WIPO Arbitration and Mediation Center
Partners Group AG v. Yulia Tyukova, Fire Web Invest LTD
Case No. DCH2019-0005
1. The Parties
The Claimant is Partners Group AG, Switzerland, represented by Nieder Kraft & Frey, Switzerland.
The Respondent is Yulia Tyukova, Fire Web Invest LTD, Malta, self-represented.
2. Domain Name
The dispute concerns the following domain name <investmentgroup.ch> (“Disputed Domain Name”).
3. Procedural History
The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2019. On May 28, 2019, the Center transmitted by email to SWITCH, the “.ch” and “.li” registry, a request for verification in connection with the Disputed Domain Name. On May 31, 2019, 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 June 13, 2019. In accordance with the Rules of Procedure, Paragraph 15(a), the due date for Response was July 3, 2019.
No conciliation conference has taken place within the deadline specified in Paragraph 17(b) of the Rules of Procedure.
On July 4, 2019, the Center notified the Claimant accordingly, which made an application for the continuation of the dispute resolution proceedings on July 8, 2019, in accordance with Paragraph 19 of the Rules of Procedure, and paid the required fees. On July 8, 2019, the Center received an email from the Respondent, followed by a Supplement Filing by the Claimant on July 12, 2019. Following the Claimant’s request, the proceeding was suspended on July 18, 2019. Upon the Claimant’s request, the proceeding was reinstituted on August 8, 2019.
On August 12, 2019 the Center appointed Tobias Zuberbühler as Expert in this case. The Expert finds that he was properly appointed. In accordance with Rules of Procedure, paragraph 4, the Expert has declared his independence of the parties.
4. Factual Background
According to the Swiss commercial register, the Claimant is an asset manager and asset advisory company, founded in 1996.
The Claimant has registered “Partners Group” in the Swiss commercial register as its company name in 1996. It is registered under the company number CHE-108.431.605 and seated in Baar, Canton of Zug.
Furthermore, the Claimant has also provided evidence of its Swiss trademark registrations for PARTNERS GROUP PASSION FOR ALTERNATIVE INVESTMENTS (trademark registration number P-535886, registered on July 21, 2005); PARTNERS GROUP PASSION FOR PRIVATE MARKETS (trademark registration number 598917, registered on March 31, 2010); and
PARTNERS GROUP REALIZING POTENTIAL IN PRIVATE MARKETS (trademark registration number 678787, registered on October 5, 2015).
The Disputed Domain Name was first registered on February 25, 2000. According to the information provided by SWITCH, the Respondent registered the Disputed Domain Name on March 15, 2019, through “GoDaddy.com, LLC” and is currently held by Yulia Tyukova, Fire Web Invest LTD.
The Disputed Domain Name previously resolved to a website offering investment services. The Disputed Domain Name has stopped resolving to an active website after the Center’s Notification of the Request to the Parties.
5. Parties’ Contentions
In summary, the Claimant asserts the following:
Right in a distinctive sign under the law of Switzerland
The Claimant is the owner of the rights in the distinctive sign “Partners Group” and has registered “Partners Group” in the Swiss commercial register as its company name in 1996. It is using “Partners Group” as its trademark worldwide.
The Claimant further owns the Swiss national word and device marks PARTNERS GROUP PASSION FOR ALTERNATIVE INVESTMENTS, PARTNERS GROUP PASSION FOR PRIVATE MARKETS, and PARTNERS GROUP REALIZING POTENTIAL IN PRIVATE MARKETS. The Claimant owns these trademarks also in various other jurisdictions. Furthermore, the Claimant owns the domain names <partnersgroup.net> and <partnersgroup.ch> which both directly lead to the Claimant’s website at “www.partnersgroup.com”.
The sign “Investment Group” used by the Respondent is obviously based on, copying, and alluding to the sign “Partners Group”. This becomes even more obvious, when the content of the website of the Respondent is taken into account: The website of the Respondent is used for, and offering, identical services and is systematically copying the website of the Claimant (even using the slogan “realizing potential in private markets”, copying the design, icons, structure of the pages, its content, using the Claimant’s team members portraits and so on). The Respondent therefore creates a likelihood of confusion and wants to deceive and exploit the excellent reputation of the Claimant.
Thus, the Disputed Domain Name infringes the Claimant’s right in the sense of article 3(1)(c) Swiss Federal Act on the Protection of Trademarks and Indication of Source (“TMPA”) and the requirement of Paragraph 24(c) of the Rules of Procedure is fulfilled.
Unfair Competition under the law of Switzerland
The sign “Investment Group” used in the Disputed Domain Name is obviously copying and alluding to the sign “Partners Group” and the website of the Respondent systematically copies the corporate website of the Claimant under “www.partnersgroup.com”. Such action is (i) unfair and generally contrary to the principle of good faith and business practices in the sense of article 2 Swiss Unfair Competition Act (“SUCA”), (ii) causing confusion with the Claimant’s rights and website in the sense of article 3 para. 1 lit. d SUCA, and (iii) unnecessarily comparing in the sense of article 3 para. 1 lit. e SUCA. This demonstrates the intention of the Respondent to systematically act unfairly in violation of the SUCA and the bad faith that the Disputed Domain Name and its use for the website of the Respondent demonstrate.
A legitimate interest of the Respondent is not apparent. The use of the Disputed Domain Name for the website of the Respondent evidences bad faith.
The Respondent only replied in one email dated July 8, 2019, to the Claimant’s contentions, arguing that the Disputed Domain Name has never been used. Moreover, the Respondent states that “we have nothing to do with Switzerland”.
The Respondent alleges that the Disputed Domain Name was purchased but that no corresponding website was developed and used.
C. Claimant’s Supplemental Filing
In its Supplemental Filing, the Claimant argues that the Respondent intentionally registered the Disputed Domain Name using the country code Top-Level Domain (“ccTLD”) “.ch”, relating to Switzerland, since Claimant is headquartered in Switzerland. The Claimant further states that even though the Respondent took down the website at the Disputed Domain Name, there is a high risk that the website may be reinstalled. The fact that the website was taken down during the course of this proceeding underlines the Respondent’s bad faith.
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:
- 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
- the respondent has not conclusively pleaded and proven any relevant grounds for defence; and
- 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
The Claimant is registered in the Swiss commercial register under the name “Partners Group”.
The Claimant has established ownership of the Swiss national word and device marks PARTNERS GROUP PASSION FOR ALTERNATIVE INVESTMENTS (P-535886), PARTNERS GROUP PASSION FOR PRIVATE MARKETS (598917), and PARTNERS GROUP REALIZING POTENTIAL IN PRIVATE MARKETS (678787).
Therefore, the Experts finds that the Claimant has established its exclusive right in its distinctive signs (i.e. the trademarks listed above) in Switzerland. Accordingly, the Claimant has provided sufficient evidence of Swiss trademark rights in accordance with paragraph 24(d)(i) of the Rules of Procedure.
B. The registration or use of the domain name constitutes a clear infringement of the Claimant’s right
According to Swiss supreme court rulings, domain names in their function identify the persons, products, objects, or services behind them and are therefore comparable with personal names, companies, or trademarks (BGE 126 III 239. E 2.b). The function of domain names as identifiers means that they must maintain necessary distance from absolutely protected third-party identifiers (BGE 126 III 239, E. 2c).
(a) Swiss Unfair Competition Act
Domain names are (also) subject to the fair trading principle of competition law (BGE 128 II 353, E. 4). Whoever “takes measures which are likely to cause confusion with the goods, works, services or business operations of another person” acts unfairly in accordance with article 3 para. 1 lit. d SUCA. Also, “any deceptive behavior or business conduct or conduct in any other way contrary to the principle of good faith which influences the relationship between competitors or between suppliers and customers” is unfair and unlawful according to the general clause of article 2 SUCA.
According to prevailing doctrine and case law, the mere registration of a domain name does not yet create a risk of confusion within the meaning of article 3 para. 1 lit. d SUCA, as there is no danger of operational misallocations (judgment HGer SG of 25 June 2002, sic! 2003 348, p. 351 cons. III/3c, <breco.ch>; BSK UWG-Arpagaus, article 3 para. 1 lit. d N 198-199; see also Cembra Money Bank AG v. Canan Siddik, Canankredit, WIPO Case No. DCH2015-0010, <cembracredit.ch>, section 6.B.c; Cartier International S.A. v. Marc Baertschi, WIPO Case No. DLI2015-0001, <cartier.li>, section C.4).
In the present case, however, the Disputed Domain Name has already been used to set up a website that offers similar services to the ones offered by the Claimant. Further, the website under the Disputed Domain Name systematically copied the website of the Claimant. In this respect, the Respondent has violated article 3 para. 1 lit. d SUCA.
In addition, the registration of a specific domain name constitutes an unlawful impediment within the meaning of article 2 SUCA if it was made without objectively protectable interests and thus recognizably at the expense of third parties (Rolf H. Weber, E-Commerce und Recht, Rechtliche Rahmenbedingungen elektronischer Geschäftsformen, 2. Aufl, Zurich 2010, p. 159; BSK UWG-Arpagaus, Art. 3 para. 1 lit. d N 199; see also Cembra Money Bank AG v. Canan Siddik, Canankredit, WIPO Case No. DCH2015-0010, <cembracredit.ch>, section 6.B.c; Cartier International S.A. v. Marc Baertschi, WIPO Case No. DLI2015-0001, <cartier.li>, section C.4).
In the present case, the Respondent has already used the Disputed Domain Name once, albeit only temporarily, given that the website has been taken down after the beginning of the current proceedings. Such behavior and the fact that the Respondent has essentially copied the “look and feel” of the Claimant’s website suggests that the Respondent wishes to benefit in some way from the Claimant’s reputation. The behavior of the Respondent therefore also violates the general clause of article 2 SUCA.
Since the Respondent has not put forward any conclusive grounds for defense that would refute the Claimant’s representations or justify its own legitimate interest, the Expert finds that the transfer of the Disputed Domain Name to the Claimant is justified on the basis of the infringement of unfair competition rights by the Respondent.
(b) Swiss Federal Act on the Protection of Trademarks and Indication of Source
Given that the transfer of the Disputed Domain Name is already justified on the basis of the infringement of unfair competition rights by the Respondent, any potential infringement of the TMPA does not need to be examined.
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 <investmentgroup.ch> be transferred to the Claimant.
Dated: August 26, 2019