WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sydkraft AB v. Control Alt Delete
Case No. D2000-0381
1. The Parties
The Complainant is Sydkraft AB, a corporation organized under the laws of Sweden, having its principal place of business at 205 09 Malmö, Sweden. The Respondent is Control Alt Delete, a corporation organized under the laws of Sweden, having its principal place of business at Rådmansgatan 7, Stockholm, Sweden.
2. The Domain Name(s) and Registrar(s)
The domain name at issue is <sydkraft.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 May 4, 2000, and the signed original together with four copies was received by WIPO Center on May 5, 2000. The WIPO Center sent an Acknowledgment of Receipt to the Complainant, dated May 11, 2000.
On May 11, 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 14, 2000, NSI confirmed by e-mail that NSI was in receipt of the Complaint sent to NSI by the Complainant, the domain name <sydkraft.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.
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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.
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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 has 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 May15, 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 Complainant paid on time and in the required amount the required fees for a single-member Panel.
No formal deficiencies having been recorded, on May 15, 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 June 3, 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 by facsimile and by courier to all the available fax numbers and postal addresses. The complainant was notified by e-mail to their representative <firstname.lastname@example.org>.
Apart from the e-mails, facsimile and the courier post sent to the Administrative Contact and the facsimile sent to the hostmaster, the above mentioned communications were not 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 June 6, 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 June 8, 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. Knud Wallberg to serve as a panelist in Case No. D2000-0381, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.
Having received Mr. Knud Wallbergīs Statement of Acceptance and Declaration of Impartiality and Independence, on June 9, 2000, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Knud Wallberg was formally appointed as the Sole Panelist. The Projected Decision Date was June 23, 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 Policy, the Uniform Rules, the WIPO Supplemental Rules, and without the benefit of any Response from the Respondent.
4. Factual Background
SYDKRAFT was formed in 1906 as Sydsvenska Kraftaktiebolaget to exploit hydroelectric power on the Lagan watercourse and supply electricity to the main urban centers in southern Sweden. Today the SYDKRAFT Group comprises four business areas consisting of some 60 operating companies, half of which have their own personnel. The Group includes companies, which supply electricity, natural gas, heating, LPG and solid fuel, and also provides computer, electrical installation, measuring, telecom and consulting services.
In 1998, the Group had a total of 6,200 employees in approximately 125 locations in Sweden. SYDKRAFT has been listed on the Stockholm Stock Exchange since 1966.
Complainant is the owner of the Swedish trademark registration # 265 508 SYDKRAFT covering all goods in class 1,4, 7, 9, 11, 12, 37, 38, 39 and 41 and class 42: Advise in energy matters. The trademark was registered as a word mark on 31 March 1995.
The Complainant has also used SYDKRAFT as company name and business identifier for many years in Sweden.
5. Partiesí Contentions
The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, namely the trademark SYDKRAFT. The trademark SYDKRAFT was registered in 1995, well before the domain name <sydkraft.com>. Complainants registration certificate for the SYDKRAFT mark evidences the validity of Complainantís trademark and the Complainantís exclusive right to this trademark. The trademark SYDKRAFT, as well as the company name SYDKRAFT, are very well known to the public in Sweden. The trademark has been widely promoted among members of the general consuming public for several years and the trademark symbolizes a tremendous goodwill associated with Complainant and is a property right of a huge value. The SYDKRAFT Group of companies consists of about 90 companies and has been a joint stock company since 1906. The total annual turnover amounts to approximately 1 500 000 000 USD and the group of companies have approximately 6500 employees.
The Respondent has no rights or legitimate interests in respect of the domain name by virtue of the fact that the SYDKRAFT mark is distinct and famous, and Respondentís use of the SYDKRAFT mark is unauthorized Respondentís actions directly violates Complainantís trademark rights pursuant to Paragraph 4 (a) of the UDRP as Respondent registered and uses the domain name in bad faith.
In July 1996 Respondent registered the domain name <sydkraft.com>, which is identical to Complainantís SYDKRAFT mark. Because Complainantís mark SYDKRAFT is the subject of a valid trademark registration and because the respondent is a Swedish company, Respondent must have had knowledge of the SYDKRAFT mark when selecting and registering the domain name <sydkraft.com>.
Respondent also acted in bad faith by breaching its registration contract with NSI because it falsely represented that its registration of the domain name <sydkraft.com> did not infringe the rights of any further party.
Respondent is a well known so called Cybersquatter who register trademarks belonging to others as domain names under the registrant names Control Alt Delete, PDS and Pro Dive for purpose of ransoming them back to their rightful owners. Respondentís cybersquatting activities have been the subject to two lawsuits, namely Swedish Match AB et al v. Tony Lennartsson, Control Alt Delete, Stockholm AB and PDS, and Folksam Omsesidig Sakforsakring, et al v. Tony Lennartsson and Control Alt Delete Stockholm AB, both cases before the U.S District Court for the Eastern District of Virginia, and to other Administrative Panel Decisions under the auspices of WIPO.
As recently as October 8, 1999, the website at www.controlaltdelete.com offered domain names for sale. Control Alt Delete is the registrant of both domain names CONTROLALTDELETE.SE and CONTROLALTDELETE.COM, and Respondentís employee Tony Lennartsson, prior to changing his NIC contact handle TL796, was listed as the Administrative Contact for the domain name.
Complainant has previously filed a complaint with NSI under NSIīs former Domain Name Dispute Policy. In response to Complainantís complaint and in recognition of the fact that the domain name <sydkraft.com> identical to Complainantís mark SYDKRAFT, NSI placed the domain name "on-hold" on February 27, 1997. By letter dated on March 23, 2000 NSI informed Complainant that the domain name <sydkraft.com> would be released from "hold" and returned to Respondent unless NSI received a complaint filed under the UDRP by May 4, 2000.
Because NSI placed the domain name <sydkraft.com> on "hold" in response to Complainantís complaint, Respondent has been prevented from using the domain name <sydkraft.com>. Present day attempts to access the website currently associated with the domain name <sydkraft.com>return an error, "hostname unknown". Respondent has demonstrated its continuing bad faith by paying the renewal fee for the domain name <sydkraft.com>. NSIís online payment system located at https://payments.network solutions.com/ indicates that no payment for the domain name <sydkraft.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 <sydkraft.com>. By paying the renewal fee and renewing its contract with NSI, Respondent passively holds the domain name <sydkraft.com> and meets the use requirement of the UDRP, as clarified in Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003): "Öparagraph 4(b) recognizes (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" Ė that is -, paragraph 4(b) expressly recognizes (sic) that other circumstances can be evidence that a domain name was registered and is being used in bad faith.
By continuing its registration of the domain name <sydkraft.com> with the knowledge that Internet users will not be able to access any website associated with the domain name, Respondent causes Internet users to mistakenly believe that Complainant does not have a web presence dedicated to informing and promoting the public about its goods and services, and seriously interferes with Complainantís business. Reference is made to S.S. Sociťtť Gťnťrale de Surveillance S.A. v. Inspectorate (WIPO Case No. D2000-0025) (finding that respondentís use of a tombstone, or minimalist website, diverts prospective customers and constitutes bad faith).
The disputed domain name <sydkraft.com> is likely to cause confusion, mistake, or deception as to: (a) the affiliation, connection, or association of Respondent and Complainant; (b) the origin, sponsorship, or approval of Complainant, its services, and commercial activities; and (c) Complainantís ability to have a business presence on the Internet at the domain name under which Internet users are most likely to search.
Respondentís misappropriation of the domain name <sydkraft.com> will irreparably injure Complainantís reputation and hard-earned goodwill and its SYDKRAFT mark. If Respondent is allowed to retain ownership of the infringing domain name <sydkraft.com>, Complainant will be unable to use its famous SYDKRAFT name and mark to designate and identify a website by the domain name <sydkraft.com> where Internet users most commonly assume Complainantís site to be found.
Respondentís registration of the domain name <sydkraft.com> meets the bad faith element described in Section (b)(ii) of the UDRP. Namely, Respondent registered the domain name <sydkraft.com> to prevent Complainant (the owner of the trademark) from reflecting the mark SYDKRAFT in a corresponding ".com" domain name, and have engaged in a pattern of such conduct.
Respondentís registration of the disputed domain name <sydkraft.com> meets the bad faith element described in Section 4(b)(i) of the UDRP. Respondent registered the domain name<sydkraft.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 <sydkraft.com>.
Respondentís registration and use of the domain name <sydkraft.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 <sydkraft.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.
Respondent breached its registration contract with NSI when it registered the domain name <sydkraft.com>.
There is no plausible explanation for Respondentís registration of the domain name <sydkraft.com> given the fame of Complainantís SYDKRAFT mark.
Pursuant to Section 4(c) of the UDRP: (i) Respondent has not used, is not using and has not demonstrated an intent to use the domain name <sydkraft.com> in connection with a bona fide offering of goods or services; (ii) Respondent is not and has not been commonly known by the domain name <sydkraft.com>; and (iii) Respondent is not making and has not made legitimate non commercial or fair use of the domain name <sydkraft.com>, without intending to mislead and divert consumers or tarnish Complainantís SYDKRAFT mark for commercial gain.
In accordance with Paragraph 4(i) of the Policy the Complainant has requested the Administrative Panel to issue that the contested domain name be transferred to the Complainant.
Respondent has not contested the allegations contained in 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 <sydkraft.com> is identical to the trademark SYDKRAFT and the company name SYDKRAFT except for the addition of .com.
The Respondent has not proven that he has any prior rights or legitimate interests in the domain name.
The word SYDKRAFT 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 the identical trademark registration, the identity between the dominating element SYDKRAFT in the corporate names and the domain name at issue, the fact that the word SYDKRAFT has the necessary degree of individuality and distinctiveness and the fact that it is highly improbable that the Respondent has selected the name without knowing the Complainantīs use and registration of the mark SYDKRAFT, 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 as confirmed in several later decisions inter alia the cases
No D2000-00112 Strålfors AB v. PDS AB and No D2000-00146 Siba AB v. Torbjörn Hellerstad.
Consequently, all the prerequisites for cancellation or transfer of the domain name according to Paragraph 4 (a) and (b) of the Policy are fulfilled.
The Complainant has requested transfer of the domain name.
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 <sydkraft.com> be transferred to the Complainant.
Dated: June 13, 2000