Helvetia Swiss Insurance Co Ltd -v- Helvetia Group [2003] DRS 1210 (21 October 2003)

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The complaint was received by Nominet in full on 9 September, 2003. Nominet validated the complaint and informed the Respondent, by both letter and by e-mail on 11 September, 2003, noting that the Dispute Resolution Service had been invoked and that the Respondent had 15 days (until 3 October, 2003) to submit a Response. No Response or reply of any sort was received. Nominet informed the Complainant accordingly on 6 October, 2003, noting that Informal Mediation was not an option in this situation, and inviting the Complainant to pay the fee to obtain an Expert Decision pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy (“the Policy”). The fee was duly paid on 10 October, 2003.

On 14 October, 2003, Nominet invited the undersigned, Keith Gymer (“the Expert”), to provide a decision on this case and, following confirmation to Nominet that the Expert knew of no reason why he could not properly accept the invitation to act in this case and of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality, Nominet duly appointed the undersigned as Expert on the same day.

The Complainant, Helvetia Swiss Insurance Company Limited, was founded in the 19th Century and continues today as a multinational insurance business. It has presence in the UK through its German subsidiary, Helvetia International Versicherungs AG (which is confirmed on the UK Financial Services Authority (FSA) website as authorised to conduct insurance business in the EEA) and through its Jersey subsidiary, Helvetia Finance Limited. The Complainant is the registered proprietor of International Registration 659772 dating from 15 July, 1996 for the mark HELVETIA for insurance and financial services. The Complainant also trades as Helvetia Patria Group.

The Respondent appears on the WHOIS and Nominet records as “Helvetia Group” with an administrative contact address at 11 Orchard Square, London. On the website pages provided at www.helvetia-group.org.uk, however, the Respondent is identified as Helvetia Group Ltd., with a Registered Office address at 6 Chase Road, London. Companies House records, provided by Nominet, show that the person identified as administrative contact for the Domain Name, who is also identified on the website as a Director of Helvetia Group Ltd., was indeed a Director of the Respondent and that another Director resided at the Orchard Square address.

From the WHOIS records, the Domain Name was registered for “Helvetia Group” on 14 May, 2003.

From inspection (and a copy of the home page for www.helvetia-group.org.uk provided by Nominet), it is clear that the Respondent is holding itself out as selling and marketing insurance products in conjunction with a business called First Net Bank, through a UK subsidiary identified as First Net Finance Ltd (also registered at the 6 Chase Road address in London). The Respondent also purports to be a wholly owned subsidiary of a “Helvetia Insurance Group, Inc.”, which is reportedly based in “Moheli, State of Mwali” in the Comoros. None of these businesses appears to be authorised to conduct insurance business in the UK according to the information available from the UK FSA website.

1. The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name (Policy Paragraph 2a(i)); and
2. The Domain Name, in the hands of the Respondent, is an Abusive Registration (Policy Paragraph 2a(ii)).

“The Helvetia General Insurance Company, was founded in 1858 with its registered office in St. Gallen, Switzerland, and was entered in the Commercial Register on 20.02.1883 under the name "Helvetia Schweizerische Versicherungsgesellschaft (Helvetia Swiss Insurance Company, Limited)".”

“For decades, Helvetia has been active in many countries and has concentrated its insurance business in the past few years on a few markets (Switzerland, Germany, Austria, Italy, Spain and France). However, it is also active in financial business, in particular within the scope of "Helvetia Holdings", St. Gallen, a 100% subsidiary of the "Helvetia Swiss Insurance Company". "Helvetia Finance Limited", St. Hélier (Jersey), which was entered in the Commercial Register on 06.04.2000, is a 100% subsidiary of "Helvetia Holdings". Helvetia is thus also present and registered in the United Kingdom.”

“With regard to the versatility and importance of the insurance and financial business of Helvetia, we would refer to the business report for 2002 of "Helvetia Patria", as well as to the "Company Profile" (provided as a PowerPoint presentation in the Complaint) of "Helvetia Patria", that is to say the superior holding company.”

“Almost the entire business of the insurance group active within the framework of this holding is to be attributed to Helvetia. Only the Swiss life insurance business is generated within the framework of "Patria Schweizerische Lebensversicherungs-Gesellschaft" (Patria Swiss Life Insurance Company).”

“It is also important that the "Helvetia Swiss Insurance Company" is engaged world-wide in active reinsurance business. In the insurance trade the name "Helvetia" is thus known world-wide and is clearly attributed by experts in the branch and by the clientele to the "Helvetia Swiss Insurance Company" in St. Gallen, Switzerland. In the market, the Helvetia Patria Insurance Group appears as follows: In Switzerland under the trade name "Helvetia Patria" In Germany, France and Italy under the trade name "Helvetia" In Austria under the trade names "Der Anker" and "Helvetia" In Spain under the trade name "Helvetia CVN" World-wide in the reinsurance business under the trade name "Helvetia".”

“The use of the name Helvetia by another insurance company with registered office in Mali (Helvetia Insurance Group, Inc) and its marketing company in London (Helvetia Group, Ltd) as well as the links in the web sites of the "First Net Bank" (Comoros) and the financial services marketing company "First Net Finance" in London lead to constant confusion, as is shown by the daily queries addressed to us [i.e. to the Complainant].”

“As the name "Helvetia" is used above all on the Internet by the said [Respondent] companies, the confusion also cannot remain restricted to a limited region or a continent. This use infringes Helvetia's name and trade name rights in the whole world, especially wherever the Swiss "Helvetia" is active. Thus the use of the name "Helvetia" for insurance and financial services is only permissible in connection with the "Helvetia Swiss Insurance Company", St. Gallen. [Respondent’s] Web sites containing the name "Helvetia" and promoting products of such a kind are thus illegal [according to the Complainant].”

“In the United Kingdom the name "Helvetia" is already taken in connection with financial services, since the registration of "Helvetia Finance Limited, Jersey" in 2000. This is one more reason why the registration of the web site concerned in the United Kingdom is illegal [according to the Complainant]. It is a clear case of cybersquatting.”

Annexes to the Complaint included:
Annex 1 – Complainant’s warning letter of 7 August 2003 to Respondent (and associated businesses).
Annex 2 – Swiss Commercial Register entry for Complainant
Annex 3 – Copy of International Registration for HELVETIA
Annex 4 – Annual Report of Complainant for 2002
Annex 5 – Helvetia Finance Ltd. Jersey incorporation details.
Annex 6 – WHOIS
Annex 7 – Complainant’s letter to UK Financial Services Authority of 26 August, 2003.

The Respondent made no Response to, and raised no challenge to, any of the facts and evidence submitted by the Complainant.

Paragraph 2 of the Policy requires that, for the Complainant to succeed, it must prove to the Expert, on the balance of probabilities, both that it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and that the Domain Name, in the hands of the Respondent, is an Abusive Registration as defined in Paragraph 1 of the Policy.

The Complainant in this case has asserted that it has rights in the name and mark HELVETIA and that this name is identical or similar to the Domain Name.

It certainly has relevant rights under International Trademark registration 659772. Although this registration itself does not extend to the UK, that is not a requirement of the definition of “Rights” in the Policy, and it is clear that the Complainant has a relevant presence (and relevant established business in the UK) in the HELVETIA name through its registered subsidiaries as identified above.

The Respondent has also not challenged any of the submissions made by the Complainant regarding the Complainants rights and reputation in the name HELVETIA. In the Expert’s view, in these circumstances, these submissions are sufficient to establish a basic claim to rights in the name.

The Expert considers that the addition of the word “group” in the domain name (as “Helvetia-group”) has no distinctive merit. The Complainant, like many other companies in the same business, trades as, and will be recognised as a “group”. Further, the Expert does not consider it of any relevance that the Domain Name is registered in the “.org.uk” domain, which might be argued to imply a non-commercial purpose. The evidence plainly shows the Respondent to have commercial intent.

Accordingly, for the purposes of the Policy, the Expert concludes that the Complainant does have Rights in this case in respect of a name or mark, which is similar to the Domain Name.

The Complainant also has to show that the Domain Name is an Abusive Registration. Paragraph 1 of the Policy defines “Abusive Registration” as a Domain Name which either:

i. was registered or otherwise acquired in a manner, which at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s Rights; OR

ii. has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.

A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration are set out in Paragraph 3a of the Policy. A Relevant factor in the present case is set out in Paragraph 3a(i)C:

C primarily for the purpose of unfairly disrupting the business of the Complainant.

ii Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.”

However, the factors listed in Paragraph 3 of the Policy are only exemplary and indicative. They are not definitive. It is Paragraph 1 of the Policy, which provides the applicable definition as indicated above.

The evidence shows that the Domain Name has been used for a website which is directed at insurance services, which is the field in which the Complainant has long-established rights and reputation.

On the evidence, which has in no way been countered or disputed by the Respondent, the obvious inference is that the Respondent, as an apparent or potential competitor of the Complainant, has knowingly taken the Complainant’s name and used it in the Domain Name (and the related UK company name) for the specific purpose of diverting potential customers of the Complainant away from the Complainant and towards the Respondent’s business. There is unchallenged evidence from the Complainant of frequent instances of actual confusion. The motivation and action of the Respondent appears to have been directed at, and has actually resulted in, some misappropriation of the Complainant’s property – their goodwill and reputation in the HELVETIA name. The Respondent has taken unjustified advantage of the Complainant’s reputation in its name by adopting the Domain Name helvetia-group.org.uk. This amounts to a calculated misrepresentation, with the evident intention of taking business away from, or otherwise disrupting and damaging the Complainant’s commercial interests. At the least, such action must be unfair, if not more dubious.

Consequently, the Expert has no difficulty in concluding that the Domain Name has manifestly been registered and used by the Respondent in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights and that it is an Abusive Registration for the purposes of the Policy.

Having concluded that the Complainant has Rights in respect of a name or mark which is similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert determines that the Domain Name, helvetia-group.org.uk, should be cancelled as requested by the Complainant.

However, to avoid the obviously undesirable possibility that the cancelled Domain Name may then simply be immediately re-registered by or on behalf of the Respondent, the Expert would ask Nominet to invite the Complainant first to amend its request and to accept transfer of the Domain Name if it prefers. The Decision herein therefore also authorises transfer of the Domain Name to the Complainant in such event.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Helvetia Swiss Insurance Co Ltd -v- Helvetia Group [2003] DRS 1210 (21 October 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/1210.html Cite as: [2003] DRS 1210