Swiss Reinsurance Company v. Stephan
Purtschert
Claim Number: FA0206000114666
PARTIES
Complainant is Swiss Reinsurance Company, Zurich,
SWITZERLAND (“Complainant”) represented by Eric
T. Fingerhut, of Shaw Pittman LLP. Respondent is Stephan Purtschert, Endingen, SWITZERLAND (“Respondent”).
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name
at issue is <swissre.us>,
registered with Register.com.
PANEL
The undersigned
certifies that she has acted independently and impartially and to the best of
her knowledge has no known conflict in serving as Panelist in this proceeding.
Anne M. Wallace, Q.C. as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on June 21, 2002; the Forum received a hard copy of the
Complaint on June 20, 2002.
On July 15, 2002,
Register.com confirmed by e-mail to the Forum that the domain name <swissre.us> is registered with Register.com
and that the Respondent is the current registrant of the name. Register.com has verified that Respondent is
bound by the Register.com registration agreement and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 16, 2002,
a Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of August 5, 2002 by which
Respondent could file a Response to the Complaint, was transmitted to Respondent
via e-mail, post and fax, to all entities and persons listed on Respondent’s
registration as technical, administrative and billing contacts, and to
postmaster@swissre.us by e-mail.
A timely Response
was received on August 1, 2002.
Complainant’s
Additional Submission was timely received and determined to be complete on
August 6, 2002. Respondent’s Additional Submission was received in a timely
matter in accordance with The Forum’s Supplemental Rule 7.
On August 19, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Anne M. Wallace, Q.C. as
Panelist.
Upon reviewing the parties’ submissions, the Panel found that much of
Respondent’s material was not submitted in the English Language. On September
4, 2002, the Panel made an Order granting Respondent an opportunity to provide
a translation of the materials that are not in the English language. Respondent
was given ten days in which to provide the translation, failing which the Panel
would render a decision based on those materials before it that are in the
English language. Respondent filed an Additional Response received by the Forum
on September 11, 2002. The Panel will refer to that portion of this Additional
Response that is in the English language in its summary of the parties’
submissions. Much of the material forwarded in the Additional Response,
however, is in a language other than English. In accordance with Rule 11, the
Panel will be considering only those materials that are in English.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
Complainant,
Swiss Reinsurance Company, claims rights in the service mark SWISS RE and other
related service marks that include this mark. Complainant was founded in
Switzerland in 1863. Complainant first used the mark SWISS RE for reinsurance
services in the United States in 1910 when it established its first branch
office in New York. Complainant has many trademark and service mark
registrations of the mark SWISS RE in many countries throughout the world.
Complainant has invested and continues to invest significant resources in the
advertising and promotion of its services including millions of dollars
annually in the United States alone. Complainant submitted evidence of five
United States Registrations and more than eighty other registrations worldwide
incorporating the SWISS RE mark. Complainant has also invested significant
resources in establishing a presence on the Internet and in acquiring a global
portfolio of domain names incorporating the SWISS RE mark including
<swissre.com>, <swissre.at>, <swissre.be>,
<swissre.bm>, <swissre.ch>, <swissre.de>,
<swiss-re.de>, <swissre.nl>, <swissre.no>,
<swissre.pl>, and <swissre.tv>.
Complainant
asserts that the domain name <swissre.us> is confusingly similar
to Complainant’s SWISS RE mark and is otherwise identical to the SWISS RE mark
except for the addition of the top level domain “.us.”
Complainant
further asserts that Respondent has no rights or legitimate interests in the
domain name <swissre.us>. Respondent is not affiliated with
Complainant, Respondent is not a provider of SWISS RE services, and Respondent
has not been licensed by Complainant to use the SWISS RE name and mark.
Respondent does
not use the domain name in connection with a bona fide offering of goods and
services. Respondent is merely using the domain name to generate traffic for
his home page <purtschert.com>. The web site itself is entitled
<purtchert.com>. It contains four thumbnail sketches of Respondent’s
artwork and the rest of the content is comprised of the address
<purtschert.com> repeated 51 times running the length of four pages.
Respondent has also registered the domain name <purtschert.com> and is
using it for an active web site at <purtschert.com> entitled “Purtschert:
Galerist and Painter”. This site showcases Respondent’s art work and identifies
the site as Respondent’s homepage.
Respondent’s use
of the domain name <swissre.us> is a clear attempt to advertise
his official home page and generate traffic for the “Purtschert: Galerist and
Painter” web site. Accordingly, Respondent’s use of the web site is a brazen
attempt to generate commercial gain by intentionally misleading users who are
searching for Complainant’s web site. Respondent’s use of the domain name in
this manner is not a bona fide offering of goods or services.
Respondent is not
commonly known by the <swissre.us> domain name. Respondent
identifies his business by the PURTSCHERT name and mark and refers to the web
site <purtschert.com> as his official homepage. Respondent’s web site at <swissre.us>
is replete with references to the PURTSCHERT mark and his web site at
<purtschert.com>.
Respondent cannot
legitimately claim that he is making a noncommercial or fair use of the domain
name since Respondent’s use of the domain name is strictly an effort to
capitalize on Complainant’s reputation and attract Internet users to his web
site for commercial gain.
Respondent has
registered and is using the domain name in bad faith. Respondent is using the
domain name to attract, for commercial gain, Internet users to his web site
where he advertises his artwork by creating a likelihood of confusion with
Complainant’s SWISS RE mark as to the source, sponsorship, affiliation or
endorsement of Respondent’s web site. Respondent has wholly incorporated
Complainant’s registered service mark into the domain name. Respondent is
capitalizing on the notoriety of Complainant’s SWISS RE mark and the consumer
confusion likely to result from use of the mark in this manner.
Even if
Respondent has been using the domain name in connection with offering bona fide
goods or services, it is difficult for Respondent to show rights or legitimate
interests in the domain name because use of the name is an opportunistic
attempt to attract customers via use of Complainant’s mark.
Complainant
asserts further evidence of bad faith is found in Respondent’s offer to sell
the domain name to Complainant. In a letter to Complainant dated May 14, 2002,
Respondent attempts to camouflage what is essentially an offer to sell the
domain name, as a deal to sell Complainant 100 of Respondent’s paintings in
exchange for $1,000,000 US. Incidental to the deal, Respondent offers to throw
in the domain name for good measure, adding: “Should you accept to buy these
paintings… at this price, I would like to express my gratitude to your company
by offering them the Internet domain name <swissre.us>.” Respondent’s letter alludes to Complainant’s
interest in Respondent’s artwork and paintings, allegedly conveyed in a
telephone conversation on May 13, 2002 between Respondent and Mr. Frank
Cuypers, Head of Intellectual Property of Complainant. Complaint’s only
interest in Respondent, however, is because of his use of the domain name in
question. Respondent has tried to cloak Complainant’s opposition to
Respondent’s use of is mark as an expression of interest in Respondent’s
artwork to contort what is truly an offer to sell the Domain name into a proposal
for the sale of artwork. This is a flagrant attempt by Respondent to extort
from Complainant an amount far in excess of his costs incident to registration
in exchange for the domain name. The condition of payment of $1,000,000 as part
of the transaction to transfer the domain name is evidence of bad faith
registration and use.
Respondent’s
registration and use of the domain name prevents Complainant from fully
promoting its United States related services through the use of the domain name
<swissre.us> and constitutes further evidence of bad faith.
Respondent has
recently registered the domain names <swissre.jp> on May 13, 2002 and
<novartis.cc> on May 19, 2002. Novartis AG is a Swiss-based
pharmaceutical company that reported revenues of twenty billion dollars in
2001. This demonstrates a pattern of registering domain name incorporating
well-known marks and is therefore further evidence of bad faith.
Respondent has a
lack of nexus to the United States. Under the usTLD Nexus Requirements a
registrant is required to have a sufficient nexus with the United States. The
WHOIS record for the domain name in question lists the Respondent’s state of
citizenship as Switzerland and his nexus category as Category 3, which is a
foreign entity. Under the Nexus Requirements, a foreign registrant is required
to have a bona fide presence in the United States for .us name registration
purposes. Respondent’s address in the WHOIS record is in Switzerland.
Respondent’s web site shows that Respondent’s art exhibits have been limited to
locations in Switzerland and Germany. Respondent therefore does not have a
sufficient nexus to the United States to maintain his registration of the
domain name <swissre.us>. While registrants of .us domain name
registrations are subject to a separate Nexus Dispute Resolution Policy for the
purposes of the nexus requirements, Respondent’s lack of the required nexus
constitutes further evidence of bad faith registration and use.
Respondent’s
submission is primarily drafted in German. I will consider those parts of the
submission that are in the English language.
Respondent
submits that he does not have the money to translate his response into English
and that Complainant should be required to translate the documents into German.
Respondent
suggests that the name SWISS RE is not identical to or confusingly similar to <swissre.us>.
Respondent
alleges he is using the domain name <swissre.us> for a web site
entitled “Swiss Real Art”.
Respondent
asserts that he only offered the 100 pictures because Complainant wanted an
offer.
At the time of
filing the Complaint, the web site located at <swissre.us> was
entitled <purtschert.com> and contained the address
<purtschert.com> repeated 51 times running the length of 4 pages in
addition to four thumbnail images of Respondent’s artwork. Respondent changed
the web site and only began using the heading “Swiss Real Art” after he
was served with the Complaint on June 24, 2002. Having been apprised of
Complainant’s rights in the SWISS RE mark and objection to his use and
registration of the domain name, Respondent implemented the Swiss Real Art
title. Accordingly, Complainant submits that in accordance with Policy
4(c)(ii), Respondent cannot claim that prior to any notice of the dispute he
used the domain name <swissre.us> or any name corresponding to the
domain name in connection with a bona fide offering of goods or services.
Complainant also
asserts that Respondent’s alleged use of the domain name <swissre.us>
as an abbreviation for Swiss Real Art is disingenuous. A more accurate, logical
and memorable domain name identifier for Respondent’s purported Swiss Real Art
business would simply have been <swissrealart.us>, a domain name that is
currently available for registration.
The Panel is
unable to consider Respondent’s initial Additional Response because it is
submitted in German.
Respondent’s
Additional Response submitted in reply to the Panel’s Order with respect to
translation of documents, consists of a submission in English with attachments
in German. In the portion in the English language, Respondent again states that
he cannot afford to have the material translated into English. Respondent says
that on August 30, 2002, he received notification that Complainant has commenced
legal proceedings against him in the Swiss Court. Respondent suggests that the
Forum should obtain a translation of his submissions and that Complainant
should pay for the translation, failing which the Forum should cancel the
Complaint.
FINDINGS
The Respondent’s request that the Panel
direct that the Forum translate his submissions and that Complainant pay for
the translation, is dismissed. The Panel has no jurisdiction under the Policy
or the Rules to make such an order.
The Panel has found that the domain name
in question is identical or confusingly similar to Complainant’s established
trademark and service mark, that Respondent has no rights or legitimate
interest in the domain name and that Respondent has registered and is using the
domain name in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution
Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis
of the statements and documents submitted in accordance with the Policy, these
Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of
the Policy requires that the Complainant must prove each of the following three
elements to obtain an order that a domain name should be cancelled or
transferred:
(1)
the domain
name registered by the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3) the domain
name has been registered and is being used in bad faith.
Identical
and/or Confusingly Similar
Complainant
owns numerous trademark and service mark registrations that reflect the SWISS
RE mark. Those are referred to in Complainant’s submissions. Complainant also
holds numerous domain name registrations that incorporate its SWISS RE mark in
the second level domain, including, inter alia, <swissre.com>,
<swissre.at>, <swissre.ch>, <swissre.tv>,
<swissre.com.sg>, <swissrelife.org>, <swissrelife.net>, and
<e-swissre.org>. Through its registration and use of the SWISS RE marks,
Complainant has established rights in the mark and has a bona fide presence in
the United States through its extensive advertising, branch offices and
registrations with the U.S. Patent and Trademark Office.
It
is clear that Respondent’s domain name is identical to Complainant’s SWISS RE mark within the meaning
of Policy ¶ 4(a)(i). Except for the
addition of the top-level domain “.us”, Respondent has “wholly and solely
incorporated” Complaiant’s SWISS RE mark into its domain name. The addition of
a top-level domain and the deletion of a space fails to distinguish
Respondent’s domain name from Complainant’s mark. Spaces are impermissible in
domain names. The domain name, therefore, is identical to Complainant’s mark.
Complainant
succeeds in establishing the first element.
Rights
or Legitimate Interests
Policy
4(c) sets out a number of ways in which Respondent can demonstrate rights or
legitimate interests. Respondent is not the owner or beneficiary of a trademark
or service mark that is identical to the domain name.
There
is no evidence that before notice of this dispute Respondent made any
preparations to use the domain name other than to connect it to Respondent’s
web site. In fact, the evidence establishes that Respondent’s more substantial
use of the domain name in connection with the business of sale of his art only
occurred after he received notice from Complainant that there was a dispute
over the use of Complainant’s mark in the domain name. The Swiss Real Art web
site was only developed after Respondent received notice of the dispute. Before
Respondent received notice of the dispute, there was no mention of Swiss Real
Art on Respondent’s web site. <swissre.us> merely lead one to the
Purtschert web site. The evidence before the Panel leads to the inference that
Respondent is merely using the domain name <swissre.us> to
generate traffic for his home page to intentionally divert traffic for
commercial gain.
There
is no evidence at all to establish that Respondent is commonly known by the
domain name, <swissre.us>. Respondent’s use of the domain name is
a commercial use, so Respondent cannot establish a legitimate noncommercial or
fair use of the domain name.
Lastly,
there is no other evidence before the Panel on which we might conclude that
Respondent has any rights or legitimate interests in the domain name.
Complainant succeeds on the second element.
Registration
and Use in Bad Faith
Policy
4(b) sets out certain circumstances, which if found, shall be evidence of bad
faith. Other circumstances can also amount to bad faith.
While
in this case it is not clear whether Respondent acquired the domain name primarily
for the purpose of selling, renting or otherwise transferring it to
Complainant for valuable consideration in excess of out-of-pocket expenses,
there is nevertheless evidence of bad faith in Respondent’s offer to transfer
the domain name as part of his proposal that Complainant pay $1,000,000 for 100
of Respondent’s paintings. The proper inference to be drawn from all the
evidence I am able to consider is that Respondent must have been aware of the
value of the SWISS RE mark and chose to register that name because of that
value, to benefit by selling its rights in the name to Complainant or by
attracting others to his web site by using the well known mark.
Respondent has
engaged in a pattern of registering infringing names. In addition to
registration of <swissre.us>, Respondent has registered
<swissre.jp> on May 13, 2002 and <novartis.cc> on May 19, 2002. As
stated, Novartis AG is a Swiss-based pharmaceutical company that reported
revenues of twenty billion dollars in 2001. Respondent provided no explanation
for having registered these names. In addition, Respondent is using
Complainant’s famous mark, SWISS RE, to attract customers to his “Purtschert:
Galerist and Painter” web site. There is no obvious connection between SWISS RE
and Purtschert. The timing of the change of the web site to refer to “Swiss
Real Art” is suspicious at best and leaves the Panel to draw the inference that
Respondent is now trying to explain away, after the fact, his use of
Complainant’s mark to attract business to his web site. This is evidence of an
opportunistic attempt to attract customers of Complainant and is evidence that
Respondent intentionally attempted to attract, for commercial gain, Internet
users to his web site by creating a likelihood of confusion with Complainant’s
mark as outlined in Policy 4(b)(iv). This also is bad faith.
Complainant has
also pointed out that Respondent has demonstrated no nexus whatsoever with the
United States. I agree with this observation, and this too is further evidence
of bad faith.
Complainant
succeeds on the third element.
DECISION
For the
reasons set out above, I find for Complainant, and I order that the disputed
domain name <swissre.us> be transferred to Complainant.
Anne M. Wallace, Q.C., Panelist
Dated: September 16, 2002
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home Page