there is no other solution to the dispute between Parties than the transfer of the infringing domain name to the Claimant, as witnesses its mail from September 29, 2008. 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.
Professor François Dessemontet
Expert
Dated : October 27, 2008
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