The Claimant is Emirates of Dubai, United Arab Emirates, represented by Schellenberg Wittmer, Switzerland.
The Respondent is Günter Neumann of Dubai, United Arab Emirates. 2. Domain Name
The dispute concerns the domain name (the “Domain Name”). 3. Procedural History
The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2013. On September 6, 2013, the Center transmitted by email to SWITCH, the “.ch” and “.li” registry, a request for verification in connection with the Domain Name. On September 9, 2013, 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, 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 11, 2013. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was October 1, 2013. The Respondent filed a Response on September 19, 2013.
A telephone conciliation conference has taken place within the deadline specified in paragraph 17(b) of the Rules of Procedure, i.e. on October 17, 2013. The Conciliation conference did not result in a settlement between the parties.
On October 24, 2013, the Center notified the Claimant accordingly, who on the same day, on October 24, 2013, 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 November 13, 2013, the Center appointed Thomas M. Legler 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 1985 the Claimant, Emirates, has been the international airline of the United Arab Emirates (“UAE”).
It owns a significant international trade mark portfolio including the following trademarks in relation to Switzerland :
- device trademark EMIRATES, reg. No. P-438259, registered on December 7, 1995, in class 39;
- device trademark EMIRATES HOLIDAYS, reg. No. P-436281, registered on December 7, 1995, in classes 39 and 42;
- device trademark EMIRATES, international reg. No. 1166434, registered on May 17, 2013, designating Switzerland, in class 39.
The Respondent is the dentist Günter Neumann, a German national, resident in the UAE.
According to SWITCH, the Domain Name has been registered by the Respondent on September 14, 2011. 5. Parties’ Contentions A. Claimant
The Claimant submits evidence according to which it holds a significant international trademark portfolio for the mark EMIRATES in many countries of the world.
The Claimant also shows that it has an extensive portfolio of domain name registrations, including registered on July 24, 1996, and registered on December 9, 1997. The Claimant is running active websites under these domain names.
The Claimant contends that it has won more than 500 international awards and that it has been and continues to be a major global sponsor of sporting events. It spends considerable time and money promoting its business around the world. For the financial year ending March 31, 2013, the Claimant announced record revenue and other operating income of AED 73,113 million.
The Claimant is of the opinion that its trademark EMIRATES has to be considered as a prominent brand, well known both in Switzerland and throughout the world.
The Claimant enjoys significant reputation and goodwill in the EMIRATES name and marks. It considers that its trademarks have come synonymous with aviation, travel and leisure services and that the name EMIRATES is more associated in the minds of the public with the Claimant than with the region known as the UAE. It concludes that any third party using the Claimant’s name or brands will inevitably mislead members of the public into assuming or believing that the use of the name is that of the Claimant or is otherwise associated with, or endorsed by the Claimant.
The Claimant indicates that the Domain Name at issue is identical to Claimant’s Swiss trademarks triggering a risk of confusion and that Respondent is using it in the sense of Art. 13(2) of the Swiss Trademark Act (“STA”). The fact that the Respondent has merely registered the Domain Name, but is not currently using it, is irrelevant with regard to the Swiss Federal Tribunal’s decision T-Online vs. dated May 19, 2003 (sic! 2003, p. 882 ff). A domain name is considered to be used as soon as it is registered. Since the wording of the Domain Name alone is decisive, it is also irrelevant whether services similar to the ones the mark is registered for are offered on the website or not (see Swiss Federal Tribunal’s decision regarding of March 6, 2007, 4C.341/2005).
In the present case, the Claimant considers that the EMIRATES trademarks are famous marks in the sense of Art. 15 STA , which are protected for all goods and services.
The Claimant also sustains that the Respondent has registered the Domain Name without a legitimate interest and to the detriment of a third party infringing hereby Art. 2 and 3(1)(d) of the Swiss Act on Unfair Competition (“UCA”). Whether the Domain Name is actually used after registration is irrelevant under the UCA (ATF 128 III 239).
The Claimant submits in this respect also a series of e-mails showing in the opinion of the Claimant that the Respondent intends to gain profit from selling the Domain Name. It submits that following an offer from the Claimant, the Respondent did not hesitate to ask for USD 10,000 for the Domain Name, a very high price considering that the Respondent does not have any rights or legitimate interests in the Domain Name. The Claimant specifies in this regard that considering that the Respondent is a resident of Dubai, it is hard to imagine what legitimate interest he could possibly have in registering and holding a Swiss “.ch”, country code top level domain (ccTLD) consisting of the Claimant’s EMIRATES trademark.
As the Respondent is preventing the Claimant from owning the one and only “.ch” extension consisting of its trademark EMIRATES, it infringes art. 2 and 3(1)(d) UCA with the consequence that the Domain Name has to be transferred to the Claimant. B. Respondent
The Respondent is the dentist Günter Neumann, residing in Dubai (UAE). He submits that he graduated from the University of Saarland after studying in Germanyand in the United States of America. He was Assistant Professor for Orthodontics at the Freie Universität Berlin from 1997 to 1999. During the period from 1996 to 2000, he published more than 20 scientific publications on international conferences and journals. He indicates being author of a book that was published in 1993 and sold approximately 8000 copies per year.
He further indicates having previously been a resident of Berlin where he registered on September 22, 2000, the Domain Name. According to the Respondent, he transferred the Domain Name on July 25, 2003, to the company “Emirates Media and Marketing Intl” of which he claims to be the manager and owner. On September 14, 2011, he then transferred the Domain Name to himself.
The Respondent indicates that no pre-request dealings ever happened between the Claimant and the Respondent. He also sustains that the e-mail address is one of the addresses that are used by the Respondent or his family or staff, e.g. his “Travel Coordinator” who is registered with the Claimant’s company. He suspects that the Claimant obtained this address by accessing its customer database where the Respondent is registered.
The Respondent decided in August 2000 to set up a clinic in the Emirates Towers Office building in Dubai and submits the first page of a lease contract dated September 30, 2000, between “Emirates Towers LLC” and a certain “Clinic for Orthodontics and Aesthetic Dentistry”.
The Respondent indicates that he then registered the Domain Name symbolizing for him “working in the UAE and living in Switzerland”, while creating the acronym E.M.I.R.A.T.E.S standing for “European Medical Institute Rating According to Economic Standards”. He claims that he was using the Domain Name at that time for his clinic in the Emirates Towers starting from February 20, 2001.
The Respondent contends that the above acronym was published in 2002 and is protected by Swiss and international copyright law.
The Respondent further indicates having planned to move to Switzerland in 2002 and that he kept his residence in Germany and worked in his Berlin and Dubai clinics from 2000 to 2003.
On July 20, 2002, he opened his second business in the UAE under the protected name “Emirates Medical Centre FZLLC”.
In 2005, the Respondent opened another clinic under the name “German Emirates Medical Services FZLLC”.
Emirates Medical Center FZLLC, Branch 2, opened in 2006, in Dubai Media City. In 2011, the Respondent opened Tower Clinic Dental Clinic LLC, the Abu Dhabi Branch of the Emirates Medical Center – Tower Clinic Group, in downtown Abu Dhabi, UAE.
Emirates Medical Centre FZLLC and the other group clinics are owned by Royal Group Abu Dhabi, as a majority shareholder since 2010.
The Respondent claims that the trademarks mentioned by the Claimant are not for the word “Emirates” alone, and this does not entitle the Claimant to prevent others from using the word, e.g. in trade names.
Furthermore, the word “Emirates” means either “rank or office of an emir” or “the government, jurisdiction, or territory of an emir”. There are other emirates ruled by an Emir today, such as those existing in Nigeria.
The Respondent’s business names contain the word “emirates” and are named after the country of corporation, i.e. “Emirates Media and Marketing”, “Emirates Medical Center” and “German Emirates Medical Services”.
All these licenses and trade names have been approved under the same jurisdiction (UAE) as the trade name of the Claimant.
In addition, the Respondent indicates that the two mentioned Emirates Medical Centers owned by Royal Group Abu Dhabi are generating between 4.5 and 5 million Dirhams of average annual revenue and are serving more than 14’000 registered patients. The Respondent underlines that he is planning to extend the services of the Centers internationally, especially to Switzerland.
According to the Respondent, the Domain Name was registered on September 22, 2000, and was used during 13 years to promote the mentioned dental clinics and the self-created acronym E.M.I.R.A.T.E.S.
The trademarks of the Claimant were not known by the public in general, including the Respondent, in the year 2000. It was no famous mark at that time. The Respondent learnt about the existence of the Claimant only in 2001.
The Respondent’s website immediately shows pictures related to a dental clinic. No confusion is possible.
The Respondent was never contacted by the Claimant or his authorized representative before or during the dispute. The Claimant is insulting the Respondent by pretending that he is trying to sell the Domain Name. The Respondent never had any intentions of transferring the Domain Name to anyone at any point of time. Since the year 2000, the Respondent is using the Domain Name for his own business, that cannot cause any confusing to the Claimant’s business, nor are his trademarks registered in any group that is colliding to the Respondent’s business. The Domain Name refers in the case of the Respondent to the location of his business and the business trade published on the website in 2002. The association to the acronym led to the development of a “Strategy Wheel” at Harvard Business School in 2005. The Respondent’s company Emirates Media and Marketing International (EMMI) combined with Dentistry resulted in EMMI-Dentology, a concept associated to European Medical Institute Rating According to Economic Standards (E.M.I.R.A.T.E.S). 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 laws of Switzerland or Liechtenstein.
The Rules of Procedure, paragraph 24(d), specify 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 ground for defense; 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 under the laws of Switzerland
The Claimant has several rights in the distinctive sign “Emirates” in Switzerland.
First of all, Claimant holds three device trademark registrations in Switzerland prominently showing the word “Emirates” :
- device trademark EMIRATES, reg. No. P-438259, registered on December 7, 1995 in class 39;
- device trademark EMIRATES HOLIDAYS, reg. No. P-436281, registered on December 7, 1995, in classes 39 and 42;
- device trademark EMIRATES, international reg. No. 1166434, registered on May 17, 2013, designating Switzerland, in class 39.
Secondly, the Claimant can derive the protection of its name rights on the company name “Emirates” and rights to defend unfair competition from Art. 8 and 10bis of the Paris Convention for the Protection of Industrial Property of which the UAE are a signatory since 1996 and Switzerland since 1884. B. The registration or use of the domain name constitutes a clear infringement of the Claimant’s right
Because domain names identify persons, products, or services through the respective websites, the Swiss Federal Supreme Court repeatedly held that domain names are comparable to personal names, business names and trademarks and may be regarded as distinctive signs (DFT 126 III 239, 244, ). Domain names must maintain a sufficient distinction from protected signs to prevent confusion (decision by the Swiss Federal Supreme Court of March 6, 2007, , 4C.341/2005, cons. 5). In particular, the danger of confusion may be given by using a domain name which is similar or identical to protected distinctive signs of another party and thereby creating a danger of misappropriation.
According to Article 3 combined with Article 13 paragraph 1 STA, a Swiss trademark affords its owner the exclusive right to use it in relation to the goods and services for which it is registered. Swiss practice further acknowledges a likelihood of confusion if the (commercial) use of a domain name similar to a mark creates the risk of a wrong association of the website (ATF 128 III 401, 402, ).
Disregarding the ccTLD in the Domain Name for the purposes of the comparison, the Domain Name is confusingly similar to the Claimant’s registered trademarks. The registered trademarks do include an image (possibly with arabic letters) as well as the word “Emirates”. There is no doubt that the word “Emirates” is of prominence and constitutes the natural point of reference for the trademark, even for non-Arabic readers who did not appreciate the verbal significance of the image. In these circumstances, the Expert has no doubt that there is a risk of confusion for a person seeing the Domain Name (whether on a side by side comparison or relying on imperfect recollection) and comparing it with the trademark device.
The Swiss Federal Supreme Court has held that the 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 ), which is not possible if the domain name is inactive.
Pursuant to the Claimant, the Respondent was not using the Domain Name when the Request was filed (as evidenced in Annex B of the Request). According to certain legal writers, the Respondent’s use of the domain name for an inactive website may constitute a violation of the Claimant’s trademark rights according to Art. 13 STA (see: Gilliéron, Propriété Intellectuelle et Internet, Lausanne 2003, N 134).
The Respondent however submits an excerpt from a website showing the welcome page of the “Tower Clinic Dental Clinic LLC” apparently offering medical dentist services in Dubai and Abu Dhabi. The question whether the very recent uploading of that website following Claimant’s Request has an influence on the application of Swiss trademark law in the present case may be left open as the Respondent is in any case in violation of Claimant’s name rights and of the Unfair Competition Law Act (“UCA”).
Indeed, in a recent decision (DFT 4A_92/2011, ), the Federal Tribunal held that Switzerland is obligated in accordance with the Paris Convention for the Protection of Industrial Property to grant a foreign trade name the same protection as Swiss trade names. Consequently, the name of a foreign company which is not registered in the Swiss Commercial Register is only protected against an infringement of its personal name (Namensrecht, Art. 29 para. 2 Swiss Civil Code; see also BSK-ZGB I - R. Bühler, Art. 29 para. 62) or in case of a violation of the law on Unfair Competition. This presupposes however that the non registered trade name be to some extent commercially used in Switzerland.
Based on the file, there is no doubt that the Claimant is using its (trade) name EMIRATES in Switzerland in an intensive way. Under Art. 29 para. 2 Swiss Civil Code, the holder of a name may enjoin a third party from using the same or a confusingly similar name if such use impairs the name holder (DFT 128 III 401, 403 ). A third party’s name is confusingly similar if the user of such name is mistaken for the rightful owner of the protected name. No actual confusion is required, the mere risk of confusion is sufficient (DFT 127 III 160, 165; DFT 128 III 401). The contents of the underlying website does not have to be taken into account under Art. 29 para. 2 Swiss Civil Code. In addition, the two parties need not be in a relationship of competition (DFT 4A_45/2012, ). Preventing a third party to register a domain name under its own name constitutes an impairment of that party’s right to its name. It clearly follows from the foregoing that the Respondent violated Claimant’s name rights when he registered the Domain Name.
The registration and use of a domain name must also comply with the Swiss Federal Act on Unfair Competition (“UCA”). The registration of a domain name without legitimate interest but to impair a third party is considered an act against the principle of fairness and integrity under Article 2 UCA (DFT 126 III 239, 247 and DFT 116 II 365; see also Zurich Insurance Company, Vita Lebensversicherung-Gesellschaft v. Roberto Vitalini,WIPO Case No. DCH2005-0012). The Respondent prevents the Claimant from using the Domain Name for its own business in Switzerland. In addition, he is using a ccTLD pointing to Switzerland whereas his residence and main commercial interests are in Dubai. It remains to be verified whether the Respondent nevertheless has a legitimate interest or right which could outweigh this result. Yet, in this Expert’s opinion, this is not the case as will be shown below. C. The respondent has not conclusively pleaded and proven any relevant ground for defense
According to the binding statement from SWITCH, the Domain Name has been registered by the Respondent Günter Neumann resident in Dubai on September 14, 2011. Other possible previous holders of the Domain Name are not parties and therefore not relevant to these proceedings.
However, the Expert will from time to time take into account also some arguments provided by the Respondent and going back to the period before September 2011, although these events are strictly speaking procedurally not relevant.
The Respondent indicates having registered the Domain Name in the year 2000 by creating the acronym “E.M.I.R.A.T.E.S” standing for “European Medical Institute Rating According to Economic Standards”. Without giving any more details on the choice of this acronym and in particular why it was registered under the ccTLD “.ch”, the Respondent alleges that the Domain Name was used as from February 20, 2001 for his clinic in Emirates Towers. However, the respective annex does not display anything so that no conclusion can be drawn as to the existence of any use in this respect. In addition, as it follows from a first page of a lease contract, the entity’s name was at that time “Clinic for Orthodontics and Aesthetic Dentistry” therefore not comprising the term “Emirates”.
The Respondent also refers to his “second business” in the UAE, the company “Emirates Media and Marketing International FZLLC” created on July 25, 2003. The respective license from the Dubai Technology and Media Free Zone Authority that the Respondent submits expired however on August 31, 2005. In the absence of any current and valid license document, the Expert has to conclude that the Respondent may not derive any rights from that company.
The Respondent furthermore refers to the creation of a company “Emirates Medical Center FZLLC” on May 4, 2003. Here again, the respective license from the competent Dubai Authority shows that it expired on April 30, 2011. Another document that the Respondent submits appears to be another confirmation for that company established however on September 19, 2010. In the absence of any current and valid document, the Expert has concludes that the Respondent may not derive any rights from that company.
The same is finally true for the third company of the Respondent, i.e. “German Emirates Medical Services FZLLC”, the “commercial License” of which shows an expiry date of August 13, 2006.
The Respondent fails therefore to show any possible rights or interests in the term “Emirates”. In any event and under the assumption that the related facts before September 2011 would be relevant (which they are not in this Expert’s opinion), the Respondent’s name is “Günter Neumann” and he has not shown when and how he would have been licensed to use the above quoted trade names in relation to the Domain Name. In addition, even considering a registration date in 2000 already, the Respondent should have known Claimant’s trademarks registered in Switzerland since 1995, at least based on a previous trademark search. This is all the more true for the following dates when the Respondent transferred the Domain Name.
The Respondent’s sole defense therefore lies with the “self-created acronym” E.M.I.R.A.T.E.S. standing, according to his own terms, for “European Medical Institute Rating According to Economic Standards”. The Respondent believes having a “copyright” on that acronym. However, the Respondent does not show any serious use of that acronym and to what extent there would be any interest in a use, let alone a use in relation to a ccTLD “.ch”. In any event, there is no copyright protection for (such) a term/abbreviation under Swiss law (see Art. 2 para. 1 Swiss Copyright Act: “Werke sind, unabhängig von ihrem Wert oder Zweck, geistige Schöpfungen der Literatur und Kunst, die individuellen Charakter haben”).
Additionally, as stated above and pursuant to the Claimant, the Respondent was not using the Domain Name when the Request was submitted. The Respondent however submits an excerpt from a website showing the welcome page of the “Tower Clinic Dental Clinic LLC”. As far as this is relevant, the Expert only observes that here again the website at the Domain Name is not making reference to the term “Emirates” (not even for his “acronym”).
The Respondent appears to allege that “Emirates” is rather a geographical term which may not be used by others and does not necessarily point to the Claimant. The Expert does not share this view. Whereas it is true that “emirate” has an ordinary generic meaning standing for a territory ruled by an emir, this is not the case for the word “Emirates”. Indeed, the abbreviation used instead of “UAE” is “the Emirates” rather than “Emirates” alone. In addition, the Expert is of the opinion that the airline “Emirates” and its activities are well known in Switzerland so that the respective trademark “Emirates” will in most cases be considered as synonymous with or a reference to the Claimant.
The Expert therefore concludes that the Respondent has not conclusively pleaded and proven any relevant grounds for defense in the sense of paragraph 24 (d)(ii) of the Rules of Procedure.
Based on the foregoing and in particular the previous holding that Claimant’s name rights have been violated and that the Respondent’s activities amount to an act of unfair competition within the meaning of Article 2 of the UCA, the Expert concludes that these infringements of the right justify the transfer as requested in the request in accordance with paragraph 24(d)(iii) of the Rules and Procedures. 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.
Thomas Legler
Expert
Dated: December 7, 2013
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