The Claimant is Raiffeisen Schweiz Genossenschaft of St. Gallen, Switzerland, represented by Bratschi Wiederkehr & Buob AG, Switzerland.
The Respondent is SC Swiss Caution SA, Yann Guyonvarc’h of Bussigny, Switzerland. 2. Domain Name
The dispute concerns the following domain name . 3. Procedural History
The Claim was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2016. On April 22, 2016, the Center transmitted by email to SWITCH, the “.ch” and “.li” registry, a request for verification in connection with the disputed domain name. On April 25, 2016, 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 Claim 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 Claim, and the Dispute resolution proceedings commenced on April 27, 2016. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was May 17, 2016.
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 May 18, 2016 the Center notified the Claimant accordingly, who on May 19, 2016 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 June 2, 2016 the Center appointed Theda König Horowicz as Expert in this case. The Expert finds that she was properly appointed. In accordance with Rules of Procedure, paragraph 4, the above Expert has declared her independence of the parties. 4. Factual Background
The Claimant is one of the largest banking groups of Switzerland and provides services in the retail business under the name “RAIFFEISEN” which is notorious. Its company was created under the name “RAIFFEISEN SCHWEIZ GENOSSENSCHAFT” in 1919.
The Claimant owns Swiss Trademarks containing the word “RAIFFEISEN”, in particular:
- Word Mark No 2P-411923, in international classes 8, 14, 16, 18, 24, 25, 28, 34, 35, 36, 41 and 42 registered on August 22, 1994.
- Word picture mark No P-4151754, in international classes 35, 36 and 42 registered on May 26, 1998.
- Word picture mark No P-543754, in international classes 14, 16, 18, 25, 27, 28, 35, 36 38, 41 and 42 registered on March 13, 2006.
The Respondent appears to be a company registered in Switzerland the goal of which is to provide services in the field of insurances, especially with regard to rent guarantees.
The Respondent registered the domain name on June 12, 2012.
The disputed domain name is currently linked to advertisement of the Registrar, GoD, LLC. The website displays sponsored listings. 5. Parties’ Contentions A. Claimant
The Claimant alleges to have rights in the name “RAIFFEISEN”, as the name is registered as a trademark on its behalf. The Claimant also mentions its rights in the name “RAIFFEISEN” based on article 29 of the Swiss Civil Code.
The Claimant considers that the disputed domain name infringes its trademark rights considering that it contains “RAIFFEISEN” in its entirety and that the addition of the generic word “caution” would create a risk of confusion in the public’s mind (article 13 of Swiss Trademark Law). In addition, the Claimant states that the trademark RAIFFEISEN is famous and the disputed domain name would threaten its distinctiveness or exploit its reputation or damages its reputation (article 15 of Swiss Trademark Law).
The Claimant also alleges a violation according to article 29 of the Swiss Civil Code. The name “RAIFFEISEN” is registered as a trade name and as a domain name . This name is unique and it is clearly associated in the public’s mind to the banking services of the Claimant. A likelihood of confusion may thus arise, particularly since the addition of the generic term “caution” with “RAIFFEISEN” may lead the public to make a connection between the domain name in dispute and the Claimant.
Finally, the Claimant develops that the registration of the disputed domain name infringes the Swiss Unfair Competition Law. In particular, the disputed domain name leads the public to believe that there is a link with the Claimant’s business. B. Respondent
The Respondent did not submit a reply. 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 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
The Claimant has evidenced to be the owner in Switzerland of several trademark registrations containing “RAIFFEISEN” for many years (the first trademark registration produced by the Claimant within these proceedings dates of 1994). The Claimant also showed that its business name, which contains “Raiffeisen” has been registered in Switzerland since 1919.
The Panel thus concludes that the first condition of paragraph 24 (c) of the Rules of Procedure is fulfilled. B. The registration or use of the domain name constitutes a clear infringement of the Claimant’s right
The Respondent registered the disputed domain name which contains in its entirety the registered trademark of the Claimant.
According to Article 3 combined with Article 13 paragraph 1 of the Swiss Trademark Act, a trademark right gives its owner the exclusive right to use a trademark in relation to the goods and services for which it has been registered.
The trademark RAIFFEISEN is with no doubt notorious in Switzerland relation with banking services and the Claimant has provided sufficient evidence in this regard, notably in relation with its long-standing use of RAIFFEISEN for almost a century now.
The disputed domain name is not actively used, but contains the generic term “caution” which refers to a type of services which are similar to banking.
Even if the disputed domain name is not currently used (other than displaying sponsored listings), a risk of confusion may arise between the disputed domain name and the Claimant’s trademark RAIFFEISEN.
The Swiss Supreme Court considered that in the case of a conflict between a trademark and a domain name, the content of the website linked to the domain name would be determining. In particular, the sole registration of a domain name would not be sufficient to establish the violation of a trademark right unless the trademark is well-known (4C.31/2004 = sic! 2005, 200 - ).
The status of a well-known trademark is a question of facts which has to be evidenced (ATF 130 III 753) and which depends on various circumstances such as the strength of the trademark in advertising, its great financial value in many fields, its high level of recognition among the public and its uniqueness (ATF 124 III 277 / JdT 1998 I 324ss - nike).
The Claimant submitted substantial evidence showing that its trademark RAIFFEISEN acquired quite a high level of significance and recognition in Switzerland. The Claimant’s allegations in this regard were not rebutted by the Respondent.
Under the circumstances, the Expert considers that RAIFFEISEN is obviously a strong trademark, known by a large part of the Swiss public and which therefore can be considered as well-known in Switzerland.
In the light of the above, the Expert concludes that the registration of the disputed domain name constitutes a clear infringement of Swiss Trademark Law.
The second condition of paragraph 24(c) of the Rules of Procedure is thus fulfilled. 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: June 23, 2016
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