WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Vattenfall AB v. P D S

Case No. D2000-0359

 

1. The Parties

The Complainant is Vattenfall AB, a corporation organized under the laws of Sweden, having its principal place of business at 162 87 Stockholm, Sweden. The Respondent is P D S, having its principal place of business at Luntmakaregatan 12, Stockholm, Sweden.

 

2. The Domain Name and Registrar

The domain name at issue is <vattenfall.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 April 29, 2000 and in hardcopy on May 1, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated May 3, 2000.

On May 3, 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 May 9, 2000 NSI confirmed by e-mail that NSI was in receipt of the Complaint sent to NSI by the Complainant, the domain name <vattenfall.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 May 10, 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 May 10, 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 May 29, 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@vattenfall.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.

On May 30, 2000, having received no Response from the designated Respondent the WIPO Center transmitted to the parties a Notification of Respondent Default. On June 6, 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 Policy, the Uniform Rules, the WIPO Supplemental Rules, and without the benefit of any Response from the Respondent.

 

4. Factual Background

The Complainant and its Registered Trademarks

Complainant is the parent company of The Vattenfall Group, which has over 130 directly or indirectly owned subsidiaries and an annual turnover of approximately SEK 28 billion (equivalent to U.S. $3.2 billion). Complainant has been in business for over 90 years, originally as Statens Vattenfallsverk (a company providing public utilities in the field of power and run by the Government), known as "Vattenfall" for short. In 1990, the business was transferred into an ordinary joint stock company, Vattenfall AB. Complainantís customers include both large and small industrial enterprises, municipalities, power companies, and households.

Complainant sells electricity directly to over 950,000 customers, accounting for over 20% of electricity sales in the region.

Complainant also has operations in Finland, Czech Republic, Estonia, Germany, Holland, Latvia, Lithuania, Poland, Southeast Asia, South America, and the U.S.

Complainant is the owner of Swedish Registration No. 259,483 for the VATTENFALL mark covering goods in the following International Classes: 4 (lubricants and fuels); 6 (metal goods); 7 (machinery); 9 (electrical and scientific apparatus); 11 (environmental control apparatus); 12 (vehicles); 16 (paper goods and printed matter); 36 (insurance and financial services); 37 (building construction and repair); 39 (transportation and storage services); 40 (treatment of materials); 41 (education and entertainment); and 42 (miscellaneous services). A copy of Complainantís registration certificate, with an English translation, is attached as Exhibit 7 to the Complaint.

Complainant has also used its VATTENFALL mark in connection with the promotion of its goods and services via its Internet websites located at www.vattenfall.se, www.vattenfall.fi, www.vattenfall.com.pl, www.vattenfall.no.

 

5. Partiesí Contentions

A. Complainant

Complainant contends that the Respondent has registered as a domain name a mark which is identical to Complainantís VATTENFALL mark, that the Respondent has no rights or legitimate interests in respect of the domain name and that Respondent has registered and is using that domain name in bad faith.

Respondent registered the domain name <vattenfall.com>, which is identical to Complainantís VATTENFALL mark. Because Complainantís mark VATTENFALL is the subject of a valid Swedish trademark registration, and because Respondent is a Swedish company, Respondent is deemed to have constructive notice of Complainantís VATTENFALL mark when selecting and registering the domain name <vattenfall.com>.

Respondent acted in bad faith by breaching its registration contract with NSI because it falsely represented that its registration of the domain name <vattenfall.com> did not infringe the rights of any third party.

Respondent has been a co-defendant in at least one trademark infringement lawsuit regarding past thefts of domain names.

In Swedish Match AB, et al v. Tony Lennartsson, Control Alt Delete Stockholm AB, and PDS, the U.S. District Court for the Eastern District of Virginia enjoined Defendants from "...using the ĎSwedish Matchí and "Blendí names and marks, and any name or mark confusing similar to those names...". The court also ordered, among other things, the cancellation of Defendantsí registrations of the domain names <swedishmatch.com> and <blend.com> and the transfer of those domain names to Swedish Match AB. Notably, the court found that "Defendants are all residents of Sweden, who are engaged in a business which ... Ďkidnapsí other companiesí names and trademarks and registers them as Internet domain names, without permission from the rightful owners of those names. Defendants then offer to sell the domain names back to the companies which claim rights to them." In view of Defendantsí willful infringement, the Court ordered Defendants to pay Swedish Match ABís costs and attorneys fees. The Order and the Memorandum Opinion are attached as Exhibits 8 and 9 to the Complaint.

Respondentís employee Tony Lennartssonís cybersquatting activities has been the subject of at least one lawsuit. In Folksam Omsesidig Sakforsakring, et al v. Tony Lennartsson and Control Alt Delete Stockholm AB, the court found that "Complainants are the rightful owners of the Internet domain name Ďfolksam.comí", and enjoined Defendants from "using the ĎFolksamí name and mark ... including, but not limited to, use as Internet domain names." As in Swedish Match AB et al v. Tony Lennartsson, et al, the court ordered Defendants to pay Folksam Omsesidig Sakforsakringís costs and attorneysí fees. The Complaint and the Order are attached as Exhibits 10 and 11 to the Complaint.

Attached as Exhibit 12 to the Complaint is a printout filed in the above-noted court actions from the website www.controlaltdelete.se/test.html comprising, in part, of an inventory of Respondentís trademark-related domain names for sale. The disputed domain name VATTENFALL.COM is listed for sale on page 8 of the printout. Respondentís trademark-related domain names for sale includes many well-known marks.

Respondent has an established pattern of registering domain names comprised of the trademarks of others for purposes of ransoming them back to their rightful owners. In fact, Respondentís employee Tony Lennartsson has even gone so far as to have offered--on Swedish national television--to sell back PDSís large inventory of name-napped domains of Swedenís most well known companies.

Because NSI placed the domain name <vattenfall.com> on "hold" in response to Complainantís complaint, Respondent has been prevented from using the domain name <vattenfall.com>. Present day attempts to access the website currently associated with the domain name <vattenfall.com> return an error, "hostname unknown." However, Respondent demonstrated its continuing bad faith by paying the renewal fee for the domain name <vattenfall.com>. NSIís online payment system located at https://payments.networksolutions.com/ indicates that no payment for the domain name <vattenfall.com> is due at this time. Had Respondent chosen not to pay the renewal fee, NSI would have terminated the dispute, and would have given Complainant an opportunity to register the domain name <vattenfall.com>. By paying the renewal fee and renewing its contract with NSI, Respondent passively holds the domain name <vattenfall.com>, and meets the use requirement of the UDRP, as clarified in Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003): "...paragraph 4(b) recognises [sic] that inaction (e.g. passive holding) in relation to a domain name registration can, in certain circumstances constitute a domain name being used in bad faith. Furthermore, it must be recalled that the circumstances identified in paragraph 4(b) are "without limitation" - that is, paragraph 4(b) expressly recognises [sic] that other circumstances can be evidence that a domain name was registered and is being used in bad faith."

Respondentís registration of the domain name <vattenfall.com> meets the bad faith element described in Section 4 (b)(ii) of the UDRP. Namely, Respondent registered the domain name <vattenfall.com> to prevent Complainant (the owner of the trademark) from reflecting the mark <vattenfall.com> in a corresponding ".com" domain name, and have engaged in a pattern of such conduct.

Respondentís registration of the disputed domain name <vattenfall.com> meets the bad faith element described in Section 4 (b)(i) of the UDRP. Respondent registered the domain name <vattenfall.com> primarily to sell, rent, or otherwise transfer it back to Complainant (the trademark owner) for valuable consideration in excess of its documented out-of-pocket costs directly relating to the domain name <vattenfall.com>.

Respondentís registration and use of the domain name <vattenfall.com> meets the bad faith element set forth in Section 4(b)(iv) of the UDRP. Specifically, Respondentís registration and use of the domain name <vattenfall.com> is likely to cause confusion, mistake, or deception as to (a) the affiliation, connection, or association of Respondent and Complainant, and (b) the origin, sponsorship, or approval of Complainant, its services, and commercial activities.

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

The domain name <vattenfall.com> is identical with the trademark VATTENFALL and the company name Vattenfall except for the addition .com.

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

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 which kind of evidence that is required.

It is obvious from the facts in the case, i.e. the prior ownership by Complainant of an identical trademark registration, the identity between the dominating element Vattenfall in the corporate name and the domain name at issue, the fact that it is highly improbable that PDS has selected the name without first having noticed the Complainantīs trademark registration and its wide reputation in the word Vattenfall, 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 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 PDS is identical or confusingly similar to the trademark and service mark in which the Complainant has rights, and that the PDS has no rights or legitimate interests in respect of the domain name, and that PDSís 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 <vattenfall.com> be transferred to the Complainant.

 


 

Jonas Gulliksson
Presiding Panelist

Dated: June 19, 2000