WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

ASSA ABLOY AB v. P D S AB

Case No. D2000-0442

 

1. The Parties

The Complainant is ASSA ABLOY AB, a corporation organized under the laws of Sweden, having its principal place of business at Klarabergsviadukten 90, PO Box 70340, 107 23 Stockholm, Sweden. The Respondent is P D S AB, having its principal place of business at Luntmakaregatan 12, Stockholm, Sweden.

 

2. The Domain Name and Registrar

The domain name at issue is <assaabloy.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 16, 2000 and in hardcopy on May 19, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated May 19, 2000.

On May 19, 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 24, 2000 NSI confirmed by e-mail that NSI was in receipt of the Complaint sent to NSI by the Complainant, the domain name <assaabloy.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 in "Active" 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 26, 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 26, 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 14, 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@assaabloy.com>; no e-mail addresses were found at any web page relating to the disputed domain name. In addition, the Complaint was sent by telefax and express courier to all available postal addresses.

On June 15, 2000 having received no Response from the designated Respondent the WIPO Center transmitted to the parties a Notification of Respondent Default. On June 20, 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 and Domain Names.

The Complainant, ASSA ABLOY AB, is the parent company in the multinational ASSA ABLOY group consisting of subsidiaries, importers and agents all over the world of which some can be found in a list provided as Annex [C] to the Complaint.

ASSA ABLOY had a projected sales exceeding 20 billion SEK during year 2000.

ASSA ABLOY AB was created in November 1994 as a result of the spin-off of the company Assa AB to Securitas ABs shareholders. Abloy AB was subsequently acquired from the Finnish company Metra Oy AB.

ASSA ABLOY AB has been listed on the Stockholm Stock Exchange since November 8, 1994. In October 1995 the share was moved to the A list. The price of the ASSA ABLOY share rose by 58 percent in 1999.

ASSA ABLOYís business is founded on the manufacturing of individual security products.

The Complainant has registered the wordmark <ASSA ABLOY> in Sweden with the Swedish Patent and Trademark Office for a period of ten years from 1998-02-27. The Complainant is authorized to use and is using the mark for goods and services in class 6, 9 and 37 according to specification provided together with the registration certificate as Annex [D] to the Complaint.

The Complainant is also the proprietor of thirty seven trademark registrations of the word <ASSA> and more than one hundred trademark registrations of the word <ABLOY> in countries all over the word. The Complainant has also registered combinations of the word <ASSA> in thirty countries. A list of all of the trademark registrations is provided as Annex [E] to the Complaint.

The Complainant is the registrant of more than fourteen domain names identical with its trademarked names <ASSA ABLOY>, <ASSA> and <ABLOY>. A list of the domain names is provided as Annex [F] to the Complaint.

The Complainant also uses its trademarked names in connection with the promotion and marketing of its products and services on its Internet web site found at [ http://www.assaabloy.se].

 

5. Partiesí Contentions

A. Complainant

The domain name <assaabloy.com>, registered by the Respondent, is identical with the trademark registration of the word <ASSA ABLOY> held by the Complainant. The domain name is also confusingly similar with more than one hundred and fifty trademark registrations of the word <ASSA>, <ABLOY> and combinations of <ASSA> held by the Complainant in countries all over the world.

The Complainantís trademarked names <ASSA ABLOY>, <ASSA> and <ABLOY> are well known international trademarks associated with high quality, security, design and environmental thinking. The reselling of the Complainantís products and services and the usage of the Complainantís trademarks is strictly regulated through license-, distribution- and reselling agreements. A list of stockists in Sweden and England and an example of a locksmith agreement are provided as Annex [G] to the Complaint.

The Respondent is not a licensee, a retailer or in any other way authorized by the Complainant to use the trademarked names <ASSA ABLOY>, <ASSA> or <ABLOY>. The Respondent is neither authorized 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.

On July 15, 1996 the Respondent registered the domain name <assaabloy.com>. At this time the Complainant had not yet registered the trademark <ASSA ABLOY> in Sweden. However, the company ASSA ABLOY AB had been established and listed on the Stockholm Stock Exchange since November 1994 and the Complainants company name was well known both nationally and internationally at the time for registration. The Complainant was also the proprietor of more than one hundred trademarks for the word <ASSA> and <ABLOY>.

The Respondent is a company incorporated in Sweden. The Respondentís business concept is to register well-known company names, terms and trademarks as domain names. The Respondent currently owns more than 50 domain names reflecting well-known Swedish trademarks such as for example <assaabloy.com>. A list of the domain names is provided as Annex [H] to 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 corporation organized under the laws of Sweden which has registered many of the company 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 [I] to 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 [J] to 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 <assaabloy.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 <assaabloy.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 trademarked names <ASSA ABLOY>, <ASSA> and <ABLOY> have strong name recognition and is widely known as result of its substantial use in Sweden and in other countries all over the world. The Respondents practice is to trade on value of the well known company names, terms and 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 company name and trademarks 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 <assaabloy.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.

Finallay, Complainant has requested the Administrative Panel to issue that the contested domain name <assaabloy.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

  1. the domain name has been registered and is being used in bad faith.

The Respondent registered the domain name <assaabloy.com> on July 15, 1996. At this time the Complainant had not yet registered the trademark ASSA ABLOY. An exclusive right in a trademark can however also be required without registration when the mark has been established on the market. Since the Complainant has been established and listed on the Stockholm Stock Exhange since November 1994 a right to the trademark ASSA ABLOY was acquired prior to the Respondentís domain name registration.

The domain name <assaabloy.com> is identical with the trademark ASSA ABLOY and the company name ASSA ABLOY 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 rights by Complainant of an identical trademark, the identity between the dominating element ASSA ABLOY 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 rights to the trademark and its wide reputation in the word ASSA ABLOY, 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 <assaabloy.com> be transferred to the Complainant.

 


 

Jonas Gulliksson
Presiding Panelist

Dated: July, 4 2000