START-UP TRADEMARK OPPOSITION POLICY

DECISION

Credit Suisse Group on behalf of Winterthur Insurance v. Pal-Ex Kft

Claim Number: FA0112000102971

PARTIES

The Complainant is Credit Suisse Group on behalf of Winterthur Insurance, Zurich, SWITZERLAND (“Complainant”).  The Respondent is Pal-Ex Kft, HUNGARY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <winterthur.biz>, registered with Dotster.

PANEL

The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel.  As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).

Complainant submitted a Complaint to the Forum electronically on December 14, 2001; the Forum received a hard copy of the Complaint on December 27, 2001.

On January 3, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 23, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).

A timely Response was received and determined to be complete on January 22, 2002.

On February 11, 2002, pursuant to STOP Rule 6(b), the Forum appointed The Honorable Charles K. McCotter, Jr. (Ret.) as the single Panelist.

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that (1) the domain name <winterthur.biz> registered by  Respondent is identical or confusingly similar to Complainant’s trademark WINTERTHUR; (2) 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.

B. Respondent

Respondent asserts that WINTERTHUR is the name of its business as of December 13, 2001 and presents its Hungarian registration number as proof of this fact.  Respondent asserts that its business is completely unrelated to Complainant's insurance business and therefore Respondent did not register the domain name in bad faith.  Respondent also claims that WINTERTHUR is not used exclusively by Complainant.

 

FINDINGS

1. Winterthur Swiss Insurance Company is one of the most traditional insurance companies in Switzerland and Europe. It is active since 1875 in Switzerland and since 1876 in several other countries in Europe. Winterthur ranks today as one of top ten insurance companies in Europe and one of the top fifty worldwide.

2. The name WINTERTHUR is a strong brand and has developed to a household name by advertising campaigns. Therefore, this brand represents a high goodwill and is of great economic value. 

3. The Winterthur Insurance Company is active by offering services and corresponding through e-Channels. The name WINTERTHUR is registered in various countries under different top level domains.

4. Complainant has registered a service mark for WINTERTHUR in 16 countries as well as a registration for the service mark in the European Community.  The mark was first registered in Switzerland, Complainant's home country, in 1993.

5. Complainant has used the WINTERTHUR mark in commerce since the establishment of its Winterthur Insurance Company in 1875.

6. Respondent WINTERTHUR Commercial PLC, formerly named PAL EX Commercial PLC, was established on January 1, 1998, and did business from January 1, 1998 until December 12, 2001, under the name PAL EX Commercial PLC.   On December 13, 2001, the company’s name was changed to WINTERTHUR Commercial PLC.  The company is registered in Hungary. 

7. Respondent asserts that it plans to sells musical instruments from <winterthur.biz> and lists its preparatory activities from August-December 2001 as proof of this business plan.

8. Respondent claims that WINTERTHUR is a fantastical name created from a combination of elements.  "Win," meaning winner or "to win," "ter" meaning "space" which indicates the sound emitted from the musical instrument Respondent's company manufactures, "t" indicating the shape of the instrument, and "hur" meaning "string" like the strings of a violin.

9.   Respondent registered the domain name <winterthur.biz> on November 19, 2001.

DISCUSSION

Paragraph 15(a) of the STOP 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 STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:

(1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered or is being used in bad faith.

Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.

Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form.  Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights.  The existence of the “.biz” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.

Complainant’s Rights in the Mark

Complainant has a registered service mark for WINTERTHUR.  The <winterthur.biz>

domain name is identical to the WINTERTHUR mark in which Complainant has rights.  The Panel finds that STOP ¶ 4(a)(i) has been satisfied

Rights or Legitimate Interests

Respondent does not own any trademarks or service marks for the WINTERTHUR mark and therefore Respondent has not established that it has rights or legitimate interests in <winterthur.biz> pursuant to STOP Policy ¶ 4(c)(i).

WINTERTHUR is a strong brand name in the European Community and that Respondent registered the <winterthur.biz> domain name in order to benefit from this good will and attract people to its domain.  The use of another's trademark to attract users to Respondent's domain is not considered to be a bona fide offering of goods or services pursuant to STOP Policy ¶ 4(c)(ii).  See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark); see also Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites).

The Panel finds that STOP ¶ 4(a)(ii) has been satisfied.

Registration or Use in Bad Faith

Based on the fame of the WINTERTHUR mark in the European Community, Respondent was on notice in respect to Complainant's mark.  Registration of the domain name despite this fact is evidence of bad faith.  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constitutes bad faith); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”).  The Panel finds that STOP ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the Start-Up Trademark Opposition      Policy, the Panel concludes that relief shall be hereby granted.  Accordingly, it is Ordered that the <winterthur.biz> domain name be transferred from Respondent to Complainant and subsequent challenges under the STOP Policy against the domain name shall not be permitted.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: February 25, 2002

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