Swiss Reinsurance Company v. Stephan Purtschert
Claim Number: FA0206000114666
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.
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.
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 email@example.com 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
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.
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.
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.
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
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