Zurich Insurance loses 'zurich.biz' to German ISP
A World Intellectual Property Organization panel has dismissed a complaint brought under the Start-up Trademark Opposition Policy by Zurich Insurance Company of Switzerland against internet service provider WebWide Internet Communication GmbH of Germany to obtain the transfer of the domain name 'zurich.biz'.
Zurich Insurance is the insurance arm of the well-known Zurich Financial Services Group, a leading provider of financial services with 35 million customers worldwide and a presence in over 60 countries. The group owns hundreds of trademarks (including Community trademarks) as well as 130 domain names incorporating the word 'Zurich'.
Zurich Insurance claimed that WebWide had registered the domain name in bad faith since (i) it offered to sell domain names (though not 'zurich.biz') for sums largely greater than their registration cost, and (ii) it was not using the domain name to operate a website.
WebWide argued that it had no knowledge of Zurich Insurance's ZURICH trademark and that Zurich Insurance cannot claim exclusive rights to the Swiss city's name. It also denied trying to sell 'zurich.biz' and claimed that it intended to use the domain name as a platform to promote its business in Zurich.
Sole panellist Torsten Bettinger found that, although Zurich Insurance had proved that the domain name is identical to its trademark ZURICH and WebWide does not have any legitimate interest in the domain name, there was no evidence that WebWide had registered it in bad faith. Bettinger reasoned that the mere knowledge of the existence of a trademark or the fact that the mark is well known in the registrant's country is not sufficient to establish bad faith.
However, Bettinger stated that Zurich Insurance's chances of success under other procedures would depend on the future use of 'zurich.biz'. It is also worth noting that even in the absence of bad faith, Swiss law may allow civil action based on trademark or unfair competition law.
J David Meisser and Bettina Bochsler, Meisser & Partners, Klosters
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