WIPO Arbitration and Mediation Center
Pan San Nord-West AG v. Donea Cristina
Case No. DCH2012-0002
1. The Parties
The Claimant is Pan San Nord-West AG of Würenlingen, Switzerland, represented by Bär & Karrer, Switzerland.
The Respondent is Donea Cristina of Bistra, Romania.
2. Domain Name
The dispute concerns the following domain name: <pansan.ch>.
3. Procedural History
The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2012. On January 12, 2012, the Center transmitted by email to SWITCH, the “.ch” and “.li” registry, a request for verification in connection with the disputed domain name. On January 13, 2012, 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, 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 January 17, 2012. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was February 6, 2012.
The Respondent has neither filed a Response nor expressed its readiness to participate in a Conciliation in accordance with Paragraph 15(d) of the Rules of Procedure.
On February 7, 2012 the Center notified the Claimant accordingly, who on February 8, 2012 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 February 22, 2012 the Center appointed Andrea Mondini as Expert in this case. The Expert finds that it was properly appointed. In accordance with Rules of Procedure, paragraph 4, the above Expert has declared his independence of the parties.
4. Factual Background
The Claimant, a stock company registered with the Swiss commercial register under the trade name PAN SAN NORD-WEST AG since June 1999, is a member of the Pan San Group ("Group") which informally combines four Swiss companies, all offering surface cleansing services throughout Switzerland. Until the beginning of the year 2010, it was the former Pan San AG who administered the joint activities of the Group. In this role, Pan San AG took care of the joint website and registered the domain name <pansan.ch> in May 2000. In February 2010 the Pan San AG has gone bankrupt. While the administrative tasks of the Group went over to the Claimant, the domain name <pansan.ch> was not transferred to the Claimant but remained registered under the name of the liquidated Pan San AG. As a consequence thereof, SWITCH deleted the domain name <pansan.ch> on November 25, 2011. The Claimant intended to immediately reclaim the domain name <pansan.ch> under its own name after the 14 day administrative transition period, which ended on December 10, 2011; 0.00 h. However, when the Claimant tried to register the domain name <pansan.ch> on December 10, 2012; 1.00h it was already registered under the name of Respondent.
On December 14, 2011 Claimant sent a cease and desist letter to the Respondent. According to the Claimant the letter could not be delivered.
The Respondent has parked the domain name <pansan.ch> at a domain name parking service. Currently the website under “www.pansan.ch” displays various advertisements.
5. Parties’ Contentions
The Claimant states that it has acquired an exclusive right in its trade name PAN SAN NORD-WEST AG when it was registered as a company with the Swiss commercial register. The Claimant asserts that the Respondent's registration of the domain name <pansan.ch> interferes with Claimant's trade name and the trade names of the other Group members.
The Claimant also states that the registration of the domain name <pansan.ch> infringes its exclusive right in its name.
Lastly, the Claimant argues that the Respondent's registration and use of the domain name <pansan.ch> constitutes an act of unfair competition. The Claimant asserts in particular that the Respondent causes confusion with the goods, works, services or businesses of others and violates the principle of fairness and integrity in the market.
The Respondent did not reply to the Claimant’s contentions.
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 laws of Switzerland or Liechtenstein.
The Rules of Procedure, paragraph 24(d) specify 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 ground 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 under the law of Switzerland.
This Expert finds that, as mentioned above, the Claimant proved its ownership in the trade name and in the name PAN SAN NORD-WEST AG under Swiss law.
B. The registration or use of the domain name constitutes a clear infringement of the Claimant’s right
According to Article 956(2) Swiss Code of Obligations ("CO") the owner of a trade name may enjoin a third party from using an identical or confusingly similar trade name if such use is likely to affect its own use of the trade name. Under Swiss law, though, it is disputed whether the use of a domain name, which is identical or confusingly similar to a trade name, violates trade name rights. However, in the case at hand, this issue needs not be decided since the Claimant may in any event assert violation of the right to its name against the use of its trade name in a domain name (BSK-ZGB I- R. Bühler, Art. 29 N.62).
Pursuant to Article 29(2) of the Swiss Civil Code ("CC") the holder of a name may enjoin a third party from using the same or a confusingly similar name if such use impairs the name holder (DFT 128 III 401, 403 <luzern.ch>). A third party's name is confusingly similar if the user of such name is mistaken for the rightful owner of the protected name; no actual confusion is required, the mere risk of confusion is sufficient (DFT 127 III 160, 165). The Claimant's name consists of a distinctive part, PAN SAN, and a rather descriptive part, NORD-WEST. The domain name <pansan.ch> incorporates the distinctive part of Claimant's name as a whole. It is likely that the domain name <pansan.ch> is expected to be the domain name of the company with the name PAN SAN NORD-WEST AG. Therefore, the domain name <pansan.ch> is confusingly similar to the Claimant’s name PAN SAN NORD-WEST AG. Preventing a third party to register a domain name under its own name constitutes an impairment of that party’s right to its name (DFT 128 III 401, 410 <luzern.ch>). The fact that the Claimant is not able to reflect the distinctive part of its name as a domain name constitutes an impairment to the Claimant. The Respondent therefore infringes the Claimant’s rights in its name.
The registration and use of a domain name must also comply with the Swiss Federal Act on Unfair Competition ("UCA"). The registration of a domain name without legitimate interest but to impair a third party is considered an act against the principle of fairness and integrity under Article 2 UCA (DFT 126 III 239, 247 "berneroberland.ch"). The Respondent has not registered the domain name <pansan.ch> for its own use but parked it at a domain name parking service and thereby prevents the Claimant from using the domain name for its own business. In doing so, the Expert finds in this case that the Respondent has committed an act of unfair competition under Swiss law.
The Respondent has not pleaded or proven any relevant grounds for defense and the infringement clearly justifies the transfer of the disputed domain name.
The Claimant has thus met its burden of proof under paragraph 24(d) of the Rules and Procedures.
7. Expert Decision
For the above reasons, in accordance with Paragraphs 24 of the Rules of Procedure, the Expert orders that the disputed domain name <pansan.ch> be transferred to the Claimant.
Dated: March 13, 2012