WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Strålfors AB v. P D S AB

Case No. D2000-0112

 

1. The Parties

The Complainant is Strålfors AB, a corporation organized under the laws of Sweden, having its principal place of business at Helsingborgsvägen 20, 341 84 Ljungby, Sweden. The Respondent is P D S AB, a corporation organized under the laws of Sweden, having its principal place of business at Luntmakaregatan 12, Stockholm, Sweden.

 

2. The Domain Name(s) and Registrar(s)

The domain name at issue is <stralfors.com>, which domain name is registered with Network Solutions, Inc. ("NSI"), Herndon, Virginia, United States of America.

 

3. Procedural History

A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on March 1, 2000, and the signed original together with four copies was received by WIPO Center on March 7, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated March 6, 2000.

On March 6, 2000, a Request for Registrar Verification was transmitted to the Registrar, NSI 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 domain name at in issue is registered with NSI;

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

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

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

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

On March 7, 2000, NSI confirmed by e-mail that NSI was in receipt of the Complaint sent to NSI by the Complainant, the domain name <stralfors.com> was registered with NSI and that the Respondent was the current registrant of the name. The Registrar also forwarded the requested WHOIS details, confirmed that the Uniform Domain Name Dispute Resolution Policy was in effect and stated that the domain name was on "Hold" status.

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 found 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, NSI 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 the Respondent ever requested that the domain name at issue be deleted from the domain name database. Accordingly, the Respondent is bound by the provisions of Policy.

A Formal Requirements Compliance Checklist was completed by the assigned WIPO Center Case Administrator on March 7, 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 Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules"), 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 "WIPO 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 7, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of March 26, 2000, by which the Respondent could file a 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 NSIís WHOIS confirmation, as well as to <postmaster@stralfors.com>; no e-mail addresses were found at any web page relating to the disputed domain name. In addition, the Complaint was sent by express courier to all available postal addresses.

The WIPO Center received an e-mail message on March 27, 2000, from the Administrative Contact. The Administrative Contact stated that the Complaint was received by the Administrative Contact on March 26, 2000. Further the administrative Contact requested an extension of the deadline until April 16, 2000.

The WIPO Center responded to the e-mail the same day and stated that the Complaint was sent to all the addresses in the Communication Document attached to the Commencement Notification and that neither the mail nor the e-mail sent to the Administrative Contact were returned as undeliverable. Accordingly the WIPO Center proceeded with the case.

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."

On March 27, 2000, having received no Response from the designated Respondent, apart from what has been mentioned above, the WIPO Center transmitted to the parties a Notification of Respondent Default.

On March 28, 2000, in view of the Complainantís designation of a single panelist (but without prejudice to any election to be made by the Respondent) the WIPO Center invited Mr. Jonas Gulliksson to serve as a panelist in Case No. D2000-0112, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.

Having received on March 29, 2000, Mr. Jonas Gullikssonís Statement of Acceptance and Declaration of Impartiality and Independence, on March 30, 2000, the WIPO Center transmitted 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 13, 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-mails exchanged, the partiesí Agreement, the Policy, the Uniform Rules, the WIPO Supplemental Rules, , and without the benefit of any Response from the Respondent.

 

4. Factual Background

4.1 The Complainant and its Registered Trademarks

The Complainant is a large company incorporated in Sweden and listed on the Stockholm stock exchange. The Complainant is the parent-company in the

Strålfors-Group (the Group) consisting of wholly owned subsidiaries and branches in several countries around the world.

The predecessor to the Complainant can be traced back to 1919 when the first company in the Group was established in Sweden. In 1936 the Complainant adopted the name Strålfors and the Complainant as well as the other companies in the Group have traded under the name Strålfors or Stralfors ever since. A list of the companies in the Group is provided as Annex [C] in the Complaint.

The Complainant operates within the field of information transfer, focusing on computer-related products and services. The Complainant offers its customers a comprehensive range of products and services for information transfer for example physical products including plastic cards, forms, computer peripherals, labels, machinery for paper handling and electronic information transfer for example systems for document handling, business communication and Internet trading.

The Group has a strong position on the market with a revenue of approximately 2 470 MSEK financial year 1998-99. The Complainant and its activities all carried out under or by reference to its trademarked name STRALFORS / STRÅLFORS is well known both nationally and internationally.

The Complainant is the proprietor of the following trademarks:

The Complainant has also registered the logotype STRALFORS in Germany, UK, France, Italy, Benelux and Switzerland and the logotype STRÅLFORS in Sweden, Norway, Denmark and Finland. A list of the above mentioned trademark registrations including registration number is provided as Annex [D 12] in the Complaint.

4.2 The Complainantís domain names and web sites

The Complainant also uses its trademarked name and logotype in connection with the promotion and marketing of its products and services on its Internet web sites found at http://www.stralforsgroup.com and http://www.stralfors.se .

Further, the Complainant is the registrant of more than 110 domain names containing the word STRALFORS and more than 40 domain names identical with the trademark STRALFORS. A list of the domain names is provided as Annex [E] in the Complaint.

 

5. Partiesí Contentions

A. Complainant

The domain name<stralfors.com>, registered by the Respondent, is identical with seven trademark registrations of the word STRALFORS held by the Complainant. The domain name is also confusingly similar with several trademark registrations of the word STRÅLFORS and the logotype STRALFORS and STRÅLFORS held by the Complainant in many European countries.

The Complainantís name and logotype are well known trademarks associated with high quality and security and the usage of the Complainants trademarks is strictly regulated. The Complainant is not a licensee, nor in any other way authorized by the Complainant to use the name stralfors or to apply for or use any domain name incorporating any of the trademarks held by the Complainant. The Respondent has not made any good faith use of the domain name and it is clear that the Respondent has no rights or legitimate interests in respect of the domain name.

In July 15, 1996, the Respondent registered the domain name <stralfors.com>. The Respondent is a company incorporated in Sweden. The Respondentís business concept is to register well known terms and trademarks as domain names. The Respondent currently owns more than 50 domain names reflecting well-known Swedish trademarks such as for example stralfors.com. A list of the domain names is provided as Annex [F] in the Complaint.

In response to the Respondentís actions the Complainant filed a Complaint in the beginning of 1997 according to Network Solutions Dispute Policy in force at the time. The Complaint resulted in that the domain name stralfors.com was placed "on hold". Soon after the Complainant offered the Respondent 3000 SEK under condition that the domain would be transferred to the Complainant. The amount of 3000 SEK served as compensation for the Respondentís costs directly related to the domain name. The Respondent did not accept the offer and the domain name was never transferred. Copies of the correspondence mentioned above are provided as Annex [G] in the Complaint.

The Respondents board of directors consists of Rolf Thony Lennartsson and Carl Gustav Robert Boström both authorized to sign for the company. The same persons also constitute the board of directors and are authorized to sign for the company Control Alt Delete Stockholm AB. Control Alt Delete Stockholm AB is a company incorporated in Sweden which has registered many of the names and trademarks owned by large Swedish companies listed on the Stockholm stock exchange as domain names. A list of the domain names is provided as Annex [H] in the Complaint. The Respondent and Control Alt Delete Stockholm AB are clearly connected. Their business activities consist of preventing the owner of a trademark from reflecting the name in a corresponding domain name with the intention to attract financial gain by selling the domain name to the owner of the trademark. Company registration certificates of the Respondent and Control Alt Delete Stockholm AB are provided as Annex [I] in the Complaint.

All of the above clearly shows that the Respondent was well aware of the value of the Complainantís trademark at the time he made the registration. The domain name <stralfors.com> was registered by the Respondent primarily with the purpose of selling, renting or otherwise transferring the domain name to the Complainant or to a competitor of the Complainant for valuable consideration in excess of out-of-pocket costs directly related to the domain name. Accordingly, there can be no doubts regarding the fact that the Respondent registered the domain in bad faith.

The domain name <stralfors.com> does not resolve to a web site or other on line presence. The Respondent has not promoted or tried to market the domain name. Neither has the Respondent directly offered to sell, rent or otherwise transfer the domain name to the Complainant. However, as determined in Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003, "Ö the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all circumstances of the case, it can be said that the Respondent is acting in bad faith". Inaction is clearly within the concept of "being used in bad faith" and it is possible for inactivity by the Respondent to amount to the domain name being used in bad faith.

The Complainantís trademark has strong name recognition and is widely known as result of its substantial use in Sweden and in other countries. The Respondents practice is to trade on the value of the trademarks that he has registered as domain names by way of storing and selling the domain names to the owners of the trademarks. The Respondent and its affiliated companies have engaged in a pattern of such conduct. The Respondent was well aware of the value of the Complainantís trademark when making the registration and the Respondent has not made any good faith use of the domain name. In light of these circumstances the Respondentís passive holding of the domain name must amount to acting in bad faith and the criteria of being used in bad faith must be fulfilled.

In conclusion, all the above clearly shows that the domain name <stralfors.com> is identical or 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 <stralfors.com> shall be transferred to Complainant.

B. Respondent

Respondent has not contested the allegations of the Complaint.

 

6. Discussion and Findings

According to Paragraph 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, applicable Swedish principles of law would apply as well.

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

1) 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,

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

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

The domain name <stralfors.com> is identical with the trademark STRALFORS and the company name Stralfors 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 STRALFORS 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 prerequisites in the Policy, Paragraph 4 (a) (i) and (ii) are therefore fulfilled.

Paragraph 4 (a) (iii) of the Policy further provides registration and use in bad faith.

Paragraph 4 (b) regulates the 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 registrations, the identity between the dominating element STRALFORS in the corporate names and the domain name at issue, the fact that the word STRALFORS has a high degree of individuality and distinctiveness and the fact that it is highly improbable that the Respondent has selected the name without first having noticed the Complainantīs numerous trademark registrations and its wide reputation in the word STRALFORS, the non-contested statement in the Complaint and the contents of the Policy Paragraphs 4 (a) (i-iii) and 4 (b) (i) that the domain name has been registered and is being used in bad faith. Cf. Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003.

Consequently, all the prerequisites for cancellation or transfer of the domain name according to Paragraph 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, that the domain name registered by Respondent is identical or confusingly similar to the trademark and service mark in which the Complainant has rights, and that the Respondent has no rights or legitimate interests in respect of the domain name, and that the Respondentís domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4 (i) of the Policy, the Panel requires that the registration of the domain name <stralfors.com> be transferred to the Complainant.

 


 

Jonas Gulliksson
Presiding Panelist

Dated: April 13, 2000