WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Array Printers AB v. Lennart Nordell

Case No. D2000-0092

 

1. The Parties

The Complainant is Array Printers AB, a corporation organized under the laws of Sweden, having its principal place of business at Önneredsbrygga 13, SE-412 57 Västra Frölunda, Sweden. The Respondent is Lennart Nordell, an individual resident at the address of PL 1668, SE-835 91 Krokom, Sweden.

 

2. The Domain Name and Registrar

The domain name at issue is <tonerjet.com>, which domain name is registered with Network Solutions, Inc. ("Network Solutions"), located at 505 Huntmar Park Drive, Herndon, VA 20170, USA.

 

3. Procedural History

A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on February 24, 2000, by e-mail, and the signed original together with four (4) copies thereof were sent by courier under the cover of a letter of the same date. An Acknowledgement of Receipt was sent by the WIPO Center to the Complainant, dated February 24, 2000.

On February 24, 2000, a Request for Registrar Verification was transmitted to the registrar, Network Solutions requesting it to:

(1) confirm that a copy of the Complaint was sent to the Registrar by the Complainant, as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy, Paragraph 4 (b);

(2) confirm that the specified domain name is registered with you;

(3) confirm that the Respondent is the current registrant of the domain name;

(4) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es) that are available in your WHOIS database for the domain name registrant, technical contact, administrative contact and billing contact, for the above domain name(s);

(5) confirm that the Uniform Domain Name Dispute Resolution Policy applies to the domain name;

(6) indicate the current status of the domain name.

On February 25, 2000, Network Solutions confirmed by e-mail that the domain name <tonerjet.com> is registered with Network Solutions and that the Respondent Lennart Nordell, was the current registrant of the name. The registrar also forwarded the requested WHOIS details, as well as copies of the registration agreement and applicable Dispute Resolution Policy.

The policy in effect at the time of the original registration of the domain name at issue was Network Solutions 4.0 Service Agreement.

Network Solutions Domain Name Registration Agreement in effect provides in pertinent part;

"NETWORK SOLUTIONS, INC.

DOMAIN NAME REGISTRATION AGREEMENT

A. Introduction. This domain name registration agreement ("Registration Agreement") is submitted to NETWORK SOLUTIONS, INC. ("NSI") for the purpose of applying for and registering a domain name on the Internet. If this Registration Agreement is accepted by NSI, and a domain name is registered in NSIís domain name database and assigned to the Registrant, Registrant ("Registration") agrees to be bound by the terms of this Registration Agreement and the terms of NSIís Domain Name Dispute Policy ("Dispute Policy") which is incorporated herein by reference and made a part of this Registration Agreement. This Registration Agreement shall be accepted at the offices of NSI.

* * * * *

C. Dispute Policy. Registrant agrees, as a condition to submitting this Registration Agreement, and if the Registration Agreement is accepted by NSI, that the Registrant shall be bound by NSIís current Dispute Policy. The current version of the Dispute Policy may be found at the InterNIC Registration Services web site: http://www.netsol.com/rs/dispute-policy.html.

D. Dispute Policy Changes or Modifications. Registrant agrees that NSI, in its sole discretion, may change or modify the Dispute Policy, incorporated by reference herein, at any time. Registrant agrees that Registrantís maintaining the registration of a domain name after changes or modifications to the Dispute Policy become effective constitutes Registrantís continued acceptance of these changes or modifications. Registrant agrees that if Registrant considers any such changes or modifications to be unacceptable, Registrant may request that the domain name be deleted from the domain name database.

E. Disputes. Registrant agrees that, if the registration of its domain name is challenged by any third party, the Registrant will be subject to the provisions specified in the Dispute Policy.

* * * * *

Q. This is Domain Name Registration Agreement Version Number 4.0. This Registration Agreement is only for registrations under top-level domains: COM, ORG, NET, and EDU. By completing and submitting this Registration Agreement for consideration and acceptance by NSI, the Registrant agrees that he/she has read and agrees to be bound by A through D above.

Domain Version Number: 4.0 [URL ftp://rs.internic.net/templates/ domain-template.txt] [01/98]"

Effective January 1, 2000, Network Solutions adopted the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"). There is no evidence that Respondent ever requested that the domain name at issue be deleted from the Domain Name Database. Accordingly, Respondent is bound by the provisions of the Policy.

A Formal Requirements Compliance Checklist was completed by the assigned WIPO Center Case Administrator on March 1, 2000. The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Uniform Rules"), and the WIPO Supplemental rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.

No formal deficiencies having been recorded, on March 2, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, Network Solutions,Inc. and ICANN), setting a deadline of March 21, 2000, by which the Respondent could file Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in Network Solutions' WHOIS confirmation, as well as to postmaster@tonerjet.com, tonerjet@tonerjet.com; the Administrative Contact via e-mail register@DOMAINNAMN.COM; theTechnical Contact, Zone Contact, DNS, Tech via e-mail doris@ACCGLOBAL.COM, and the Billing Contact Jan Nordell via e-mail silje@ALGONET.SE by Post Courier (with enclosures) facsimile (Complaint without attachments) and e-mail (Complaint without attachments).

Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2 (a) of the Uniform rules "to employ reasonably available means calculated to achieve actual notice to Respondent." Undeliverable e-mail messages were received by the WIPO Center on March 4 and March 8, 2000.

On March 22, 2000, having received no Response from the designated Respondent, the WIPO Center transmitted to the parties a Notification of Respondent Default by e-mail.

Having received on March 27, 2000, Mr. Jonas Gulliksson's Statement of Acceptance and Declaration of Impartiality and Independence the WIPO Center transmitted on March 28, 2000, to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Jonas Gulliksson was formally appointed as the Sole Panelist. The Projected Decision Date was April 11, 2000. The sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and WIPO Supplemental rules.

The Administrative Panel shall issue its Decision based on the Complaint, the e-mail exchange, the Policy, the Uniform Rules, the WIPO Supplemental Rules and without the benefit of any response from Respondent.

 

4. Factual Background

The Complainant is a company incorporated in Sweden and listed on the Stockholm stock exchange. The Complainantís main business area is within the market for office printers and copiers, a market worth approximately 22 billion US$ per year. The Complainantís business idea is to generate revenue by collaborating with established manufacturers of office equipment to offer the market colour prints in printers, copiers and faxes without significant sacrifices for the user in terms of lower performance and higher costs compared to the of today established monochrome products. This business idea is achievable thanks to the Complainantís patented TonerJet technology.

TonerJet is a technology that produces quick and inexpensive colour copies, only marginally more expensive than the current monochrome office printers and copiers. The Complainantís long-range objective is to make TonerJet one of the marketís leading printing technologies. As a symbol for the best printing technology the TonerJet trademark is extremely valuable for the Complainant. The TonerJet technology and trademark is the core of the Complainants business and the goal is to make the TonerJet technology and the use of the TonerJet logotype on products a sales argument for manufacturers worldwide.

The Complainant has registered the following trademarks:

TonerJet word

•Sweden / TONERJET, registered in class 9 for a period of ten years from September 24, 1999, with the Swedish Patent and Trademark Office. The Complainant is authorized to use the trademark in connection with scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound images; magnetic data carriers, recording discs: automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers and fire-extinguishing apparatus, i.e all goods in class 9. The mark is being used for imageforming and displaying equipment, printers, plotters, copiers, computer monitors etc. The registration certificate is provided as Annex [C 1] in the Complaint.

TonerJet logotype:

•China / TonerJet, registered in class 9 for a period of ten years from May 14, 1996, with the State Administration for Industry & Commerce of the Peopleís Republic of China. The Complainant is authorized to use and is using the mark for imageforming and displaying equipment, namely: non-impact printers, plotters, computer monitors, copiers facsimiles and other parts thereof. The registration certificate is provided as Annex [C 2] in the Complaint.

•Taiwan / TonerJet, registered in class 9 for a period of 10 years from November 1, 1998, with the National Bureau of Standards in Taiwan. The Complainant is authorized to use and is using the mark for non-impact printer, plotters, copiers, facsimiles and printer cassettes, toner cassettes, toner delivery units and print heads. The registration certificate is provided as Annex [C 3] in the Complaint.

•Taiwan / TonerJet, registered in class 2 for a period of 10 years from October 1, 1998, with the National Bureau of Standards in Taiwan. The Complainant is authorized to use and is using the mark for toner for non-impact printers, plotters copiers and facsimiles. The registration certificate is provided as Annex [C 4] in the Complaint.

•European Community trademark / TonerJet, registered in class 2 and 9 for a period of 10 years from December 2, 1998, with the Office for Harmonization in the Internal Market. The Complainant is authorized to use and is using the mark in class 2 for toner and in class 9 for image forming and displaying equipment namely non-impact printers, plotters, copiers, facsimiles and parts and accessories, including consumables, for the foregoing. The registration certificate is provided as Annex [C 5] in the Complaint.

•Norway / TonerJet, registered in class 9 for a period of 10 years from May 2, 1995, with the Patent and Trademark Office in Norway. The Complainant is authorized to use the mark for all goods in class 9 and is using the mark for image forming and displaying equipment, printers, plotters, copiers, facsimiles etc. The registration certificate is provided as Annex [C 6] in the Complaint.

•Switzerland / TonerJet, registered in class 9 for a period of 10 years from August 15, 1995, with the Patent and Trademark office in Switzerland. The Complainant is authorized to use and is using the mark for image forming and displaying equipment. The registration certificate is provided as Annex [C 7] in the Complaint.

•Australia / TonerJet, registered in class 9 for a period of 5 years from March 13, 1998, with the Trademark office in Australia. The Complainants is authorized to use and is using the mark for imageforming equipment namely non-impact printers, plotters, copiers and facsimiles. The registration certificate is provided as Annex [C 8] in the Complaint.

•Spain / TonerJet, registered in class 9 for a period of 10 years from December 19, 1996 with the Patent and trademark office in Spain. The Complainant is authorized to use and is using the mark for image forming and displaying equipment. The registration certificate is provided as Annex [C 9] in the Complaint.

The Complainant has also used its marks in connection with the promotion and marketing

of its products and services on its Internet web site which, may be found at:

[http://www.array.se].

The Respondent registered the domain name <tonerjet.com> and posted a web side at [http://www.tonerjet.com]. The web site could not be found by the Panelist. Under the address the following was found:

"1. Toner Jet

URL i www.tonerjet.com/ Last modified on: 29 Sep-1999-3K bytes."

The web site includes the domain name <tonerjet.com> and the Complainant has stated that the web site states that the domain name is for sale.

No written evidence supporting this statement has been filed and the Panelist has not found the web site on the Internet otherwise than indicated above.

Complainant made an inquiry through an agent in order to ascertain the Respondent's intentions and the requested price for the domain name.

Complainant alleges that Respondent replied on November 24, 1999, that the primary purpose of the registration of the domain name was to sale, rent or otherwise offer the domain name to Complainant or to any other company that will sell, market or in any other way be involved with the TonerJet product.

On November 24, 1999, Respondent replied to Minna Santesson (mis@gronaverket.se) that the price of TonerJet.com is 10.000 shares in Array Printers, which at that time corresponded to SEK 350.000. The sender of the e-mail (Exhibit D to Complaint) was Mr. Lennart Nordell (silje@algonet.se) and he stated that the price would increase continuously over time and that the same should be very attractive for anybody who would sell, manufacture or in any other way be involved in the technical field.

In the last paragraph Respondent states the following:

"I am in no hurry in selling, but I would be glad if Array Printers purchases the name before e.g. Canon, Minolta, Matsuhita/Panasonic etc. I guess that they would be prepared to pay considerably more than I request. I have not started marketing the name yet. I intend to wait until next year when TonerJet will come in serial production."

 

5. Partiesí Contentions

A. Complainant

The domain name <tonerjet.com> registered by the Respondent, is identical with the Complainantís registered wordmark TONERJET. The domain name is also similar to the Complainantís logotype TonerJet which, is registered by the Complainant as a trademark in the European Union, China, Taiwan, Norway and Switzerland.

The TonerJet trademark is the core of the Complainantís business. The goal is to make the TonerJet technology and the use of the TonerJet logotype on products a sales argument for manufacturers. The usage of the trademarked name TONERJET and the logotype TonerJet is strictly regulated between the manufacturers and the Complainant. The Respondent is not a licensee, nor in any other way authorized by the Complainant to use the name. The Respondent is a Swedish private person who is well aware of the value of the Complainants trademarked name and logotype. The Respondent has not made any good faith use of the domain name. It is clear that the Respondent has no rights or legitimate interests in respect of the domain name and that he registered the domain name only with the intention to attract financial gain.

On November 22, 1998, the Respondent registered the domain name <tonerjet.com> and posted a web site found at [http://www.tonerjet.com]. The web site includes the domain name tonerjet.com and states that the site including the domain name is for sale.

In response to the Respondentís actions the Complainant made an inquiry through an agent trying to find out the Respondents intentions and the requested price for the domain name. On November 24, 1999, the Respondent replied that the primary purpose with the registration of the domain <tonerjet.com> was to sell, rent or otherwise offer the domain name to the Complainant or to any other company that would sell, market or in any other way be involved with the TonerJet product.

The Respondent further stated that the price for the domain name was 10,000 shares in the Complainantís company, at that time equivalent to the amount of 350,000 SEK, and that he would be pleased if the Complainant bought the domain name rather than its competitors such as for example Canon, Minolta and Matsushita/Panasonic. Finally, the Respondent expressed intentions to market the domain name during year 2000 to take advantage of the positive effects the mass production of TonerJet would have on the value of the domain name. A copy of the above mentioned correspondence by email is provided as Annex [D] in the Complaint.

It is obvious that the domain name <tonerjet.com> is identical with the trademark TONERJET registered and used by the Complainant. It is also obvious that the domain name is confusingly similar to the TonerJet logotype registered and used by the Complainant all over Europe and in Asia.

In World Wrestling Federation Entertainment, Inc. v. Michael Bosman, Case No. D99-0001, the Panel determined that the offer from the Respondent to sell the domain name to the Complainant shortly after the domain name was registered proved that the domain name was registered in bad faith. Furthermore, the Panel determined, "because the Respondent offered to sell the domain name to the Complainant for valuable consideration in excess of any out of pocket costs directly related to the domain name", the Respondent was considered to have "used" the domain name in bad faith as defined in the Policy.

The Respondent posted a web site with the message that the domain name <tonerjet.com> was for sale shortly after the domain was registered. The Respondent was obviously aware of the value of the name at the time he made the registration. Accordingly, there can be no doubts regarding the fact that he registered the domain name in bad faith. The Respondent also offered to sell the domain name to the Complainant at the price of 10,000 shares in the Complainants company. Based on the Panelís decision in the above mentioned case an offer to sell the domain name to the Complainant to a price that clearly exceeds any expenses involved with the registration is to be considered as usage in bad faith. Accordingly, the Respondent has not only registered but also used the domain name in bad faith. Furthermore, there can be no doubts regarding the fact that the Respondent has no rights or legitimate interests in respect of the domain name <tonerjet.com>.

The domain name registration constitutes an infringement of the Complainantís registered trademarks. The Respondent has, by the registration of the domain name, prevented the Complainant from doing business on the Internet under its trademarked name. The Respondent has clearly traded on the value of the Complainantís marks, a value taking advantage of when trying to sell the domain name to the Complainant.

In conclusion, all the above clearly shows that the domain name <tonerjet.com> is identical and confusingly similar to the Complainantís registered trademarks, that the Respondent has no rights or legitimate interests in respect of the domain name and that the domain name has been registered and is being used in bad faith.

Furthermore, Complainant has requested the Administrative Panel to issue that the contested domain name <tonerjet.com> shall be transferred to Complainant.

B. Respondent

Respondent has not contested the allegations of the Complaint.

 

6. Discussion and Findings

According to Section 15 (a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Both parties are domiciled in Sweden. This means that in addition to the Policy, the Rules and the Supplemental Rules and applicable Swedish principles of law would apply as well.

Section 4 (a) of the Policy directs that the Complainant must prove each of the following:

(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,

(ii) that the Respondent has no legitimate interests in respects of the domain name; and

(iii) the domain name has been registered and used in bad faith.

The domain name <tonerjet.com> is identical with the trademark TONERJET and the word element of the mark TONERJET (device) except for the addition .com.

The Respondent has not proven that he has any prior rights or legitimate interests in the domain name.

The word TONERJET is considered distinctive and registrable as a trademark and the word is not a generic or descriptive word which can be used by anyone. The TONERJET-technology is alleged by Complainant to be the core technology of Complainant.

This fact is further evidenced by the contents of the Respondent's e-mail of November 24, 1999 (Exhibit D to Complaint) wherein is stated that the domain name even before full commercial launch believed by Respondent to be worth SEK 350.000. Respondent further alleges that "I am convinced that the name will be very attractive ÖÖÖ".

The prerequisites in the Policy, Section 4 (a)(i) and (ii) are therefore fulfilled.

Section 4 (a) (iii) of the Policy requires registration and use in bad faith.

Section 4 (b) regulates which kind of evidence that is required.

It is obvious from the facts in the case, i.e. the prior ownership by Complainant of identical trademark registration, the non-contested statement in the complaint and the contents of the Policy Sections 4 a (i-iii) and 4 b (i) that the domain name has been registered and used in bad faith.

Consequently, all the prerequisites for cancellation or transfer of the domain name according to Section 4 (i) of the Rules are fulfilled.

The Complainant has requested transfer of the domain name.

 

7. Decision

In view of the above circumstances and facts the Panel decides and requests that the domain name <tonerjet.com> registered by Respondent be transferred to the Complainant.

 


 

Jonas Gulliksson
Presiding Panelist

Dated: April 10, 2000