EXPERT DECISION
Case No. DCH2005-0013
1. The Parties
Claimant is Unigestion Holding S.A. (“Claimant”), represented by Jacques De Werra, Lenz & Staehelin, Geneva, Switzerland.
Respondent is ITCG s.c. W. Drewniak, M. Olczykowski, Bielsko-Biala (“Respondent”), Poland.
2. Domain Name
The dispute concerns the domain name <unigestion.ch> (the “Domain Name”).
3. Procedural History
The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2005, by e-mail and on June 10, 2005, in hard copy. On June 10, 2005, the Center transmitted by e-mail to SWITCH a request for verification in connection with the Domain Name. SWITCH transmitted by e-mail to the Center its verification response the same day confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.
On June 13, 2005, 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, and formally notified the Respondent of the Request in accordance with the Rules of Procedure, paragraph 14. According to the Rules of Procedure, paragraph 15(a), the due date for a Response was set as per July 3, 2005.
Respondent has neither filed a Response within the set deadline nor expressed its readiness to participate in a Conciliation pursuant to paragraph 15(d) of the Rules of Procedure.
On July 4, 2005, the Center notified the Parties accordingly. Consequently, Claimant made an Application for the Continuation of the dispute resolution proceedings as specified in paragraph 19 of the Rules of Procedure on July 5, 2005.
On July 8, 2005, the Center appointed Tobias Zuberbühler as Expert in this case. The Expert was properly appointed and has declared his independence of the parties in accordance with the Rules of Procedure, paragraph 4.
4. Factual Background
The following facts appear from the Request and its annexes.
Claimant is the holding company of the Unigestion Group, one of Europe’s leaders in alternative investments and alternative investment management. Established in 1971, Claimant, operating out of Geneva, Paris, London, Guernsey, and the U.S., currently has 5.5 billion euros under management. It is the owner of the Swiss trademark UNIGESTION (CH P-424658), registered in classes 16, 35, 36, and 42.
The disputed Domain Name <unigestion.ch> was registered on April 20, 2005 by the Respondent. The Domain Name had before that been registered by a 100% affiliate of Claimant in 2001 until January 25, 2005. The registration had expired after said date because the e-mail reminder to renew the registration was lost in Claimant’s spam e-mail filter.
Respondent is an unidentified legal entity closely connected to two individuals. There are strong indications that Respondent has registered more than two hundred domain names under the country code top level domain “.ch”, many of which infringe upon third parties’ rights in the respective denominations, with the likely intention to sell them to third parties or to the legitimate owners.
5. Parties’ Contentions
A. Claimant
Claimant alleges that the registration and/or use of the Domain Name infringes upon its trademark rights under the laws of Switzerland and therefore requests that the Domain Name be transferred.
B. Respondent
Respondent has been notified in accordance with the Rules of Procedure, paragraph 14, but neither filed a Response nor expressed its readiness to participate in a Conciliation in accordance with the Rules of Procedure, paragraph 15(d). Therefore, the Claimant’s allegations are deemed uncontested.
6. Discussion and Findings
According to the Rules of Procedure, paragraph 24(a), the Expert shall decide the Request on the basis of the pleadings of both parties and the submitted documents in conformity with the Rules of Procedure.
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 (Rules of Procedure, paragraph 24(c)).
In particular, according to the Rules of Procedure, paragraph 24(d), 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) 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
As mentioned above, Claimant is the owner of the Swiss trademark UNIGESTION (CH P-424658).
Claimant has thus met its burden of proof under the Rules of Procedure, paragraph 24(d)(i).
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 <unigestion.ch>. As UDRP case law – to be applied in analogiam under the Rules of Procedure – has established that top level domains must be disregarded when considering a domain name’s identity or confusing similarity to a trademark, the Domain Name at issue is clearly identical to Claimant’s trademark UNIGESTION.
The disputed Domain Name was registered by Respondent on April 20, 2005, after Claimant’s affiliate’s registration had expired on January 25, 2005. Respondent currently operates a website under the Domain Name promoting its online gambling services.
Under the Swiss Trademark Act (Bundesgesetz über den Schutz von Marken und Herkunftsangaben vom 28. August 1992), a trademark holder may, based on art. 13 (2) Trademark Act, prohibit third parties the commercial use of a distinctive sign, i.e., inter alia, a trademark, if it falls within the scope of art. 3 (1) and (2) Trademark Act.
Because domain names identify persons, products, or services via the respective websites, the Federal Tribunal has repeatedly held that domain names are comparable to personal names, business names and trademarks and can therefore be regarded as distinctive signs (see, e.g., DTF 126 III 239, 244 <berneroberland.ch>). Swiss practice further acknowledges a likelihood of confusion if the (commercial) use of a domain name similar to a name (or mark) creates the risk of a wrong association of the website (DTF 128 III 401, 402 <luzern.ch>).
Whether the contents of a website operated under the domain name must be taken into account when examining the likelihood of confusion, currently appears to be subject to a change in practice. Whereas in earlier decisions the Federal Tribunal held that the contents of a website under the corresponding trademark shall be disregarded (see sic! 2003, p. 822 <t-online.ch>; DTF 128 III 401, 403 et seq. <luzern.ch>), a more recent decision suggests otherwise (see sic! 2005, p. 283 <riesen.ch>). As shown below, however, the issue is not relevant in this case and may therefore remain undecided.
As to the case at issue, the identity of the trademark UNIGESTION and the Domain Name <unigestion.ch> has already been established. The Domain Name clearly violates Claimant’s rights in the above trademark, whether or not the likelihood of confusion is decided with recourse to Respondent’s website’s content, for the following reasons.
An assessment of the risk of confusion under the Swiss Trademark Act must take into consideration both the degree of similarity of the signs as well as the similarity of the respective goods and/or services (see, e.g., David, Markenschutzgesetz, 2nd ed., Basel 1999, N 8 ad Art. 3). The two elements are interrelated, i.e., the more similar the goods and/or services are the more distinguishable the respective signs must be, and vice versa. Respondent operates the website under the Domain Name, inter alia, to promote money related games such as its online casino. Thus, a connection to financial matters -one of the categories of the UNIGESTION trademark registration - is established. In light of the distinctive mark of Claimant, its broad protection and the Domain Name’s identity with the UNIGESTION trademark, a likelihood of confusion is substantiated beyond any reasonable doubt.
Claimant has therefore proven the Domain Name’s identity with its trademark and Respondent’s infringement of its trademark rights by (i) Respondent's registration and use of the Domain Name and by (ii) Respondent's creating a likelihood of confusion as to the origins of the Domain Name and the services marketed under the Domain Name.
In view of the above, Claimant’s contentions as to Respondent’s infringement of its rights under the Swiss Unfair Competition Act (Bundesgesetz gegen den unlauteren Wettbewerb vom 19. Dezember 1986) as well as its rights emanating from the Swiss Code of Obligations’ protection of corporate names (Bundesgesetz betreffend die Ergänzung des Schweizerischen Zivilgesetzbuches [Obligationenrecht] vom 30. März 1911) may remain undecided.
In light of the above considerations, Claimant has met its burden of proof pursuant to paragraph 24(d)(ii).
Finally, Respondent's clear infringements of Claimant's rights justify a transfer of the Domain Name to Claimant in accordance with paragraph 24(d)(iii) of the Rules of Procedure.
7. Expert Decision
For the above reasons, in accordance with Paragraph 24 of the Rules of Procedure, the Expert orders that the Domain Name <unigestion.ch> be transferred to Claimant.
Tobias Zuberbühler
Expert
Date: July 18, 2005