vita.ch

WIPO Arbitration and Mediation Center

EXPERT DECISION

Zurich Insurance Company, Vita Lebensversicherungs-Gesellschaft v. Roberto Vitalini

Case No. DCH2005-0012

1. The Parties

Claimants are Zurich Insurance Company (Claimant 1) and Vita Lebensversicherungs-Gesellschaft (Claimant 2), Zurich, Switzerland.

Respondent is Roberto Vitalini, Melide, Switzerland, represented by Meyer Müller Eckert Partners, Switzerland.

2. The Domain Name and Registrar

The disputed domain name <vita.ch> is registered with SWITCH.

3. Procedural History

The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2005. On June 2, 2005, the Center transmitted by email to SWITCH a request for verification in connection with the domain name at issue. On June 3, 2005, SWITCH transmitted by email to the Center its verification response confirming that 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 Respondent of the Request, and the Dispute resolution proceedings commenced on June 9, 2004. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was June 29, 2005.

Respondent filed a Response on June 28, 2005. The Center appointed aa conciliator in this matter on July 20, 2005.

In accordance with Rules of Procedure, paragraph 17, the Conciliation conference took place by telephone on August 4, 2005. The Conciliation conference did not result in a settlement between the parties.

On August 4, 2005, the Center notified Claimants accordingly, who on August 5, 2005, 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 August 17, 2005, the Center appointed Pierre Kobel as Expert in this case. The Expert finds that he 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 registered in Zurich, Switzerland.

Claimant 1 holds rights in the following VITA trademarks:

- VITA, a Swiss semi-figurative trademark Nr. P-402283, registered on June 15, 1993, with priority to 1923 for class 36, in the form of a blue logo made of a circle with the “vita” word written within the circle;

- VITA,a semi-figurative trademark registered internationally on the basis of the above Swiss semi-figurative trademark Nr. P-402283 registered on June 15, 1993;

- VITA, a word trademark Nr. 526931 registered for Switzerland in November 2004 with priority to April 21, 2004, for products and services of classes 16, 35, 36 insurances not included, 38, 41, 42;

- VITA, a word trademark Nr. 835888 registered internationally on the basis of the Swiss trademark Nr. 526931, in the same classes but including insurances in class 36;

- VITA, a semi-figurative trademark registered internationally on the basis of the above Swiss semi-figurative trademark Nr. P-402283 registered on June 15, 1993;

- An application for a VITA word Community trademark Nr. 3785938 made on April 21, 2004, for products and services of classes 16, 35, 36, 38, 41, 42.

Claimant 1 holds jointly with “Stiftung VITA Parcours”, a foundation which is not a party to the present proceedings, rights in the following VITA Parcours trademarks:

- VITA PARCOURS, a word trademark Nr. 526721 registered for Switzerland on October 14, 2004, with priority to July 29, 2004, for products and services of classes 16, 35, 36 including insurances, 38, 41, 42;

- vitaparcours, a word trademark Nr. 526724 registered for Switzerland on October 14, 2004 with priority to July 29, 2004, for products and services of classes 16, 35, 36 including insurances, 38, 41, 42;

. PARCOURS VITA a word trademark Nr. 526722 registered for Switzerland on October 14, 2004, with priority to July 29, 2004, for products and services of classes 16, 35, 36 including insurances, 38, 41, 42;

- parcoursvita, a word trademark Nr. 526726 registered for Switzerland on October 14, 2004, with priority to July 29, 2004, for products and services of classes 16, 35, 36 including insurances, 38, 41, 42;

- PERCORSO VITA, a word trademark Nr. 526723 registered for Switzerland on October 14, 2004, with priority to July 29, 2004, for products and services of classes 16, 35, 36 including insurances, 38, 41, 42;

- percorsovita, a word trademark Nr. 526725 registered for Switzerland on October 14, 2004 with priority to July 29, 2004, for products and services of classes 16, 35, 36 including insurances, 38, 41, 42;

- international registrations based on the above mentioned trademarks with priority to July 29, 2004;

- Community trademarks applications in trademarks identical to the above mentioned VITA Parcours trademarks with priority to July 29, 2004.

Claimant 2 holds rights in the following company name:

- “VITA Lebensversicherungs-Gesellschaft” since 1993.

No other rights in distinctive signs are claimed by Claimants.

Respondent is an individual describing himself as “a creative thinker living in Ticino”. He registered in 1997 the domain name <vita.ch> with SWITCH.

5. Parties’ Contentions

A. Claimant

Claimants seek a transfer of the disputed domain name to Claimant 1. Claimants allege to have become aware of the disputed domain name in 2003, when they intended to register their own domain name under <vita.ch>. They claim to have contacted Respondent in February 2004, who allegedly was willing to transfer the domain without profit. Thereafter, Claimants complain that Respondent started to play high stakes, rejecting offers for CHF 5’000.- and CHF 13’000.-. Claimants allege that Respondent sought a compensation in the amount of CHF 100’000.-.

Claimants contend that the registration infringes their trademarks. They claim to have established a reputation throughout the insurance and financial services industry in the “VITA” name. As a result, the domain name which is identical to their VITA trademarks should be transferred.

Claimants also allege that “VITA” is an Italian translation for life. As a result, internet users would expect to find their services under the disputed domain name. On the other hand, Claimants believe that “vita” as used by Respondent in the domain name has “no relevant distinguishing matter”.

In relation to the Company Name VITA Lebensversicherungs-Gesellschaft, Claimants see the distinctive element of the company name in the word “vita”, adding that usually company names are shortened by the public and therefore, the company is known as “VITA”.

Claimants contend that the offer to sell the domain name for a consideration well above the cost for its registration infringes the Act against Unfair Competition. Claimants allege that the web site was inactive until they contacted Respondent. Claimants believe that Respondent is not known as “vita”. In light of the considerable goodwill attached to their trademark, Claimants believe that fairness requires a transfer of the domain name.

B. Respondent

Respondent alleges to have registered the disputed domain name as his nickname, at the same time as his friend Davide Tacchella registered <tack.ch>. He claims to be a multimedia designer who displayed on his web sites some of his works. He was personally cited as “Bald Guy’s Multimedia Site of the Week” in 1999.

Respondent claims that his web site became inactive from 2001 until 2004, because Mr. Tacchella stopped the web server running the web site.

Respondent alleges that initially he was not interested to sell or transfer the domain name but changed his mind in the course of the negotiations. He confirms to have claimed CHF 100’000.- for the transfer of the disputed domain name.

Respondent basically claims that the trademark of Claimant is weak and by and large unused. It was registered in 2004 only, i.e. seven years after Respondent registered the disputed domain name. According to Respondent, figurative trademarks’ distinctiveness is only linked to the logo and the colours. Therefore, the semi-figurative trademark of Claimants is irrelevant. Respondent also challenges the validity of Claimants’ trademarks as far as they cover insurance products.

Respondent also contends that the claimed company name is weak as there are about 1017 company names registered in Switzerland including one way or another a VITA element. Furthermore, Respondent alleges that VITA Lebensversicherungs-Gesellschaft does not exist any more.

According to Respondent, no confusion is likely to happen because Internet users do not expect to find insurance or financial services under the disputed domain name.

Respondent believes to have legitimate rights in the use of the disputed domain name.

Given the fact that “VITA” is generic, the principle ‘first come first served’ should apply.

In conclusion, the claim should be rejected.

6. Discussion and Findings

According to paragraph 24 of the Rules of Procedure:

(a) The Expert shall decide on the request on the basis of the pleadings of both parties and the submitted documents in conformity with these Rules of Procedure.

(b) The Expert may only order the deletion or transfer of the domain name, depending on the remedy requested in the request, or reject the request.

(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 defence; and

(iii) the infringement of the right justifies the transfer or deletion of the domain name, depending on the remedy requested in the request.

As a result of the repeated reference to “clarity” in the above-mentioned provision, the rights invoked by Claimants must be unequivocal and the evidence of a confusion or other infringement quite obvious to order a transfer or a deletion of the disputed domain name. Doubts benefit Respondent.

A. Claimants have rights in distinctive signs

Both Claimants have rights in distinctive signs. However, these rights are not identical. Only the rights registered in Switzerland or governed by Swiss law are relevant.

- Claimant 2 has rights in the Company name VITA Lebensversicherungs-Gesellschaft only; according to the exhibits presented by Claimants, that company exists.

- Claimant 1 has rights in the figurative trademark VITA since 1993, with priority to 1923, and has rights in a VITA word trademark and in several word and figurative “VITA Parcours” (VITA PARCOURS, vitaparcours, PARCOURS VITA, parcoursvita, PERCORSO VITA, percorsovita) trademarks registered in 2004 (hereafter “VITA Parcours”).

The trademark registration record and trademark protection arguments submitted by Claimants are somewhat at odds. Insurance and financial services seem to be offered under the ZURICH name mainly and not under a VITA name. Only one Swiss trademark, theVITAsemi-figurative trademark, was registered before the registration of the disputed domain name, all others were registered in 2004. The Swiss “VITA” trademark registered in 2004, does not cover the insurance services claimed by Claimants. These circumstances suggest a recent interest in using a somewhat dormant but possibly valuable trademark for other fields of activity.

In these circumstances, unsubstantiated allegations of wide recognition have to be taken with caution. Interestingly, Claimant 1 does not allege that the trademark VITA is actually used to identify insurance or financial products or services. It only alleges an indirect link between the services provided by the Zurich group to which VITA is associated through the training tracks called “Vita Parcours” built in several places in Switzerland by the Zurich group. As a result of that link, VITA alone should have become known in relation to financial and insurance products and services. This is a stretched argument. To establish that the VITA and/or the VITA Parcours trademarks alone are recognized in the field of insurance and financial services, such an indirect link with the insurance and financial activities as well as reputation of Zurich, should be backed up by hard evidence. Mere unsubstantiated allegations are insufficient.

Moreover, as far as life insurance is concerned, “VITA” appears prima facie to be descriptive.

The VITA Parcours trademark and the VITA semi-figurative trademark however, have probably acquired some level of distinctiveness in relation to training tracks and parcours. In relation to the VITA Parcours, recognition preceded the registration of the trademark.

In conclusion, Claimants have rights in distinctive signs: their scope of protection is however limited.

B. The registration or use of the Domain Name at issue constitutes a clear infringement of Claimants’ right

B1. Trademark Protection

Under article 13 of the Swiss Trademark Act (hereafter “TMA”), rights in a trademark confer exclusive use over the said trademark to identify designated products or services. The holder of a trademark may forbid any third party to use the trademark. The test for infringement is whether usage of a sign protected by a trademark is likely to cause confusion. In relation to the Internet and the registration of domain names, there is a risk of confusion when the use of an identical or similar name for an Internet web site causes a risk of incorrect attribution of the site, i.e. an incorrect identification of the person holding rights in the web site, or that it leads to incorrect assumptions concerning the relationship between the parties (ATF 128 III 401, 403 “Luzern”). The test is therefore whether Internet users would expect to find, under the disputed domain name, the services, products or information pertaining to the trademark holder. The same test applies with regard to the various distinctive signs protected by Swiss law.

As mentioned, the scope of the “VITA” trademarks registered by Claimant 1 is limited. Claimants did not prove that “VITA” has acquired a reputation in relation to the claimed insurance and financial services. As a result, Internet users are unlikely to expect finding information about the Claimants’ insurance or financial services under the disputed domain name.

In relation to “VITA Parcours”, which is known and has acquired some reputation in Switzerland, Claimants do not claim protection in relation to gymnastics, exercise services or training tracks.

Instead, Claimants allege that the scope of the VITA Parcours trademark extends to the insurance and financial services provided by Zurich. For the above-mentioned reasons, that link remains unsubstantiated. Therefore, usage of VITA as a domain name is unlikely to cause confusion in the Internet with the VITA Parcours trademarks of Claimant 1.

The Expert therefore does not see any clear infringement of any of the specific trademarks belonging to Claimants.

B2. Company Name

Companies can seek protection under article 956 of the Swiss Code of Obligations (hereafter “CO”) when their company name is used in a domain name, as a designator for another enterprise. Otherwise, the protection under article 956 CO is not established in Swiss law. It is also unclear under Swiss law whether the protection under article 956 CO could be invoked in relation to mere domain name grabbing or cyber-squatting. In such cases, however, protection may be sought under the provisions of the Act against Unfair Competition.

Claimants do not allege nor provide evidence that Respondent is using the disputed domain name to designate an enterprise. To the contrary, evidence provided by Respondent shows that the web site designated by the disputed domain name contained in the past information about Respondent himself. Presently, the said web site only contains a start page with one animated design and serves as a portal for references to Respondent’s other web sites.

As a result, there is no clear infringement of Claimant 2 rights in its company name.

B3. Unfair Competition

The holder of a valid trademark or company name may seek cumulative protection under the Act against Unfair Competition (hereafter “UCA”). Such holder may also seek specific protection under the UCA when the behavior in question is covered by the specific purposes and scope of the UCA.

Under article 3 para 1 lit. d) of the UCA, anyone taking measures aimed at causing confusion with products, works, services or enterprise of a product or service provider, is acting unfairly. Under article 2, the protection may be extended to imitations not falling under article 3 para 1 lit. d) of the UCA provided specific additional circumstances show the unfairness of the behaviour.

Claimants do not show that Respondent registered the disputed domain name in bad faith. Respondent explains that “vita” is a nick name for his family name Vitalini. This circumstance as well as evidence supplied by Respondent regarding the existence and contents of the web site before Claimants complained to Respondent, show that the registration of the disputed domain name in 1997, and the subsequent usage of the said domain name, was in good faith. As from 1998, and in particular 1999, the web site backtrack history shows that the site was active, with for example 9 active pages in 2000.

The fact that Respondent stopped using the domain name from 2001 until 2004, and his attitude during negotiations with Claimants when he requested CHF 100’000.- in exchange for the domain name, although opportunistic, does not turn Respondent into a cyber-squatter. Such behaviour would have been relevant under article 24 para 3 lit. (iii) of the Rules of Procedure only, to determine whether a transfer of the domain name would be justified or not.

It does not appear that Respondent took measures aimed at causing confusion with Claimants or their products or services, or otherwise acted unfairly.

7. Expert Decision

For the above reasons, the Request is denied.

Pierre O. Kobel
Expert

Dated: August 30, 2005