The Claimant is AG from Zürich, Switzerland, represented by Kanzlei Caro, Law Firm, Switzerland.
The Respondent is LLC Whois of Auckland, New Zealand. 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 January 26, 2011. On January 27, 2011, the Center transmitted by email to SWITCH a request for verification in connection with the domain name at issue. On January 28, 2011, 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 January 31, 2011. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was February 20, 2011.
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 February 22, 2011 the Center notified the Claimant accordingly, who on February 25, 2011 made an application for the continuation of the dispute resolution proceedings in accordance with paragraph 19 of the Rules of Procedure and paid the required fees.
On March 9, 2011 the Center appointed professor Daniel Kraus 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
The Claimant provides online comparing services in various fields such as insurances, finance, real-estate, etc. since 1996. Since that year, the Claimant is active under the company name comparis GmbH, respectively AG, registered in the register of commerce of Switzerland. The Claimant is the owner of several registered trademarks, the main one being the Swiss registration number 556320 COMPARIS, filed at the Swiss Federal Institute of Intellectual Property on July 14, 2006 and registered under number 472823 since November 11, 1999.
The Claimant is also holder of the domain name , registered by AG on May 22, 1996. It is also the owner of the domain names , , and .
The Respondent registered the domain name on June 23, 2008. It uses it as a pay per click domain parking website. It leads to competing websites offering the same kind of services as those of the Claimant. It also leads to a link on which the website is offered for sale. 5. Parties’ Contentions A. Claimant
The Claimant provided the following arguments:
The Claimant first argues that he has a right in a distinctive sign under the laws of Switzerland, i.e. the Swiss trademark registration number 556320 COMPARIS filed at the Swiss Federal Institute of Intellectual Property on July 14, 2006, and registered as an amplification of the older trademark number 472823 COMPARIS registered on November 11, 1999. The Claimant is also holder of the domain name registered on May 22, 1996 as well as, abroad, the domain names , , and .
Under its company name, trademark and domain name, the Claimant provides online comparing services in various fields such as insurances, finance, real-estate, etc. The trademark and name comparis is well known in Switzerland.
The Claimant concludes that on the basis in particular of its trademark, it has a right in a distinctive sign under the laws of Switzerland.
The Claimant further argues that 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 registered and used the domain name in a way that is very likely to cause confusion between the two companies in the eyes of the consumers. Besides, the only difference between the two domain names being the omission of the letter o, it is very likely that a user will hit the website of the Respondent due to a minimal typing error. As the Respondent’s website refers to links leading to companies also offering comparisons like the Claimant does, the Claimant fears that the user will not notice the mistake and will think that he is surfing on the website of AG. The Respondent’s domain being registered at a so-called domain parking program, and the Respondent apparently only trying to benefit from the Claimant’s established brand name, its behaviour is unfair and fraudulent.
The Claimant requests, on the aforementioned grounds, the transfer in its favour of the domain name . B. Respondent
The Respondent has neither filed a response within the set deadline nor expressed its readiness to participate in a conciliation in accordance with paragraph 15(d) of the Rules. 6. Discussion and Findings
Paragraph 24 of the Rules of Procedure 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-Média Sàrl, 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 under the law of Switzerland
As mentioned above, Claimant is the owner of the Swiss trademark COMPARIS number 556320, filed on July 14, 2006. In annex 4 to the Request, Claimant provided a copy of the trademark registration certificate from the Swiss Federal Institute of Intellectual Property, dated March 28, 2007.
Claimant has thus met its burden of proof under Paragraph 24(d)(i) of the Rules of Procedure. B. The registration or use of the Domain Name at issue constitutes a clear infringement of the Claimant’s right
The domain name at issue is . Claimant is the holder of the registered trademark COMPARIS. Thus, the domain name is very similar to Claimant’s trademark under which Claimant was nationally known before Respondent’s registration of the domain name.
The disputed domain name was registered on June 23, 2008 by Respondent. It refers to a pay per click parking website which leads to websites of competitors of Claimant.
Because they identify persons, products or services via the respective websites, the Swiss Federal Supreme Court has recognized that domain names are comparable to personal names, business names and trademarks and therefore can be regarded as so-called distinctive signs (Decision of the Swiss Federal Supreme Court of May 2, 2000, , BGE 126 III 239, 244; Feldschlösschen Getränke Holding AG v. John de Souza,WIPO Case No. DCH2004-0012). If the domain name corresponds to a protected trademark, the owner of the trademark may, under certain circumstances, be entitled to prohibit the use of the domain name by others (BGE 126 III 244-245). This requires that the domain name is actively used as a distinctive sign, which is the case here.
Swiss practice further acknowledges a likelihood of confusion if the (commercial) use of a domain name similar to a trademark creates the risk of a wrong association of the website (BGE 128 III 401, 402, ). This is clearly the case when the contents of a website operated under the domain name of two competitors are identical or similar (see sic! 2005, page 283, ; , Unigestion Holding S.A. v. ITCG s.c. W. Drewniak, M. Olcgkowski,WIPO Case No. DCH2005-0013 and Cycle-Tech GmbH v. Patrick Leemann, WIPO Case No. DCH2006-0023). In the present case, not only is the domain name registered and used by Respondent confusingly similar to the trademark and domain names registered and used by Claimant, the content is also confusingly similar to the products and services for which Claimant’s trademark is registered.
As such, Respondent clearly violates the rights of Claimant resulting from Article 13 and 3 of the Swiss Trademark Law.
Domain names can also be regarded as distinctive signs under the Swiss Unfair Competition Law of December 19, 1986 (BGE 126 III 245). Article 3 lit. d of said law prohibits measures that are likely to cause confusion with products, works, services or the business of others (Feldschlösschen Getränke Holding AG v. John de Souza, WIPO Case No. DCH2004-0012). In the present case, freeriding operated by Respondent clearly created a likelihood of confusion also under the law of unfair competition, an internet user being likely to assume a connection between Respondent’s website and Claimant’s trademark-protected services. Respondent is thereby trying to take advantage of Claimant’s brand recognition. Hence, Respondent’s behaviour creates a likelihood of confusion and therefore violates Claimant’s right in a distinctive sign under both trademark law and Article 3 lit. d of the Unfair Competition Law, Respondent has not pleaded or proven any relevant grounds for defense. The infringement clearly justifies the transfer of the domain name to the Claimant. 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.
Daniel Kraus
Expert
Dated: March 23, 2011
Full & Egal Universal Law Academy