Comparis; Comparis.ch against www.comparez.ch
(WIPO Domain Name Panel and Zurich Commercial Court)
The question was whether using the domain name "www.comparez.ch" creates a likelihood of confusion with the names "Comparis" or "Comparis.ch" or exploits the reputation of the defendant. The WIPO Arbitration and Mediation Center ordered the transfer of the domain name www.comparez.ch of the plaintiff to the defendant (comparis) (2011). The plaintiff then sued the Zurich Commercial Court for a finding of non-infringement of the defendant's and the UWG's trademark rights, as well as the absence of a transfer claim.
The Zurich Commercial Court upheld the claim on 10 April 2013, despite the increased distinctiveness of the defendant's trademarks and despite the identity of the services. The main argument was that the component "compar" from the English "to compare" resp. can be derived from the French "comparer" or from the Italian "compare" and is therefore descriptive, i.e., not protectable, for the comparative services.