WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AIS Aquila Investment Services AG v. Novartis AG
Case No. DBIZ2002-00074
1. The Parties
A. The Complainant
The Complainant in this administrative proceeding is AIS Aquila Investment Services AG, Zurich, Switzerland.
B. The Respondent
The Respondent in this administrative proceeding is Novartis AG, Basle, Switzerland.
2. Domain Name and Registrar
This dispute concerns the domain name <aquila.biz>.
The Registrar with which the domain name is registered is Virtual Internet PLC, London, United Kingdom.
3. Procedural History
The STOP Complaint was received by WIPO Arbitration and Mediation Center ("the Center") by e-mail on April 26, 2002, and in hardcopy on April 30, 2002. The Center has verified that the Complaint satisfies the formal requirements of the Start-up Trademark Opposition Policy ("the STOP"), the Rules for Start-Up Trademark Opposition Policy ("STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .biz ("WIPO Supplemental STOP Rules").
After a notice of deficiency was sent on May 15, 2002, the Complainant filed additional comments on the same day.
On May 23, 2002, the Center notified the Respondent of the Complaint by e-mail and courier and informed the Respondent inter alia that the last day for sending its Response was June 12, 2002.
On June 10, 2002, the response was received.
On July17, 2002, the Panelist was appointed and the file was transmitted to him.
4. The Parties' Contentions
A. The Complainantís Contentions
The trademark "Aquila Partners Group" is being used by the Complainant for financial services, in particular financial advisory and asset management services. The trademark "Aquila Partners Group" has been registered in Switzerland and internationally on November 23, 2000, in class 36 of the Swiss and international trademark classification (Nice Classification): insurance; financial affairs; monetary affairs; real estate affairs. In addition, several associated corporations have been using the mark "Aquila" in their official firm name, e.g. "Aquila Partners Group" (founded in 1999), "AIS Aquila Investment Services AG" (founded in early 2001) and others, and are, hence, protected by Swiss corporation law.
Factually and legally, the manner in which <aquila.biz> is being used by the Respondent is obviously identical to the trademark and service mark in which the Complainant has rights, as outlined above. It is assumed that the Respondent has no rights or legitimate interests in respect of the domain name that is the subject of the Complaint, and, therefore, the domain name should be considered as having been registered and/or used in bad faith.
The Respondent is neither a registered holder of the trademark (or service mark) "Aquila" nor using the mark in its company name or in the name of an affiliated company. Further, the domain name "Aquila" is not a commonly used domain name and, more specifically, it is not being used by the Respondent for its business. The Complainant, however, as set out in the original Complaint, has registered trademark rights, and it is using the name "Aquila" in its company name as well as for its business; in addition, the Complainant has been using the domain name <aquila-is.ch> since more than one year. Therefore, the Respondent has no rights or legitimate interest in using the domain name <aquila.biz>.
B. The Respondent's Contentions
The trademark "Aquila Partners Group" is not identical to the domain name which has been registered by the Respondent. The STOP procedure requires identity between the trademark and the domain name, which is different from the UDRP which allows for confusing similarity.
Further, the Complainant has extensive rights to the name by reason of several trademark registrations around the world. The trademark has been registered and is being used by the Respondent for optical instruments and for contact lenses. The trade- mark certificates were issued on behalf of CIBA-GEIGY AG. However, it is important to note that SANDOZ AG was merged with CIBA-GEIGY AG to form NOVARTIS AG in 1996. Novartis AG is fully legalized to take over the ownership of all Intellectual Property rights of SANDOZ AG and CIBA-GEIGY AG. Novartis AG is in the process of correcting the registrant appearing on the trademark certificates from CIBA-GEIGY AG to NOVARTIS AG; nonetheless this should not render Novartis AG any lesser rights to register the domain name in question.
Finally, it should be noted that the domain name was only registered by the Respondent on March 27, 2002, and it has not been possible for Novartis to point the name to its website yet. The name was part of the 2B queue and was therefore put on hold by Neulevel for 30 days until a STOP dispute was completed. The name is important to the Respondent and will be used to protect their brand on the Internet as well as establishing an Internet Business Presence for customers of Aquila products.
5. Discussion and Findings
A. Identity of the Trademark
Even under the STOP Rules, where identity must exist between the disputed domain and the trademark for which the Complainant holds rights, the distinguishing feature of a trademark which is made of several elements is the one which will be considered in order to accept or to deny their identity. In the present case, the distinguishing feature of the Complainant's trademark is "Aquila" Partners Group. It is questionable whether there is identity within the meaning of the STOP Rules between the Complainant's trademarks and the Respondent's domain name. However, due to the findings below, it is not necessary for the Panel to make a finding under this condition.
B. Rights or Legitimate Interests of the Respondent
The Respondent is a well-known Swiss Corporation which results from the merger of Ciba-Geigy and Sandoz. Therefore, the Respondent is successor-in-title to the trademark rights "Aquila" around the world. Alternatively, if the merger had been only an economic one to the extent that the legal entity "Sandoz" would not have altogether disappeared for some tax reason or other legal grounds, then the Respondent would at least have legitimate interests since it has undertaken steps to correct the registration of the trademark "Aquila" in various registries.
Further, the Panel notes that the Respondent is using the trademark "Aquila" for optical instruments and for contact lenses.
C. Registration in Bad Faith
None of the trademarks involved in the present proceedings may be said to be well known. Therefore, it is not surprising that the Respondent, which is using "Aquila" as a trademark, proceeded to register it as a domain name. Its explanations, whereby it intends to use the web site for protecting brand on the Internet as well as for establishing an Internet business presence for customers of Aquila products, sounds realistic in view of the marketing of lenses and optical instruments under that trademark. Therefore, the Panel finds that there has been no registration in bad faith.
In the light of the foregoing, the Panel decides that the domain name registered by the Respondent is identical to the trademarks of the Complainant, that the Respondent has a right to it as this domain name corresponds to its trademark used since years, and that the domain name has not been shown to have been registered in bad faith by the Respondent.
Therefore, by application of Para 4 (b) and (c) of the STOP, the Panel declines to order the transfer of the domain name <aquila.biz> to the Complainant.
Further, in accordance with Paragraphs 4 (l) (ii) (3) of the STOP and 15 (e) of the STOP Rules, the Panel decides that no subsequent challenges under the STOP against the disputed domain name shall be permitted.
Dated: August 2, 2002