WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Siba AB v. Torbjörn Hellerstad

Case No. D2000-0146

 

1. The Parties

The Complainant is Siba AB, a corporation organized under the laws of Sweden, having its principal place of business at Box 8865, 402 72 Göteborg, Sweden. The Respondent is Torbjörn Hellerstad, an individual resident at the address of Klarinettgatan 22, 421 39 Västra Frölunda, Sweden.

 

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

The domain name at issue is <siba.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 9, 2000, and the signed original together with four copies was received by WIPO Center on March 10, 2000.

An Acknowledgement of Receipt was sent by the WIPO Center to the Complainant, dated March 10, 2000.

On March 10, 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 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 13, 2000, NSI confirmed by e-mail that NSI was in receipt of the Complaint sent to NSI by the Complainant, the domain name <siba.com> was registered with NSI and 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 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, 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 the Policy.

A Formal Requirements Compliance Checklist was completed by the assigned WIPO Center Case Administrator on March 13, 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 "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 14, 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 April 2, 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 WHOISīs confirmation, as well as to <postmaster@siba.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.

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 April 3, 2000, having received no Response from the designated Respondent, the WIPO Center transmitted to the parties a Notification of Respondent Default.

On April 13, 2000 the WIPO Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date. This Notification informed the parties that the Administrative Panel would be comprised of a single Panelist, Mr Jonas Gulliksson.

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 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 mark SIBA was applied for registration in Sweden on September 20, 1994, with application number 94-09466, and was registered under registration number 327 420 on July 24, 1998.

The registration lists goods and services as follows:

in International Class 7 for household appliances, namely washing machines, drying machines; Class 9 for consumer and capital goods within the radio and TV area, namely TV sets, radio sets, video recorders and stereo equipment; computers, accessories for computers and recorded software; car phones; facsimile apparatus; copying apparatus and machines (photographic, electrostatic and thermic); vacuum cleaners; Class 11 for household appliances, namely stoves, ovens, refrigerators, freezers and other electrical kitchen equipment, namely electric coffee makers, toasters, immersion heaters, electric pressure cookers, electric water boilers, electric waffle irons, fans (air conditioning), electric frying pans, fruit dryers, kitchen grills, ice machines and apparatus and iceboxes; tumble driers; Class 28 for electric and computerized games and toys, namely portable computer games; Class 35 for rental of office machines and equipment (copiers); customer information in connection with sale of household appliances, namely washing machines, tumbler driers and other drying machines and stoves, ovens, refrigerators, freezers and other electrical kitchen equipment, consumer and capital goods within the radio and tv area, namely tv sets, radio sets, video recorders and stereo equipment, computers, accessories for computers and recorded software, car phones, facsimile machines, copying apparatus and machines (photographic, electrostatic and thermic), vacuum cleaners, electrical and computerized games and toys, namely portable computer games; Class 37 for repair and maintenance of household appliances, namely washing machines, tumbler driers and other drying machines, consumer and capital goods within the radio and tv area, namely tv sets, radio sets, video recorders and stereo equipment, computers and accessories for computers, car phones, facsimile machines, copiers, vacuum cleaners, household appliances, namely stoves, ovens, refrigerators, freezers, electrical and computerized games and toys; rental of boilers, cleaning machines and laundry machines; Class 38 for rental of apparatus for transmission of messages (car phones and facsimile machines); Class 39 for rental of refrigerators and freezers; Class 41 rental of consumer and capital goods within the radio and tv area, namely tv sets, radio sets, video recorders and stereo equipment; and Class 42 for rental of computers, computer equipment and recorded computer software, household appliances, namely stoves, cooking apparatus and ovens, maintenance of recorded software.

The mark SIBA was also registered in the International Register of WIPO, registration number 703628, registered July 21, 1998, based on original application number 94-09466 filed September 20, 1994, in Sweden.

The registration lists goods and services as above.

This registration is now under process by the respective Registration Office.

 

5. Partiesí Contentions

A. Complainant

The <siba.com> domain name is identical to the above-referenced SIBA trademark and to the company name (SIBA) of the Complainant.

The Complainant is unaware of any rights or legitimate interests of Mr. Hellerstad in respect of the domain name that is the subject of the Complaint.

It appears that Mr. Hellerstad has established no A or MX record for <siba.com>, as a consequence of which the domain name is not being used for a web site or email or any other purpose. See, Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003, 7.12(ii) at 10-11.

According to the Respondentís web site at http://www.aktivit.com/new_edition/about.htm (copy attached as Annex C to the Complaint), the company is the owner of approximately 400 Internet addresses (domain names) of the highest potential - 300 of them are in Swedish and the remainder represents other Western languages.

In discussing the items above, particular attention should be paid to any relevant aspects of Policy, Paragraph 4(b) and (c), including:

Circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of the trademark or service mark (normally the Complainant) or to a competitor of that Complainant, for valuable consideration in excess of the domain name registrantís out-of-pocket costs directly related to the domain name.

The above is shown for example in a letter from the Respondent, dated December 11, 1996, where the Respondent proposed a deal with the Complainant, in which he stated that "assignment of the domain <siba.com> shall of course be a part of the deal".

Further, in a letter dated 7 February 1997, the Respondent asked the Complainant how much they are willing to offer for the domain name. The Respondent states that "we want to make it simple for you and let you bid money as compensation/Ö/you will be offered the domain first/Ö/you may decide yourself whether you are interested and how much you are willing to pay in that case." (Quotes are translated to English from Swedish by the Complainantīs representative). Further, in the above referred letter, information is given regarding booking of valuable domain-names in the name of the Respondent.

A translated summary of parts of the text follows:

"The Respondent will for the purpose of protecting valuable domains (company names, trade marks etc.) book domains in their own name. The purpose is to assign the domains for a consideration. The Respondent will neither take into account who has the legal right to use the domain nor give precedence to anyone in the process of assigning domain names. The Respondent will only see to the commercial aspects of booking and usage of domain names."

In the same letter, a price list is also included. The price for an assignment of a domain name is described as follows:

"booking fee per domain: SEK 2.200 (approx. USD 250), risk-taking fee per domain: 3 * booking fee up to six months from that the Respondent booked the domain, thereafter the fee will increase every six-month period with the present booking fee, assignment fee: SEK 1.600 (approx USD 175), finders fee: fee for intellectual and commercial value of the domain. This fee shall be offered by the customers based on their own judgment. It is also stated that it is a necessary condition for assignment that the Respondent deems the bid as serious. Further, it is stated that the customer shall take into consideration that after an assignment, the customer can in turn assign the domain for consideration."

In a letter dated August 15, 1997, from the Complainant, in which the Complainant asks for legal advice, they state that, in their initial contacts with the Complainant, the amount of SEK 100.000 (approx. USD 12.000) was mentioned by the Respondent.

In a letter dated October 28, 1997, the Respondent was informed that since the Complainant has the legal right to the trade name SIBA, they are willing to pay the registration cost of USD 100 for the assignment of the domain name to the Complainant. In a response dated January 20, 1998, the Respondent refused the offer, and stated that as the proprietor of the domain name, they can proceed as they want with the domain.

The Complainant performed WHOIS searches that were intended to find Internet domain names owned by Respondent or Respondentís company. The WHOIS searches each were stopped after fifty records, which means that the Respondent has at least fifty domain names and Respondentís company has at least fifty domain names.

The domain names found in the searches appear to show a pattern of conduct which prevents owners of trademarks from reflecting the mark in a corresponding domain name.

On information and belief, the <siba.com> domain name was registered primarily for the possibility to receive money from the Complainant, and also for the purpose of disrupting the business of the Complainant. Anyone who types <siba.com> into a web browser will not find anything at all, and Complainant is unaware of any innocent purpose of Respondentís registration of the domain name.

The Respondent was first given notice of the dispute on October 28, 1997, (letter enclosed as Annex D to the Complaint). NSI wrote to Respondent about the NSI challenge on April 13, 1999. The Complainant is unaware of any evidence of the Respondentís use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services, prior to that date.

Respondent offered to sell the domain name to Complainant, as detailed in letters dated December 11, 1996, and February 7, 1997, respectively (Annex E a & b to the Complaint).

By a letter dated January 28, 2000, NSI informed Complainant that NSI would restore the domain name to service unless, prior to March 10, Complainant filed a UDRP challenge or sued in court.

Complainant is unaware of any evidence that the Respondent (as an individual, business, or other organization) has been commonly known by the domain name.

Complainant is unaware of any evidence that the Respondent is making a legitimate non-commercial or fair use of the domain name.

Furthermore, Complainant has requested the Administrative Panel to issue that the contested domain name <siba.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 provides 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 is being used in bad faith.

The domain name <siba.com> is identical with the trademark SIBA and the company name Siba 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 Siba 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 registration, the identity between the dominating element Siba in the corporate name and the domain name at issue, the fact that the word Siba 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 trademark registration and its reputation in the word Siba, the fact that the Respondent has offered the Complainant to buy the domain name a short time after the registration, the fact that the Respondent has obviously registered the domain name in order to prevent the owner of the trademark and service mark from reflecting their mark as a corresponding domain name, the non-contested statement in the Complaint and the contents of the Policy Paragraphs 4 (a) (i-iii) and 4 (b) (i) and (ii), that the domain name has been registered and is being used in bad faith.

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 <siba.com> be transferred to the Complainant.

 


 

Jonas Gulliksson
Presiding Panelist

Dated: April 27, 2000