WIPO Arbitration and Mediation Center
UniCredit Spa v. Thomas Link
Case No. DCH2017-0008
1. The Parties
The Claimant is UniCredit Spa of Rome, Italy, represented by Avv. Carlo Piana, Italy.
The Respondent is Thomas Link of Union, Maine, United States of America (“United States”).
2. Domain Name
The dispute concerns the domain name <unicreditsuisse.ch> (the “disputed domain name”).
3. Procedural History
The Request was submitted to the WIPO Arbitration and Mediation Center (the “Center”) by email on May 30, 2017 and in hardcopy on June 12, 2017. On May 31, 2017, the Center transmitted by email to SWITCH, the “.ch” and “.li” registry, a request for verification in connection with the disputed domain name. On June 7, 2017, 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. In response to a notification by the Center that the Request was administratively deficient, the Claimant filed an amendment to the Request on June 15, 2017. The Center verified that the Request together with the amendment to 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 by DHL the Respondent of the Request, and the Dispute resolution proceedings commenced on June 19, 2017. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was July 9, 2017. On June 27, 2017 the Center was informed by DHL that the Respondent’s address was incomplete so that the Request could not be delivered by mail.
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 July 10, 2017, the Center notified the Claimant accordingly, who on July 11, 2017, made an application for the continuation of the dispute resolution proceedings in accordance with paragraph 19 of the Rules of procedure and paid the required fees.
On July 26, 2017, the Center appointed Gérald Page 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 from the parties.
4. Factual Background
The dispute concerns the disputed domain name <unicreditsuisse.ch>.
The facts that have been evidenced by the Claimant are the following:
UniCredit Spa is part of UniCredit Group, a major banking group in Europe and operates a website at “www.unicreditgroup.eu”.
As shown in the annexes provided by the Claimant, the Claimant is holding international registration no. 897567 for the trademark UNICREDIT (logo), regarding the class 36 for banking, financial affairs, monetary affairs, advice concerning finance, etc. This trademark is designating numerous countries and jurisdictions, inter alia, Switzerland. This trademark was registered on August 7, 2006, i.e., before the registration of the disputed domain name <unicreditsuisse.ch> on July 1, 2016.
Furthermore, it appears in the annexes provided by the Claimant that the Respondent is using the disputed domain name <unicreditsuisse.ch> for a website where it offers vague general advices on Swiss banking services. The website is listing for instance advantages of opening a Swiss bank account. There is, however, no mention of the Respondent on this website.
Due to a lack of a reply from the Respondent, the above facts have not been contested.
The following facts have not been alleged or evidenced by the Claimant but are publicly accessible to the Expert:
The Claimant has its registered address in Italy and belongs to a group (the UniCredit Group) which exists since 1998, which provides banking and finance services on the Internet as well as through agencies in more than 18 countries worldwide, such as Italy, Germany, Austria, Switzerland, etc. In particular, the Claimant’s group has a registered branch in Zürich, Switzerland under the registered name “UniCredit Bank AG, Munich, Zurich Branch” which offers banking services.
The Claimant is also the holder of several European Union, United States and international trademarks since 2000 in a variety of classes containing the word “unicredit”, and the Claimant holds in particular two Swiss registrations : i) no. 579734 for the trademark UNICREDIT SUISSE BANK (logo) for telecommunication, registered on November 27, 2008, and no. P-473185 for the trademark UNICREDIT (SUISSE) BANK S.A. (logo) for advertising, insurance, finance and telecommunication, etc., registered on June 08, 2000, i.e., prior to the registration of the disputed domain name <unicreditsuisse.ch>.
UniCredito Italiano S.P.A is listed by SWITCH as being the holder of the domain name of <unicredit.ch>, which is the previous registered name of the Claimant.
The website used in connection with the disputed domain name provides information on Swiss banks and opening a bank account in Switzerland and an active video which is supposed to explain how to open a Swiss bank account and which refers to another website at the domain name <nomadcapitalist.com>. An individual is moderating this video where he presents himself as being the owner of the company named “Nomad Capitalist”. “www.nomadcapitalist.com” is a fully active website with numerous recent articles and podcast created in 2017. The individual in the video on the website of the disputed domain name, who is not the Respondent, is represented with his picture and offering to his potential clients services such as business optimization, citizenship planning and investments.
5. Parties’ Contentions
The Claimant alleges that the disputed domain name, which it considered as being registered in 2016, infringes its trademark rights on the Swiss territory, which were registered before the disputed domain name, according to article 3, 13(1) and 13(2)(c) and (e) and 15 of the Swiss Federal Act on the Protection of Trade Marks.
The Claimant points out that the disputed domain name is confusingly similar and/or identical to its trademark.
The Claimant contends that the Respondent is a United States based individual, which has personally no activity in Switzerland and is using the disputed domain named to i) discourage potential account holders from opening bank accounts in Switzerland and ii) to reroute traffic towards a website to the detriment of the business of the Claimant.
The Claimant also mentions that this site appears to be construed in an unprofessional way, without any meaningful services registered or identified by a sign corresponding to the disputed domain name and its content is modeled on what can be found on Wikipedia’s pages.
Therefore, the Claimant considers that the disputed domain name is registered and used in bad faith and requests the latter to be transferred to the Claimant.
The Respondent did not reply to the Claimant’s filing and contentions or challenge any of the Claimant’s submissions.
6. Discussion and Findings
Paragraph 24 (c) and (d) of the Rules of Procedure provides that:
“(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 law of Switzerland or Liechtenstein.
(d) 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 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.”
Paragraph 23 of the Rules of Procedure also provides that if a party, without due cause, fails to comply with the time periods laid down in the Rules of Procedure, the Expert shall decide on the request on the basis of the case file and that if one party, without due cause fails to comply with a provision of the said Rules, the Expert may draw such inferences therefrom as he considers appropriate.
A. The Claimant has a right in a distinctive sign
The Claimant is the exclusive owner of at least one trademark protected in Switzerland for UNICREDIT (SUISSE) BANK S.A. since 2000, prior to the registration of the disputed domain name by the Respondent.
This registered trademark is also essentially similar to the Claimant’s registered name in Italy, the Group’s name to which it belongs and to the Group’s Swiss Branch registered name.
The first condition of paragraph 24(c) of the Rules of Procedure is accordingly fulfilled since the Claimant has evidenced its exclusive right in its distinctive sign in Switzerland.
B. The registration or use of the domain name constitutes a clear infringement of the Claimant’s right
According to article 1(1) of the Federal Act on the Protection of Trade Marks and Indications of Source (“TmPA”), a trademark is a sign capable of distinguishing the goods or services of one undertaking from those of other undertakings.
Article 3(1) TmPA excludes from trademark protection are signs that are:
a. identical to an earlier trademark and are intended for the same goods or services;
b. identical to an earlier trademark and intended for similar goods or services such that a likelihood of confusion results;
c. similar to an earlier trademark and intended for the same or similar goods or services such that a likelihood of confusion results.
While article 3(2) TmPA provides that an earlier trademark is:
a. a filed or registered trademark that gives rise to a right of priority under this Act (Article 6-8).
b. a trademark that is well known in Switzerland within the meaning of article 6bis of the Paris Convention for the Protection of Industrial Property of 20 March 1883 (“Paris Convention”) at the time of filing the sign referred to in paragraph 1.
Article 13 TmPA provides that a trademark right confers on the proprietor the exclusive right to use the trademark to identify the goods or services for which it is claimed and to dispose of it.
According to article 15 TmPA the proprietor of a well known trademark may prohibit others from using his trademark for any type of goods or services if such use threatens the distinctiveness of the trademark or exploits or damages its reputation.
The Swiss Federal Supreme Court practice 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 (ATF 128 III 401, 402, <luzern.ch>). The Swiss Federal Supreme Court has held that the content of a website operated under a domain name must be taken into account when examining the likelihood of confusion (see sic! 2005, p. 283 <riesen.ch>). It follows that, in an assessment of the risks of confusion under the TmPA, both the degree of similarity of the signs as well as the similarity of the respective goods and/or services may be taken into account. 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 (Unigestion Holding S.A. v. ITCG s.c. W. Drewniak, M. Olczykowski, WIPO Case No. DCH2005-0013; Smoby Suisse Sàrl and Smoby S.A. v. Velos Schrade, Inhaber Fredy Zaugg, WIPO Case No. DCH2007-0006).
Further, the holder of a company name may seek protection under the Federal Unlawful Competition Act (“UCA”); especially when the circumstances in question are covered by the specific purposes and scope of the UCA. Under Article 3(d) of the UCA, anyone taking measures aimed at causing confusion with products, works, services of a third party, is acting unfairly. Under Article 2 of the UCA, the protection may be extended to imitations not falling under Article 3(d) of the UCA, provided specific additional circumstances show the unfairness of the activities (Zurich Insurance Company, Vita Lebensversicherungs-Gesellschaft v. Roberto Vitalini, WIPO Case No. DCH2005-0012).
It should first be noted that the disputed domain name <unicreditsuisse.ch> was registered containing part of the Claimant’s trademark protected in Switzerland, i.e., UNICREDIT (SUISSE) BANK S.A., and in particular the words “Unicredit” and “Suisse”: the first term is primarily distinctive for the brand since the Claimant’s Group is known worldwide, distinguished as “Unicredit” and has registered many international trademarks under the name “Unicredit”. The use of the word “suisse” merely suggests to consumers or Internet users that it is linked to the Claimants’ products in Switzerland.
Even though not being fully identical, the Expert finds that the disputed domain name is similar to an earlier trademark within the meaning of article 3(1)(c) TmPA.
When registering 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 trademarks, companies and protected products and services. The Respondent appears to be trying to take advantage of the Claimant’s well known trademark and related products and services and such a conduct violates the Claimant’s right in its distinctive sign under Art 3(d) of the UCA. Moreover, the Expert is also satisfied from the Claimant’s submissions that the Respondent’s activities amount to unfair and unlawful practices, as described above, within the meaning of Article 2 of the UCA, since the Respondent is allowing the disputed domain name to be used to acquire customers for banking services or advice and reroute them to a third party’s website providing services in banking, tax and relocation services for commercial gain.
The content of the website using the disputed domain name is also written in an unprofessional manner compared to the contents provided by the Claimant and its group as a reputable financial institution. The confusion contributes therefore also to the dilution of the Claimant’s distinctive sign by challenging the quality of its services.
There is thus evidence that both the registration and use of the disputed domain name is an infringement on the Claimant’s rights under the UCA.
Due to the clear violation of the UCA, it is not necessary to discuss whether the content of the Respondent’s website is an infringement of an intellectual property right in the sense of article 3(1)(c) TmPA.
The Expert therefore finds that the second requirement of paragraph 24(c) of the Rules of Procedure is fulfilled.
Hence, the Respondent’s infringement of the Claimants’ rights justifies the transfer of the disputed domain name <unicreditsuisse.ch> to the Claimant, as requested.
7. Expert Decision
For the above reasons, in accordance with paragraph 24 of the Rules of Procedure, it is ordered that the disputed domain name <unicreditsuisse.ch> be transferred to the Claimant.
Dated: August 9, 2017