The Alberto Giacometti Foundation has initiated a chDRP procedure in order to obtain the transfer of the domain names archivioalbertogiacometti.ch, fondazionealbertogiacometti.ch, and fondazionegiacometti.ch based on the Regulation concerning the procedure for resolving disputes for .ch domain names and .li (nic.ch), including article 24, paragraphs (c) and (d):
(c) The Expert shall grant the request if the allocation or use of the domain name constitutes a clear infringement of a Right in a distinctive sign which the claimant owns under the law of Switzerland (in disputes over a domain name under the ccTLD “.ch”) or Liechtenstein (in disputes over a domain name under the ccTLD “.li”).
(d) In particular, a clear infringement of an intellectual property right exists when
i. both the existence and the infringement of the claimed Right in a distinctive sign clearly result from the wording of the law or from an acknowledged interpretation of the law and from the presented facts and are proven by the evidence submitted; and
ii. the Respondent has not conclusively pleaded and proven any relevant grounds for defence; and
iii. the infringement of the right justifies the transfer or revocation of the domain name, depending on the remedy requested in the request.
Article 1 defines the right attached to a distinctive sign as:
“Right in a distinctive sign is any right recognized by the legal system devolving from the registration or use of a sign, which protects the holder of the right from infringement of his interests as the result of registration or use of an identical or similar sign by third parties, including, but not limited to, the right in a registered business name, a personal name, a trademark, a geographical indication and the defensive rights devolving from the law on unfair competition” (Art. 1 of the Rules of Procedure for Dispute Resolution Procedures for .ch and .li domain names).
Proving a prior right is crucial, as evidenced by the case D2008-0778 concerning the domain name caillebotte.com (see UDRP: Caillebotte.com, rejection) in which the transfer request was rejected, unlike in the following cases: D2006-0442 (vodkachagall.com, transfer), D2002-0496 (fundacionpicasso.com, museopicassomalaga.com, museopicassodemalaga.com, transfer), D2001-0879 (vangoghmuseum.com, transfer).
In this case, the expert considered that the Alberto Giacometti Foundation could invoke a right on the names “Alberto Giacometti” or “Giacometti” under Article 29 of the Swiss Civil Code:
“1 The person whose name is disputed may ask the judge for recognition of his right.
2 Whoever is a victim by a usurpation of his name may bring an action to put an end to it, without prejudice to all damages in the event of fault and compensation as moral reparation if this compensation is justified by the nature of the damage proven” (art. 29 of the Swiss Civil Code).
However, Alberto Giacometti and the foundation that bears his name are two different persons. This is why, in support of Article 29 of the Swiss Civil Code, the expert also based his decision on Swiss case-law according to which “it is sufficient that a foundation has an ideal interest in the guarantee of its identity so that the use of a similar name by another foundation can be prohibited” (BGE 102 II 161, recital 4a). The expert also added that it does not matter if the claimant does not pursue a profit-making purpose. It follows that the expert ordered the transfer of the domain name.
