WIPO Arbitration and Mediation Center

EXPERT DECISION

Swiss Life AG and Swiss Life Intellectual Property Management AG v. S.Z.

Case No. DCH2021-0009

1. The Parties

Claimants are Swiss Life AG (Claimant No. 1), and Swiss Life Intellectual Property Management AG (Claimant No. 2), Switzerland, both represented by FMP Fuhrer Marbach & Partners, Switzerland.

Respondent is S. Z., France.

2. The Domain Name

The dispute concerns the following domain name <swisslifeinvestment.ch>.

3. Procedural History

The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2021. On February 22, 2021, the Center transmitted by email to SWITCH, the “.ch” and “.li” registry, a request for verification in connection with the disputed domain name. On February 23, 2021, SWITCH transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Request. The Center sent an email communication to the Claimants on February 24, 2021, providing the registrant and contact information disclosed by SWITCH, and informing Claimants that the Request was administratively deficient.

Claimants filed an amended Request on February 25, 2021. The Center verified that the Request, together with the amended Request, satisfied the formal requirements of the Rules of procedure for dispute resolution procedures for “.ch” and “.li” domain names (the “Rules of Procedure”), adopted by SWITCH, on January 1, 2020. In accordance with the Rules of Procedure, paragraph 14, the Center formally notified the Respondent of the Request, and the Dispute resolution procedure commenced on February 25, 2021. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was March 17, 2021.

Respondent 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 March 19, 2021, the Center notified the Claimant accordingly, who on March 20, 2021, 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 March 29, 2021, the Center appointed Daniel Kraus 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

Claimants are companies organized under the laws of Switzerland, and both belong to the “Swiss Life” group of companies that is active in the life insurance business. Claimant No. 2 is a subsidiary of Claimant No. 1 and is responsible for managing all intellectual property owned by the “Swiss Life” group.

Claimants have documented that Claimant No. 2 is the registered owner of various trademarks relating to Claimants’ company names and brand “Swiss Life”, inter alia, the following, some of which enjoy protection also for the territory of Switzerland:

- Word mark SWISS LIFE, number: 491528, filing date: August 2, 2001, status: active;

- Word mark SWISS LIFE, registration number: 436709, filing date: March 21, 1996, status: active;

- Word/design mark SWISSLIFE ASSET MANAGEMENT, registration number: 474062, filing date: March 13, 2000, status: active.

Moreover, Claimants have documented to own various domain names relating to the SWISS LIFE trademark, inter alia, the domain name <swisslife.ch>, which is owned by Claimant No. 1 and which resolves to a website at “www.swisslife.ch” used to promote Claimants’ business and related services in the life insurance industry.

According to information received from SWITCH, Respondent is S. Z. from France.

The disputed domain name was registered on January 4, 2021; by the time of the rendering of this decision, the disputed domain name does not resolve to any active content on the Internet. At the time the Request was filed, Claimants have provided evidence that the domain name was used to send fraudulent emails.

Claimants request that the disputed domain name be transferred to Claimant No. 2.

5. Parties’ Contentions

A. Claimants

Claimants contend that the “Swiss Life” group of companies is Switzerland’s largest life insurance company and one of Europe’s leading comprehensive life and pensions and financial solutions provider with a 150-year-old company history. Claimants claim to have spent substantial time, effort and money in advertising and promoting the SWISS LIFE trademark and that the latter has meanwhile achieved a well‑known, if not famous status.

Claimants submit that the disputed domain name is confusingly similar to their SWISS LIFE trademarks and numerous domain names that they have registered (such as <swisslife.ch>, <swisslife.de>, <swisslife.be>, <swisslife.at>, <swisslife.li>, <swisslife.lu>, <swisslife.sk>, <swisslife.swiss>, <swisslife.fr>, <swisslife.sg>, <swisslife.hk>, <swisslife.com>, <swisslife.insurances>, <swisslife.shop>, <swisslife.site>, <swisslife.select> and <swisslife.club>, among numerous others, as the disputed domain name incorporates the SWISS LIFE trademark in its entirety, added by the descriptive element “investment”. Since the disputed domain name is identical/highly similar with Claimants’ famous SWISS LIFE brand, consumers are confused as far as they will expect that the Respondent’s domain is one of the many domains owned by Claimants. In any case, consumers will assume that there are economic, legal or other ties between Claimants and the owner of the domain name in dispute, which will result in an indirect confusion. This Respondent’s misuse of the SWISS LIFE brand infringes Claimants trademark rights, company name’s rights and constitutes an act of unfair completion and a criminal offence.

Moreover, Claimants assert that Respondent has no rights or legitimate interests in respect of the disputed domain name since Claimants are the only legitimate service or product provider under the SWISS LIFE brand and did not give any permission to Respondent to use such trademark for the registration and/or use of the disputed domain name.

Finally, Claimants argue that Respondent registered and is using the disputed domain name in bad faith since Respondent misuses the disputed domain name for fake e-mails to potential victims to lure them to make financial transactions. Respondent poses thereby as a Swiss Life financial advisor and offers a fake “Multi-Support” savings book with unrealistic net returns by using the “Swiss Life” brand and the Swiss Life Group logo as well as an authentic Swiss Life Group presentation brochure. Respondent first contacts the victims by telephone and then sends them forged contract documents (subscription form, presentation brochure, etc.). For this e-mail contact, Respondent misuses the disputed domain name (e.g. “[...]@swisslifeinvestment.ch”; “[…]@swisslifeinvestment.ch”). After an alleged verification of the information, Respondent provides the victims with bank details in order to make the alleged investment by bank transfer. Respondent has already scammed several EUR 10,000 in this way. In all documents and e-mails, Respondent prominently uses the name and trademark of SWISS LIFE as well as the SWISS LIFE logo.

B. The Respondent

Respondent did not reply to Claimants’ contentions.

6. Discussion and Findings

According to the Rules of Procedure, Paragraph 24(c), “the Expert shall grant the request if the allocation 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”.

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 defense; and

- the infringement of the right justifies the transfer or revocation of the domain name, depending on the remedy requested in the request”.

A. Claimants have a right in a distinctive sign under the law of Switzerland

Claimants have established ownership of active Swiss trademarks, in particular

- Word mark SWISS LIFE, number: 491528, filing date: August 2, 2001;

- Word mark SWISS LIFE, registration number: 436709, filing date: March 21, 1996; and

- Word/design mark SWISSLIFE ASSET MANAGEMENT, registration number: 474062, filing date: March 13, 2000.

Therefore, the Expert finds that Claimants have established their exclusive right in their distinctive signs in Switzerland. Accordingly, Claimants have provided sufficient evidence of Swiss trademark rights in accordance with Paragraph 24(d)(i) of the Rules of Procedure.

B. The allocation or use of the domain name constitutes a clear infringement of the Claimants’ right

According to Article 13, paragraph 1 and paragraph 2(c) of the Federal Act on the Protection of Trademarks and indication of Source (Trademark Protection Act (TmPA)), 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 prohibit others from offering or providing services under a sign that is identical or confusingly similar to its trademark.

According to Swiss supreme court rulings, the use of domain names that are identical or confusingly similar to a trademark on websites offering the same or similar goods constitutes trademark infringement (see e.g. decisions of the Swiss Federal Supreme Court 4C.31/2004, <riesen.ch> and 4C.341/2005 <swiss-life.ch>).

The disputed domain name <swisslifeinvestment.ch> is almost identical to the trademark SWISS LIFE and its use by Respondent to send false emails to consumers in order to lure them to make financial transactions services under Claimants’ trademark clearly constitutes a trademark infringement under Swiss law.

Given that the transfer of the disputed domain name is already justified on the basis of the clear trademark infringement, any potential infringement of the Federal Act against Unfair competition (UCA) does not need to be examined.

7. Expert Decision

For the above reasons, in accordance with paragraph 24 of the Rules of Procedure, the Expert orders that the domain name <swisslifeinvestment.ch> be transferred to Claimant No. 2.

Daniel Kraus
Expert
Dated: April 12, 2021