WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sulzer Immobilien AG v. Mr. Patrick Michel
Case No. DCH2006-0008
1. The Parties
The Claimant is Sulzer Immobilien AG, Winterthur, Switzerland, represented by Juerg Suter, Winterthur, Switzerland.
The Respondent is Mr. Patrick Michel, Winterthur, Switzerland.
2. Domain Name
The dispute concerns the following domain name: <sulzerareal.ch>.
3. Procedural History
The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2006, by email and in hardcopy on April 6, 2006.
On April 7, 2006, the Center transmitted by email to SWITCH a request for verification in connection with the domain name at issue. On April 7, 2006, 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, the .ch and .li registry, 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 April 20, 2006. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was May 10, 2006.
On May 15, 2006, the Center notified both Parties that the Respondent had neither filed a Response nor expressed his readiness to participate in a Conciliation in accordance with Paragraph 15(d) of the Rules of Procedure.
Therefore, no Conciliation conference has taken place within the deadline specified in Paragraph 17(b) of the Rules of procedure.
On May 15, 2006 the Center also invited the Claimant to submit an application for the continuation of the Dispute resolution proceedings and to pay the corresponding fees in the amount of CHF 1’700 - by May 24, 2006, as specified in the WIPO Schedule of Fees, to the Center within 10 days after receipt of this notification in accordance with Paragraph 19 of the Rules of Procedure. The Center mentioned that, since it did not appoint a Conciliator, the Conciliator’s share of the fee would be set-off against the Expert decision fee so that the Claimant is required to pay the above-mentioned amount.
On May 31, 2006, the Center appointed Dr. Kamen Troller as Expert in this case. The Expert finds that he was properly constituted. In accordance with the Rules of Procedure, paragraph 4, the Expert has declared his independence of the parties.
3. Factual Background
The Claimant in this Dispute resolution proceeding is Sulzer Immobilien AG, a wholly owned subsidiary of Sulzer AG, domiciled in Winterthur, Switzerland. For the purpose of his Request, the Claimant stated that “Sulzer” should hereinafter collectively refer to Sulzer AG, Sulzer Immobilien AG or any other direct or indirect subsidiary of Sulzer AG, as the context may require.
According to the Switch WHOIS, the Respondent in this Dispute resolution proceeding is Mr. Patrick Michel, Wasserfurristrasse 58 in 8406 Winterthur, who is registered as the only holder of the domain name.
Since Respondent has not reacted to Claimant’s statement of claims, and has not put forward any factual allegations of his own, the Expert accepts the facts as alleged by Claimant (to the extent that those facts are common knowledge in Switzerland or supported by documents or other evidence submitted by Claimant).
According to the Claimant, the “Sulzerareal” is a significant piece of land (approx. 5’000 square meters) in Winterthur, Switzerland, where parts of the roots of the Sulzer Corporation are located. In 1834, Jakob Sulzer-Neuffert founded Sulzer and bought over 5000 square meters of land in Winterthur where the industrial success story of Sulzer began. Since that time, this particular area has been known as “Sulzerareal”.
The Claimant states that today Sulzer is no longer using the land for its industrial activities, but markets the Sulzerareal through its real estate division (Sulzer Immobilien AG) in order to attract businesses and residential users for the purchase of land, buildings or apartments, or for the rental of space on the Sulzerareal (Claimant’s attachment no. 3). The Claimant mentions that further and detailed information can be obtained at “www.sulzerareal.com”.
The Claimant is the owner of the trademark SULZER in Switzerland and in many other countries (Claimant’s attachment no. 4). The formal holder of all Sulzer trademarks is Sulzer Management AG, a wholly owned subsidiary of Sulzer AG. However, all direct and indirect subsidiaries of Sulzer AG are entitled to use the trademark based on a trademark license agreement with Sulzer Management AG, as this is the case with Sulzer Immobilien AG.
Prior to commencing this proceeding, the Claimant had tried to acquire the domain in an amicable way from the Respondent and offered the Respondent – without prejudice and disclaiming any obligation to do so – an appropriate sum of money for the transfer of the domain in order to achieve a quick resolution of the dispute. This offer was rejected by the Respondent, because he wanted more money. Claimant has not offered any evidence for this allegation, but since Respondent has not contested it, it shall be considered as a fact.
The WHOIS record for <sulzerareal.ch> shows that this domain name was created on May 28, 1999.
The domain name does not result to any available webpage.
The Expert furthermore finds that, to its best knowledge, the Respondent did not register “sulzerareal” as trademark in any jurisdiction.
4. Parties’ Contentions
The Claimant contends that the “Sulzerareal” and Sulzer’s activities in connection with the “Sulzerareal” are geographically clearly focused on a local, regional and national scale (as opposed to an international scale). Therefore, it is very important for Sulzer that these activities can be channeled through a domain name with a “.ch” country domain.
The Claimant also contends that the Respondent never had any relations or activities whatsoever related to the “Sulzerareal” or to Sulzer. He neither owns nor rents any space or buildings on the “Sulzerareal”. He has no business or other interests related to the “Sulzerareal”.
The Claimant states that Sulzer exercises its rights related to its trademarks as well as the rights deriving from the protection of the name under the Civil Code (ZGB). In addition, the Claimant declares that Sulzer claims its rights under the Unfair Competition Law (UWG).
1. Claimant’s right in a distinctive sign under the law of Switzerland or Liechtenstein
1.1 Trademark SULZER
The Claimant contends that the Respondent has no rights whatsoever to the trademark SULZER, therefore his use of the domain which contains “Sulzer” is a clear infringement of Sulzer’s trademark. Moreover, the Claimant claims that the trademark SULZER is a famous trademark and is therefore protected under Article 15 of the Trademark Law (MSchG). Sulzer is a Corporation quoted on the stock exchange and reported in 2005 nearly CHF 2.5 billion in sales and employs over 10’000 employees in 123 locations worldwide. The Claimant states that it can hardly be disputed that Sulzer is a Corporation well-known and reputable on a world wide basis. Thus, the trademark SULZER enjoys an increased level of protection, and therefore, any combination of “Sulzer” with any other term must be considered as an infringement of the trademark.
1.2 Trademark SULZERAREAL
The Claimant states that he has requested the registration of “Sulzerareal” as a trademark with the Swiss Federal Institute of Intellectual Property and received a letter of deposit on December 8, 2005 which confirmed the registration. The trademark is registered for class 36 (insurance industry, finance, money transaction and real estate). Thus, the Respondent’s registration collides with Sulzer’s rights arising out of the SULZERAREAL trademark.
In addition, the Claimant contends that the name Sulzer is protected under Article 29 of the Civil Code (ZGB) and the Respondent has no permission whatsoever to use this name or part of it.
1.4 Unfair Competition
Furthermore, the Claimant alleges that the Respondent’s registration of the domain leads to a confusion of the market place, because the Respondent has no relation whatsoever to the Sulzerareal.
2. The registration and/or use of the Domain Name at issue infringes Claimant’s right in a distinctive sign under the law of Switzerland or Liechtenstein
2.1 Trademark v. Domain Name
The Claimant alleges that the first part of the domain (i.e. “Sulzer”) is identical with the registered and protected trademark SULZER; this part of the domain is clearly the distinctive part of the entire domain. The part “areal” is generic and has no distinctive meaning.
The Claimant underlines that according to the Swiss Supreme Court “[hat] die Kennzeichnungsfunktion der Domain-Namen zur Folge, dass diese gegenüber absolut geschützten Kennzeichen Dritter den gebotenen Abstand einzuhalten haben, um Verwechslungen zu vermeiden. Gestützt auf Namen-, Firmen-, oder Markenrecht kann die Verwendung eines verletzenden Zeichens als Domain-Namen grundsätzlich verboten werden, wobei Kollisionen zwischen verschiedenen Rechten durch Abwägung der gegenseitigen Interessen zu entscheiden ist” (BGE 4c.31/2004).
The Claimant declares that the Court further states that domain names can also be regarded as distinctive signs under Swiss competition law (BGE 126 III 239 E. 2c). The Court clarifies as follows (E. 2b): “Bezeichnet ein Domain-Name für die Internet-Benutzer aus Sicht der Anwender eine Web Site […] als solche und identifizieren zudem bei geeigneter Ausgestaltung auch die dahinter stehende Person, Sache oder Dienstleistung; sie sind daher je nach konkreter Situation als Kennzeichen mit einem Namen, einer Firma oder einer Marke vergleichbar.”
In addition, the Court concluded that the “Kennzeichenschutz” (i.e. trademark, name) takes precedence over the domain name registration system “first come, first served” (BGE 128 III 354).
2.2 Protection of Name
According to the Claimant, whoever talks about the Sulzerareal undoubtedly means the area in Winterthur which – at least partly - belongs to Sulzer. The likelihood of any confusion is defined consistent with the Swiss Federal Supreme Court in BGE 128 III 410 E.5 for all distinctive signs:
“Massgebend ist, ob mit der Verwendung eines ähnlichen oder gleichlautenden Namens für einen Internet-Site durch einen schlechter Berechtigten die Gefahr von Fehlzurechnungen der Sites geschaffen wird, d.h. einer Fehlidentifikation der hinter dem Site stehenden Person, oder dass falsche Zusammenhänge vermutet werden. Es genügt dabei auch die Gefahr einer bloss vorläufigen Fehlzurechnung, mit der Folge, dass es zu ungewollten Zugriffen auf den Site durch Personen kommt, welche die Homepage des berechtigten Namensträgers besuchen wollten. […] Entscheidend ist das Bestehen einer Verwechslungsgefahr; dass Verwechslungen tatsächlich stattgefunden haben, ist nicht erforderlich.”
2.3 Confusion of the Market Place
The Claimant contends that the public will be mislead and confused if the internet users are not directed to products and services which are related to the Sulzerareal when using the domain name. Since it is well known that the Sulzerareal is located in Winterthur most users will try to get access to its website through the “.ch” country domain.
The Claimant adds that, following the decisions DCH2004-0012 (rhäzünser) and DCH2005-0009 (remax), the Swiss Unfair Competition Law is relevant in this case as well. According to the remax decision an infringement of Swiss competition law exists, whenever the Claimant is barred from using a web site for marketing his products and services. The Claimant states that this is applicable also in the present case since he is prevented from conducting its business connected to the “Sulzerareal” under the corresponding domain.
The Claimant underlines that the Respondent has registered the domain but never really actively operated a website under the domain (last try to access the domain on April 3, 2006). There is only a page holder from a service provider on the domain. In BGE 4c.376/2004 E. 3.5 the Swiss Federal Supreme Court held, that any market confusion is possible independent of the content of a website; relevant is, what an average internet user expects and can expect. As in the remax case, there never was an active web site in the present case and hence the conclusions of the remax case may be applied to this case accordingly.
The Claimant concludes that Sulzer is unlawfully prevented from exercising its rights and pursue its legitimate commercial interests because of Respondent’s unlawful blocking and occupying the domain. The Respondent violates the Claimant’s rights in a number of ways, and therefore, his registration can not be protected and the domain shall be transferred to Sulzer.
The Respondent did not reply to the Claimant’s contentions.
5. Discussion and Findings
5.1 Pursuant to art. 24. lit.(c) of the Rules, 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 or Liechtenstein.
It results from lit.(d) of the same article, that in particular, 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 of the domain name.
5.2 In the present case, it is obvious that the Claimant has a right in the distinctive signs “Sulzer” and “Sulzerareal” and that the registration or use of the domain name <sulzerareal.ch> constitutes a clear infringement of the Claimant’s right.
5.3 Claimant Sulzer is a very well known enterprise, above all in Switzerland, but also beyond its frontiers. Claimant has registered many trademarks using the distinctive sign Sulzer; Claimant has furthermore registered an identical top level domain name <sulzerareal.com>.
By registering the domain name <sulzerareal.ch>, Respondent has appropriated Claimant’s main distinctive sign in Claimants home market, apparently with the sole purpose to be able to sell that name to Claimant at a high price.
In the present proceedings, Respondent has not even tried to justify its registration. Therefore, the Expert finds that the registration by Respondent of the domain name <sulzerareal.ch> constitutes a clear infringement of the Claimant’s rights.
6. Expert Decision
For the above reasons, in accordance with Paragraphs 24 of the Rules of Procedure, the Expert orders that the domain name <sulzerareal.ch> be transferred to the Claimant.
Dr. Kamen Troller
Dated: June 14, 2006