Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

A. The Complainant

The Complainant is:
Finter Bank Zurich
Claridenstrasse 35
8022 Zurich (Switzerland).

The Complainant’s Representative is :

Ralf Rosenow, Attorney-at-Law
Rinderknecht, Klein & Stadelhofen
Beethovenstrasse 7
8022 Zurich (Switzerland).

B. The Respondent

The Respondent is :

Gianluca Olivieri
Al Funti 6
6834 Morbio Inferiore (Switzerland)

The Respondent’s Representative:

Kilovar AG
Dufour 4
P.O. Box 2630
6830 Chiasso (Switzerland)

The two domain names at issue are :

- finter.com
- finter.org

The Registrar with whom the domain names are registered is identified below :

Address: Network Solutions
505 Huntmar Park Drive
Herndon, Virginia 20170
USA

E-mail: resolution@netsol.com
Telephone: 1(703) 742-4884, press option 3

A complaint was filed on 23 February 2000 both by e-mail and registered mail to the address of the WIPO Arbitration and Mediation Center, Geneva. The hard copy was received on 28 February 2000 and a Notification of Complaint and Commencement of Administrative Proceeding was sent at the same date by facsimile to Mr. Olivieri and to Kilovar AG, as well as per courier EMS. It was received by Mr. Olivieri on

1 March 2000. A copy was also communicated to the Internet Corporation for Assigned Names and Numbers (ICANN) and the Registrar, Network Solutions, Inc.

Payment of the amounts required for a single-member Panel has been made on time by the Complainant to the WIPO Center. The Center has verified that the Complaint satisfies the formal requirements of the Rules for Uniform Domain Name Disputes Resolution Policy and of the Supplemental Rules.

On 24 February 2000, a Request for Registrar Verification was transmitted to the Registrar Network Solution, Inc. On 25 February 2000, the Registrar certified that :

OLIVIERI, GIANLUCA (GOW13) lillonies@HOTMAIL.COM
0041916831204 (FAX) 0041916820351)

WorldNIC Name Host (HOST-ORG) namehost@WORLDNIC.COM
1-888-642-9675

OLIVIERI, GIANLUCA (GOW13) lillonies@HOTMAIL.COM
0041916831204 (FAX) 0041916820351)

The Network Service Agreement reads in part :

Network has adopted the Policy. Accordingly, Respondent is bound by the provisions of the Policy.

The WIPO Center being thus competent, invited on 15 March 2000, Prof. François Dessemontet, Lausanne, Switzerland, to serve as a panelist in the present case and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence. This Statement was returned signed to the WIPO Center on 16 March 2000. Then, the WIPO Center appointed Prof. Dessemontet as Sole Panelist, so that the Panel has been properly constituted. The file was sent to the sole panelist on 17 March 2000. The present decision has been rendered within the time limit fixed 31 March 2000.

The following facts are not contested :

A. The complainant has provided evidence of the following registrations :

1. International Trademark Registration No 645 522, registered 12 September 1995 for 20 years, for classes 35 and 36, having its origin in the Swiss Trademark No 418 617, of the 14 March 1995, protection claimed in Germany, Austria, Benelux, Spain, France, Liechtenstein, Portugal (Exh. C of the Complaint).

2. Registration of the Complainant at the Office of Commerce as of 15 April 1958 for the first publication at the Official Journal of the Register of Commerce, the total capital amounting to 45 mio CHF (Exh. E). The Bank has branch offices in Chiasso, Geneva, Lugano.

3. Registration of the domain name "finter.ch" (Exh. D), the registration dating 12 March 1997.

4. A third person had registered the name "finter.net" in February 1999.

B. Respondent registered the domain names "finter.com" and "finter.org" on 5 December 1999.

C. Further, a company limited by shares with the name Kilovar AG was incorporated at approximately the same time in Chiasso, the registration in the Register of Commerce of Canton Ticino having taken place on 17 December 1999. This company presents itself as "start-up services for e-business". Under the signature of Mr. Guscetti, it addressed two letters on behalf of Respondent to Complainant, a first one on 17 December 1999 (Exh. F) (Respondent not being identified by his name), and a second one 10 January 2000 (Exh. I).

In the first letter, Kilovar AG acting on behalf of an unspecified client declared that he is the "sole owner of the international web site www.finter.com, that various queries were lodged at that address, and that his client intends to offer this address for sale." The letter went on to state that "as your firm is registered under the name "Finter Bank" at the Register of Commerce, we consider it proper to inform you about a future sale of the address".

In the second letter, some considerations on the merits of the case were made. Further, the addresses were offered to Finter Bank Zurich for CHF 25'000.- "finter.com" and CHF 5'000.- "finter.org").

1. "(b) The Complainant is a business bank with its main offices in Zurich, Switzerland, which is active in all kinds of banking, financial services and related activities and businesses within Switzerland and abroad. The registered trademark FINTER BANK ZUERICH, as well as the characteristic abbreviated form FINTER is constantly used by the Complainant in its daily business and activities. Furthermore, the registered corporate name of the Complainant is identical to the registered trademark, i.e. FINTER BANK ZUERICH, and, again, the Complainant constantly uses its corporate name FINTER BANK ZUERICH and the characteristic abbreviated form FINTER in its daily business and activities. [In] this context, it should be noted that under applicable Swiss law, any corporation registered in Switzerland has an exclusive right to use its corporate name within Switzerland, which includes also the concept of protection against any other corporate or other name which is "confusingly similar", i.e. which by the public may be confused with such corporation (please refer to art. 944 et seq. of the Swiss Code of Obligations, in particular art. 951 para. 2 and art. 956 thereof).

(c) The domain names in dispute, "finter.com" and "finter.org" are obviously not identical with the registered trademark or the registered corporate name of the Complainant, which in both cases is Finter Bank Zürich; they are, however, identical (except of course for the Top Level Domain) to the domain name finter.ch registered and constantly used by Complainant since March 1997. Furthermore, Art. 4.a(i) of the Policy only requires that the domain name in question and the trademark or service mark in which complainant has rights are "confusingly similar". The part "FINTER" of the Complainant's registered trademark and corporate name is the only characteristic word in such trademark and corporate name, as "Bank" merely indicates the area of business activities of the Complainant and "Zürich" is a mere geographic indication with respect to the corporate and registered head offices of the Complainant.

As a consequence thereof, the Complainant is commonly known under and frequently also use the abbreviated form "FINTER" only, as demonstrated and evidenced for example in its registered domain name "finter.ch". Based thereon, there may be no doubt whatsoever that the domain names in dispute on the one hand, and also the registered trademark, and the registered corporate name of the Complainant on the other hand are confusingly similar within the meaning of art. 4.a(i) of the Policy.

2. Moreover, the statement contained in the letter of 17 December 1999, by Kilovar AG are evidence that Kilovar as representative of Respondent was fully aware of the Complainant and of its registered corporate name. Complainant notes that Kilovar AG was incorporated only on 6 December 1999, and such entry published on 17 December 1999 only, i.e. on the very same day as Annex F was sent to Complainant. As a further "coincidence", the so-called client of Kilovar AG, the Respondent, registered the domain names in dispute hereunder just one day prior to the incorporation of Kilovar AG. It appears from these "co-incidences" that the company Kilovar AG has only been incorporated (i) to create a vehicle to hide the Respondent, and (ii) only immediately after the successful registration of a domain name which appeared to have sufficiently potential to be sold for a high price (which happened to be the domain names "finter.com" and "finter.org").

3. Finally, Complainant maintains that to date no web pages have been activated under the domain names in dispute except for the "Under Construction" information loaded by the registrant, printout of which for both domain names in dispute dated 23 February 2000, are attached to his complaint as Annexes K1 and K2. Based on the previous correspondence it is obvious beyond any doubt that Respondent apparently has no legitimate interest in, and has registered the domain names in question for the sole purpose of selling them preferably to the Claimant having a legitimate interest that no third party (including the Respondent) will make use of such domain names confusingly similar to the registered trademark, corporate name and domain name of Complainant. This intention of Respondent is even more a apparent as (i) the "offer to sell the domain names" was made only 12 days after the registration thereof and only 1 day after the publication of the incorporation of the vehicle Kilovar AG obviously created to hide the Respondent, and (ii) Respondent states himself that he has no intention to use the domain names and in fact does not use such domain names, and (iii) Respondent requests an excessive amount for the transfer of the domain names in no relation whatsoever to his actual out-of-pocket cost related to the domain names. Pursuant to art. 4.b of the Policy, the circumstances as described above are to be considered as evidence of the registration and use of a domain name in bad faith as provided under art. 4.a of the Policy. Furthermore, in its first published Administrative Panel Decision no. D99-0001, the application of the respective legislative history of the ICANN policy was confirmed, stating in Section 6 : Because respondent offered to sell the domain name to complainant "for valuable consideration in excess of" any out-of-pocket costs directly related to the domain name, respondent has "used" the domain name in bad faith as defined in the Policy. From the above it is obvious that the relevant circumstances in the present case are extremely similar to the facts in Case no. D99-0001, except that the domain name in question here is not identical, but "only" confusingly similar to the registered trademark and corporate name of Complainant, which situation, however, pursuant to art. 4.a(i) of the Policy, is to be treated equally".

1. By Answer of 8 March 2000, Respondent's Representative Kilovar AG claims "to have a legitimate personal interest in respect to the objected name, thus invalidating the requirement under Para. 4 letter a sub letter ii of the Resolution Policy :

• The choice of the objected name to register domain names in Respondent’s name derives from personal circumstances.

• "Ruby der Finter" is the name of a dog personally belonging to the Respondent since 1991, as evidenced by ANNEX Z.

• The originally intended "Ruby der Stimulant" explained by the dog’s attitude to continuously provoking Respondent, Respondent’s family members and visitors by engaging himself in sudden multidirectional springs, became from the very beginning "Ruby der Finter" because of shortness and a much nicer sound.
• "Finter" is derived in this case from German word "Finte" corresponding to English substantive "feint". Although grammar inappropriate, it represents a free extension of a regular German word through frequently employed
• suffix "-r", typically indicating the actor of an action.

• Such a derived "Finter" represented to the owner’s free opinion a perfect description of the above-mentioned animal behavior.

• The pet is at present time hale and hearty.

• The sharp sound "FIN-ter" is usual decoy of the pet.

• The dog’s name was coined in 1991 upon its birth and afterwards never changed, as evidence in ANNEX Z.

• The dog’s name was coined heedlessly of any consideration about the Complainant’s existence, whose priority name registration only occurred in March 1995, according to Paragraph 5 letter c of the Complaint, that is :

- WELL IN ADVANCE to any Complainant’s priority registration date exhibited in the Complaint under Paragraph 5 letter c;

- WELL IN ADVANCE to any Complainant’s domain name registration exhibited in the Complaint under Paragraph 5 letter a.

• The pet’s name has been in regular use by the Respondent’s family members for 9 years, 4 of which uncovered by any priority right referable to the Complainant".

2. Respondent further considers that the innuendoes thrown by the Complainant against the Respondent are offensive and defamatory; they deeply injure the moral integrity and good reputation of the Respondent.

The objected name is not the official name of the dog, but a simple abbreviation. The same consideration by reference to the objected name applies to the Complainant, as evidenced by the Complainant itself under Paragraph 5 letter b of the Complaint.

3. Respondent concludes that :

• The Respondent claims for recognition of his right to continue calling his pet "Ruby der Finter" according to his factual priority use.

• Respondent’s Domain name registration in the objected name is no violation;

• The remedies requested by the Complainant in the Complaint aim at improperly limit a factual and prior use to the Respondent in name of Complainant’s surely bigger economic interests; the remedies requested are anti-constitutional ones.

Lexical similarity should not be condition enough to grant any rights of exclusivity to a later user (the Complainant) to the prejudice of a previous user (the Respondent).

Domain name registration referring to the objected name by the Respondent to have happened by personal circumstances and legitimate interest.

The complaint should be rejected being :

• the dispute inapplicable under lack of required condition under Paragraph 4 letter a sub letter ii of the Uniform Domain Name Dispute Resolution Policy;

• the Complaint prejudicial to a legitimate interest and a constitutionally warranted right to the Respondent by reference to the objected name.

The facts are not controversial. Reference is made to section 4 above.

The law is clear.

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute : "A Panel shall 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." Since both the complainant and respondent are domiciled in Switzerland, to the extent that it would assist the Panel in determining whether the complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law under Swiss law having regard also to the practice of the previous WIPO Panels and of the Courts of the neighboring countries.

Paragraph 4(a) of the Policy directs that the complainant must prove each of the following :

1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,

2) that the respondent has no legitimate interests in respect of the domain name; and,

3) the domain name has been registered and used in bad faith.

1. Confusing Similarity

Respondent clearly uses a domain name, which is confusingly similar to the service mark in which Complainant has a right, deriving from the 1995 registrations. "Finter.org" and "Finter.com" are almost identical with the trademark of Complainant (Finter Bank Zürich) since the distinctive part is identical. In this connection, it should be noted that, before 1 April 1993, no registration of service mark was possible in Switzerland. With the new Trademark Law of 1992 becoming effective on 1 April 1993, service trademarks could be registered. Art. 78 Trademark Law fixed a time limit of two years in order for the users of a trademark that had not been registered previously to file a registration indicating since when they used it, with the effect of the priority right against third party going back to that date of use (although the priority is now generally determined under the file-to-file rule). Finter Bank was registered since 1958 at the Register of Commerce. Therefore, it might well be that the Finter Bank Zürich trademark benefits from that particular provision, however, this is not apparent from the exhibits filed (the International Registration only). Under the formal trademark law of 1890, the registration of a trade name with the Swiss Register of Commerce was sufficient to obtain the protection as a trademark (Art. 3 para. 1 of the 1890 Act). Therefore, for the purpose of deciding the priority of rights on the addresses "finter.com" and "finter.org", the priority of use by Finter Bank Zürich will not be determined only by the registration of the mark in 1995, but by its prior use.

2. Legitimate Interest ?

Under the Policy, a Respondent must not have a legitimate interest in order for a decision to be rendered against him. It is true that a first decision by a WIPO Panel in case D99-0001 rendered on 14 January 2000 mentions as a "legitimate interest" the existence of a "nickname of respondent or other member of his family, [or] the name of a household pet". Prima facie, it seems that "Finter" is the name of a household dog of Respondent, vaccination certificates being filed as evidence with the Panel. However, it is not an apparent legitimate interest, which is contemplated in the Para. 4 (a) (ii) of the Policy, but an effective legitimate interest.

In the present case, the reliance of Respondent's Representative on the existence of Respondent's dog does not make the case for a legitimate interest. First, it will be noted that the use which Respondent purports to make of the address, i.e. to offer it for sale, indicates that no affective value is at stake for him. When Respondent’s Representative claims "for recognition of his rights to continue calling his pet "Ruby der Finter", according to his factual priority use" (Answer p. 5), he tries and diverts the attention from the fact that this very name should be offered against consideration to someone else (falling into the top level domains .org or .com).

Thus, the right to keep the name of his dog is not at issue in the present proceedings, but only the infringement on Complainant's vested trademark rights. Under Article 14 Trademark Law, Swiss trademark law makes no exception for a dog's use of a trademark

Further, even if one were to follow Respondent's Representative in its plea, it should be noted that the conflict here is between a trade name registered in the Swiss Register of Commerce and used apparently well before 1991, and a pet's name used only since 1991. In case of a conflict between names, Art. 29 Swiss Civil Code on the protection of name will be applicable, since it is not clear for the moment that the specific protection of Article 956 Code of Obligations would offer a sufficient basis to protect the registered trade name against a misappropriation through a web address 1^. In case of conflict between two interests worth of protection, one should follow the method adopted in the first case decided by the Federal Tribunal concerning domain names, i.e. the Ritz decision 2: there is no priority of the trademark right as against a right derived from the trade name right under Article 29 CC. It is therefore necessary to balance the interests worth of protection in order to reach the solution which is most appropriate under equity and good conscience (ATF 125 III 93). The Federal Tribunal recently applied that method in a name vs. trademark case (not an Internet case), poising the interest of an "Anne-Franck Strickting" of Amsterdam against an "Anne-Franck-Fonds" of Basle 3. In an older case (with many citations of case law), the Federal Tribunal stated that there is no priority of the name over the trademark 4 ^. In a prior case (ATF 107 II 363), the Federal Tribunal declared that priority in time is usually decisive.

Here, the balance of interests would be undoubtedly in favor of Complainant, were both interests at stake deemed to be in fact deserving of protection. The interest of a middle-sized bank in Zurich, established in 1958, with three branch offices throughout Switzerland and a web size introduced since three years (12 March 1997) is clearly deserving a priority over the interests of a later web registrant to name his site after his pet.

Moreover, it should be stressed that the claim to use a name for one's business has been recognized by the Federal Tribunal only for one's own name, and not for the name of relatives, pets, estates, etc.5

Finally, taking into account various elements of the present case, the Panelist is of the opinion that the claim of Respondent is spurious and lacking in good faith, so that it cannot be entertained as based on a legitimate interest, deserving of being considered as one of the terms in the balance of interests which has been prescribed by Swiss case law.

More explanations in connection with this finding immediately follow under the

discussion of the bad faith use as required by the Policy. Suffice it to add that under ATF 107 II 363, the priority of time of Complainant viz. Respondent is good ground to accept Complainant’s request.

3. Respondent’s Knowledge of Prior Use by Complainant

Respondent must have known of the trade name of Complainant, both in fact and as a matter of law.

a) In fact

Respondent is now domiciled in Morbio Inferiore and was domiciled before in Sagno; both localities are in the immediate vicinity of Chiasso and he should have been aware of the branch office of the Complainant which is located there.

b) In law

Under Article 933 CO, the contents of a registration in the Register of Commerce are supposed to be known by Swiss (and even foreign 6) businessmen and private persons, as from the date of the publication of those facts in the Official Journal of the Register of Commerce (Art. 932 para. 2 CO).

4. Bad Faith Registration and Use

For bad faith use to be present, it is necessary to find not only that the name was registered in bad faith, but also that it was used in bad faith (see the WIPO Sole Panelist Decision of 14 January 2000 in the case World Wrestling Federation Entertainment, Inc. v. Michael Bosman, under 6).

a) Bad Faith

Although it is difficult to define in general terms a multi-facetted notion such as bad faith, it should under Swiss law comprise of two elements :

• the knowledge of given facts, in the present case the prior use by Complainant of a trade name and a trademark, or the duty to know those facts in a given set of circumstances 7; this knowledge may safely be assumed to exist here (see above N° 3)

• the awareness to act against a rule of law 8.

b) Registration in Bad Faith

The facts of the case show that Respondent registered his domain name in bad faith, since he registered it on 5 December 1999 and wrote to Complainant "offering it for sale" on 17 December 1999, i.e. 10 working days later. The letter of 17 December 1999 is evidence of the bad faith of Respondent, who speaks of a "moral claim" of Complainant 9 to get informed about the availability of the domain name offered for sale. The awareness of acting against the rule is obvious.

Further, both Respondent's letters of 17 December 1999 and 10 January 2000 do not allude to Respondent's pet.

This is all the more surprising since the letter of 10 January 2000 appears to have been carefully drafted in order to give various reasons why Respondent acted the way he did.

The letter of 10 January 2000 gives the impression of offering for sale the domain name because Complainant did not register itself "Finter.org" or "Finter.com". Now, this contention is blatantly made in bad faith. In effect, most Swiss companies are registered under the Top Domain CH because it had been the practice during some years to give the national top domain name to non-US web sites. This practice has changed of late for well-known reasons. This former practice could not escape the attention of a company specializing as Kilovar AG does in "start-up services for e-business". To put the blame on Complainant for having followed the registration practice usual in 1997 at the time of the registration of its domain name shows the aggressiveness of the letter. Further, it contains innuendoes to the effect that domain names could be registered only in order to pressure money out of the registrants of neighboring names, which is actually tantamount to registration in bad faith.

Finally, registration and use of any domain name with the element "finter.…" would be in bad faith according to the Swiss Law on Unfair Competition of 1986 (hereafter : LCD) since it is a measure which can induce confusion between one’s own activities or enterprise and Complainant’s business (Art. 3 letter d LCD; see also Art. 2 LCD prohibiting all and any act contrary to good faith having an impact on the market).

3. Use in Bad Faith

In the present case, there is no web site using the domain names "Finter.org" or "Finter.com" (see Exh. K1 and K2). Nevertheless, "use" within the meaning of Para. 4(b)(i) of the Policy has been found to include the offer to sell the domain name. The first decision of a WIPO Panel (case D099-0001) addresses that very issue in the following terms :

As a matter of law, the Panelist finds that the reasoning mentioned in that decision deserves to be upheld in the present case also.

For all the foregoing reasons, the Panel decides that the domain names registered by Respondent are confusingly similar to the service mark in which the Complainant has rights, and that the Respondent has no right or legitimate interest in respects of the domain names, and that the Respondent’s domain names have been registered and are being used in bad faith. Accordingly, pursuant to Paragraph 4, i of the Policy, the Panel requires that the registration of the domain names "finter.com" and "finter.org" be transferred to the Complainant.

François Dessemontet
Sole Panelist

Dated: March 23, 2000

^1. In favor of this, one could invoke Arrêts du Tribunal Fédéral (hereafter : ATF) 107 II 362 c. 3 (art. 956 CO applies "to the use of a name to identify one’s business" [which is the case with a domain name]); against it see U. Bueri, Note after the Federal Tribunal case of 11 February 1999, in Revue du droit de la propriété intellectuelle, de l'information et de la concurrence (hereafter : sic !) 1999, at 280-281 with citations. See generally Ph. Gilliéron, Les divers régimes de protection des signes distinctifs et leurs rapports avec le droit des marques, thèse Lausanne, 2000, 145 et seq. and 354-357.

^2. Rytz & Cie SA c. Rytz Industriebau AG, ATF 125 III 91.

^3. See ATF of 4 June 1997, sic ! 1997, 493-496.

^4. ATF 116 II 619 (Paolo Gucci c. Guccio Gucci SpA).

^5. See ATF 116 II 617 : « Das Namensrecht verleiht dem Namensträger nicht nur das Recht, seinen Namen zur Kennzeichnung der eigenen Person zu verwenden, sondern es berechtigt ihn auch, von ihm selbst geschaffene Werke und Einrichtungen aller Art nach seinem Namen zu bezeichnen und unter dem eigenen Namen am Geschäftsverkeh teilzunehmen ».

^6. ATF 96 II 44 : « Le but d’une société anonyme, tel qu’il a été inscrit au registre du commerce (art. 641 ch. 3 CO), est censé connu des tiers et leur est opposable. Le tiers qui conclut un marché sans s’informer sur ce point en assume le risque et supporte le dommage qui peut en découler (art. 933 CO). Peu importe qu’il soit étranger et domicilié à l’étranger ».

^7. See e.g. P. Piotet, L’acquisition a non domino de monnaie ou de papiers-valeurs au porteur ou à ordre, in Recueil de travaux de la Faculté de droit de Lausanne pour la Société suisse des juristes, Lausanne 1958, pp. 31 ss.

^8. See P. Jäggi, Berner Kommentar, Bern 1966, N. 43 et seq ad Art. 3 CC.

^9. The German text of the letter does not identify who is entitle to that « moral claim » (« moralischen Anspruch »), but there is no doubt that it must be Complainant; there can be no "moral claim" of Respondent to inform Complainant about the availability of the domain