WIPO Arbitration and Mediation Center EXPERT DECISION C AG v. NameInvest Ltd. Case No. DCH2009-0006 1. The Parties
The Claimant is C AG, Zurich, Switzerland, represented by Kanzlei Caro, Switzerland.
The Respondent is NameInvest Ltd., The Valley, Anguilla, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. Domain Name
The dispute concerns the following domain name . 3. Procedural History
The original Request in German was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2009 by email and on May 13, 2009 in hard copy. On May 11, 2009, the Center transmitted by email to SWITCH a request for verification in connection with the domain name at issue. On May 12, 2009, 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. In response to a notification of May 18, 2009 by the Center that, without prejudice to the authority of, e.g., the Expert and provided that the Claimant could not provide inter alia satisfactory evidence of the agreement between the Parties otherwise, as the Registration agreement was confirmed by the Registry to be in English, the language of the proceedings shall be English, the Claimant filed a translation into English of the Request on May 25, 2009. 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 May 27, 2009. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was June 16, 2009.
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 June 18, 2009, the Center notified the Claimant accordingly, who on June 25, 2009 made an application for the continuation of the Dispute resolution proceedings in accordance with specified in paragraph 19 of the Rules of procedure and paid the required fees.
On July 1, 2009, the Center appointed Theda König Horowicz 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 is a Swiss Company, registered in Zurich since 1996, active under the company name Comparis GmbH respectively C AG, which is specialized in online comparison services in several fields, including insurance.
The Claimant is the owner of various Swiss registrations for the trademark COMPARIS, notably :
- Swiss registration No 556320, in international classes 3, 5, 7-9, 11, 12, 12-16, 18, 20, 21, 24, 25, 27, 28 and 35-45, of July 14, 2006.
- Swiss registration No 472823, in international classes 35, 36, 38 and 42, of November 11, 1999.
Furthermore, the Claimant holds some domain names comprising its trademark COMPARIS, including .
On February 16, 2007, the Respondent has registered the domain name which is linked to a website in the German language offering several services in relation to health insurance, including comparison services in this specific field. The website provides links to other sites of insurance companies. The homepage at mentions that the domain name is possibly available for sale (“Diese Domain steht evtl. zum Verkauf”). 5. Parties' Contentions A. Claimant
The Claimant alleges to have rights in Switzerland in the name COMPARIS through its business name and its Swiss trademark registrations.
The Claimant further indicates that its distinctive rights in the name COMPARIS are violated because the Respondent offers very similar services to the Claimant. In addition, the domain name in dispute is almost identical to the domain name of the Claimant, the only difference residing in an additional “m” in the domain name registered by the Respondent. Furthermore, the Respondent tries to take profit from the notoriety of the Claimant's brand COMPARIS which is against the rules of the Swiss Unfair Competition Act. B. Respondent
The Respondent did not reply to the Claimant's contentions. 6. Discussion and Findings
According to the Rules of Procedure, paragraph 24 (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”.
The Rules of Procedure, paragraph 24 (d) precise that “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”. A. The Claimant has a right in a distinctive sign
The Claimant has evidenced to have rights in Switzerland in the business name “C AG” since 1996 and in the trademark COMPARIS since 1999. The first criterion is therefore fulfilled. B. The registration or use of the domain name at issue constitutes a clear infringement of the Claimant's right Trademark
The domain name is phonetically identical and visually extremely similar to the Claimant's trademark.
Furthermore, the Claimant has proven to have exclusive rights in the trademark COMPARIS notably for insurances. In addition, it is widely known in Switzerland that the Claimant has provided for many years services such as online comparison services in particular for insurance, i.e. through its website “www.c” where consumers can comparate rates.
The Respondent has registered and uses the domain name at issue for the same type of services.
The public may not be able to perceive the difference between and . A risk of confusion thus exists.
Under the circumstances, the Expert concludes that there is a clear infringement of the Claimant's trademark rights based on Article 13 of the Swiss Trademark Law. Unfair competition
The website linked to the domain name in dispute is conceived in such a manner that the public may think that there is a connection with the Claimant's official website or may divert the public from the Claimant's website, notably considering that the website is presented in the German language and that it offers a variety of links to websites dealing in the field of insurance.
In the absence of any reaction of the Respondent within these proceedings, the Expert therefore concludes that the use of the domain name can be considered as an infringement of the Swiss Unfair Competition Act, in particular of its Articles 2 and 3(d). 7. Expert Decision
For the above reasons, in accordance with paragraph 24 of the Rules of Procedure, the Expert orders that the domain name be transferred to the Claimant.
Theda König Horowicz
Expert
Dated: July 15, 2009
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