The Claimant is Lek Invest GmbH in Liquidation, Switzerland, represented by de la cruz beranek Attorneys at Law Ltd., Switzerland.
The Respondent is L. A., France. 2. The Domain Name
The dispute concerns the following disputed domain name The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2020. On November 26, 2020, the Center transmitted by email to SWITCH, the “.ch” and “.li” registry, a request for verification in connection with the disputed domain name. On November 30, 2020, SWITCH transmitted by email to the Center its verification response confirming that the Respondent is listed as the holder of the disputed 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 procedures for “.ch” and “.li” domain names (the “Rules of Procedure”), adopted by SWITCH, on January 1, 2020. In accordance with the Rules of Procedure, paragraph 14, the Center formally notified the Respondent of the Request, and the Dispute resolution procedure commenced on December 9, 2020. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was December 29, 2020. 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 December 30, 2020, the Center notified the Claimant accordingly, who on January 5, 2021 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 January 14, 2021 the Center appointed Anne-Virginie La Spada 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. 3. Factual Background The Claimant is a limited liability company named Lek Invest GmbH in Liquidation, incorporated under the Laws of Switzerland. It operates in the field of financing activities. The company was registered with the Swiss Registry of commerce under the name “Lek Invest GmbH” on July 25, 2012. Its business name has been amended into “Lek Invest GmbH in Liquidation” on October 16, 2020 to reflect the status of the company. The Claimant does no operate any website for its activities. The disputed domain name was registered on May 6, 2020. According to the information provided by SWITCH, the disputed domain name is currently held by the Respondent. The disputed domain name resolves to a website in French language promoting financial services in the field of investment and real estate. The name “Lek Invest” is depicted with a logo at the top left corner of each page of such website. Several pages of the website include a reference to the name “Lek Invest GmbH” with the indication of Claimant’s street address in Switzerland. The website names as contact person the sole shareholder and former Chief Executive Officer (“CEO”) of the Claimant. 4. Parties’ Contentions A. The Claimant The Claimant alleges that the Respondent has registered a domain name that is identical or at least very similar to its business name. Moreover, according to the Claimant, the disputed domain name is used to direct consumers to a website, which advertises financial services in the field of investment and real estate and pretends to be an offer of the Claimant. According to the Claimant, the website contains several indications that give a misleading impression, such as inter alia the correct and complete postal address of the Claimant or the mention of the name of the sole shareholder of the Claimant identified as “CEO”. Therefore, the Claimant argues that the disputed domain name is used to mislead consumers and let them think that the website accessible through the disputed domain name is operated by the Claimant. This amounts to an impermissible impersonation of the Claimant. The Claimant argues that the website infringes applicable Swiss law in several ways and in particular that it violates the Claimant’s right to a name and to a registered business name according to the Swiss Civil Code (“CC”) and the Swiss Code of Obligations (“CO”). The Claimant further argues that the registration and use of the disputed domain name constitutes unfair competition under the law of Switzerland and that it violates all applicable laws on the supervision of financial institutions. The Claimant requests that the disputed domain name be transferred to it. B. The Respondent The Respondent did not reply to the Claimant’s contentions. 5. Language of the procedure According to the Rules of Procedure, paragraph 7(a), the procedure shall be conducted at the Claimant’s choice in English, German, French or Italian. As the Complaint was drafted in English, the Expert considers that it is the Claimant’s choice that the procedure shall be conducted in English. The Respondent, who did not file a Response, did not object to English being the language of the procedure. 6. Discussion and Findings According to the Rules of Procedure, paragraph 24(c), the Expert shall grant the Request if the allocation 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 (in disputes over a domain name under the country code Top-Level Domain “.ch”). The Rules of Procedure, paragraph 1, define a “right in a distinctive sign” as any right recognised by the legal system devolving from the registration or use of a sign, which protects the holder of the right from infringement of his interests as the result of registration or use of an identical or similar sign by third parties, including, but not limited to, the right in a registered business name, a personal name, a trade mark, a geographical indication and the defensive rights devolving from the law on unfair competition. According to paragraph 24(d) of the Rules of Procedure, 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 revocation of the domain name, depending on the remedy requested in the request. A. The Claimant has a right in a distinctive sign under the law of Switzerland The Claimant’s present business name is Lek Invest GmbH in Liquidation. Its initial business name Lek Invest GmbH has been registered in the Registry of commerce on July 25, 2012. It was amended into Lek Invest GmbH in Liquidation on October 21, 2020, following the Claimant’s decision to dissolve the company. The terms “in Liquidation” indicate the status of the company. Under Swiss law, a limited liability company that is in liquidation retains its legal personality until completion of the liquidation operations (art. 821a CO referring to art. 739 CO). The liquidators may undertake all acts that are necessary for the liquidation. Arguably, the filing, by a company in liquidation, of a complaint aiming at the transfer of a domain name registered by a third party in usurpation of such company’s business name, may fall into the scope of the liquidators’ powers, insofar as the domain name, once transferred to the claimant, would be an asset capable of being valued and liquidated like other assets. The Claimant has therefore standing to file this Complaint in the Expert’s opinion. Under Swiss law, registered business names are protected under Art. 956 para. 2 of the CO. Claimant can also claim a right to a name protected under Art. 29 para. 2 of the CC. The Claimant has is therefore a right in a distinctive sign under Swiss law. B. The allocation 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 a) Clear infringement of the Claimant’s right to a registered business name According to Art. 956 para. 1 CO, the entry of a company name in the Registry of commerce confers its exclusive use on its rightful owner. According to Article 956 para. 2 CO, “A party whose interests are injured by the unauthorised use of a business name may apply for an injunction banning further abuse of the business name and sue for damages if the unauthorised user is at fault.” According to the Federal Supreme Court, not only the use of a business name identical to the one on which the owner has an exclusive right is prohibited, but also the use of a similar name which is not sufficiently different from the one registered, with the consequence that it creates a likelihood of confusion (ATF 131 III 5772 c.3). The likelihood of confusion is examined in the same way for the whole of the law on distinctive signs (ATF 126 III 2139 c. 3a). Although the disputed domain name is not strictly identical to the Complainant’s business name as currently registered, it reproduces the distinctive part of it, i.e. “lek invest” excluding only the legal form of the company “GmbH” and its current status “in Liquidation”. The disputed domain name is therefore highly similar to the Claimant’s registered business name. Art. 956 CO protects a business name against the use of an identical or similar sign as a business name. Any use of a distinctive sign which is in immediate connection with the commercial activity, such as the use of the sign in address directories or its inscription on business papers, constitutes use as a business name (ATF 131 III 572 c. 3). As soon as the sign can be understood as designating an enterprise or company, it must be assumed that it is used as a business name (I. Cherpillod, in Commentaire Romand - Code des Obligations II, 2nd edition, Basel 2017, ad art. 956 CO N 3). The question of whether the use of the distinctive element of a business name in a domain name falls within the scope of Art. 956 para. 2 CO has not yet been decided in a ruling of the Federal Supreme Court. However, the Expert is of the opinion that a domain name, when used as the address of a website, can be understood as a designation of the company operating the site, and thus as the name of such company (see Lausanne District Court, sic! 2002, p. 55), so that Art. 956 CO is applicable. In the present case, the disputed domain name resolves to an active website where the name “Lek Invest” is used in such manner as to be perceived as the name of the operator of the website, i.e. of the business entity behind the website. Indeed, the name “Lek Invest” is featured with a logo on the top left corner of the landing page. Furthermore, the business name “Lek Invest GmbH” is featured with the Claimant’s postal address on several pages of the Respondent’s website. Thus, in his website, the Respondent is using as a business name a sign almost identical to the Claimant’s registered business name, in clear violation of art. 956 CO. There is no doubt in such circumstances that a visitor of the Respondent’s website would perceive the disputed domain name as a designation of the business entity operating the website, so that the use of disputed domain name is a clear infringement of art. 956 CO. b) Clear infringement of the right in the name of the Claimant In addition to the rights associated with the business name, the right to a name within the meaning of Article 29 para. 2 CC may be invoked if a “characteristic element of the business name is used by a third party, for example as a […] a domain name [...]” (I. Cherpillod, in Commentaire Romand - Code des Obligations II, 2nd edition, Basel 2017, ad art. 956 CO N 16). According to Article 29 para. 2 CC, a person who is harmed by an usurpation of his name may bring an action to have it stopped. It is not necessary for the entire name to be taken over for there to be usurpation of a name within the meaning of Article 29 CC, but it is sufficient for the main part of the name to be taken over for a risk of confusion to be created (ATF 128 III 353 c. 4). According to the Federal Supreme Court, “the identification function of domain names means that they must be sufficiently distinct from distinctive signs belonging to third parties and protected by an absolute right, such as the right to a name” (ATF 128 III 353). In the present case and for the same reasons as those set out above, the Expert considers that the disputed domain name is almost identical to the name of the Complainant for there to be a likelihood of confusion. Indeed, considering that the Respondent uses the disputed domain name as a website address to operate a website as if it were the Claimant, the latter can legitimately fear that the public might wrongly think that the products or services originate from the same company (A. Alberini/K. Guillet, L’incidence du contenu de site Internet dans les litiges en matière de noms domaines, in Sic! 2012, p.305, 310). c) Clear infringement of the rules on unfair competition The Claimant claims that the Respondent has also committed a violation of the Federal Act against Unfair competition (“UCA”). According to Article 3, paragraph 1 letter d of the UCA, whoever “takes measures which are likely to cause confusion with the goods, works, services or business operations of another person” acts unfairly. Also, “any deceptive behavior or business conduct or conduct in any other way contrary to the principle of good faith which influences the relationship between competitors or between suppliers and customers” is unfair and unlawful according to the so-called general clause of Article 2 UCA. As business identifiers, domain names are subject to the fair trading principle of unfair competition law (ATF 128 II 353, cons. 4). In the present case, as already mentioned, the disputed domain name almost identically reproduces the registered business name of the Claimant. In addition, the disputed domain name resolves to a website where the Respondent is seeking to impersonate Claimant, by references to Claimant’s former business name Lek Invest GmbH and to its sole shareholder and former CEO. As a result, when registering and using such a domain name, the Respondent created a likelihood of confusion to the effect that Internet users are likely to assume a connection between the Respondent’s website and the Claimant’s company. In this respect, the Respondent has acted in violation of Article 3, paragraph 1 letter d UCA. 7. Expert Decision For the above reasons, in accordance with paragraph 24 of the Rules of Procedure, the Expert orders that the domain name Anne-Virginie La Spada
Expert
Date: February 10, 2021
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