WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Indiska Magasinet AB v. P & G
Case No. D2000-0542
1. The Parties
The Complainant is Indiska Magasinet AB, a corporation organized under the laws of Sweden, having its principal place of business at Box 273 17, 102 54 Stockholm, Sweden. The Respondent is P & G, the legal status which is not clear. The address of the Respondent as contained in the domain name registration is c/o Pantzar, Karlavägen 54, 114 49 Stockholm, Sweden.
2. The Domain Name and Registrar
The domain name at issue is <indiska.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 June 2, 2000 and in hardcopy on June 7, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated June 11, 2000. An amendment to the Complaint was received by the WIPO Center on June 15, 2000.
On June 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 Registrar’s 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 June 15, 2000 NSI confirmed by e-mail that NSI was in receipt of the Complaint sent to NSI by the Complainant, the domain name <indiska.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.
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 June 22, 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 June 23, 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 July 12, 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 NSI’s WHOIS confirmation, as well as to <email@example.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 July 14, 2000 having received no Response from the designated Respondent the WIPO Center transmitted to the parties a Notification of Respondent Default. On July 27, 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
Complainant is the owner of the trade mark "INDISKA". Various Trade Mark Offices around the world have issued the following trade mark registrations and trade name registrations (hereafter the INDISKA marks) to Indiska:
Trade mark Classes Registration No. Date Registered
INDISKA (SE) 18,24, 25 232543 1992-04-16
INDISKA (AU) 18, 24, 25 672560 1995-09-14
INDISKA (US) 18,24,25 2058757 1997-05-06
INDISKA (EU) 14,16,18, 42853 1998-03-31 20,21,24,25
INDISKA (DK) 18,24,25 6540/1989 1989-11-10
INDISKA (NO) 14,16,20,21 188471 1998-02-19
INDISKA (NO) 18,24,25 146796 1991-09-12
Trade name Organisation No. Date Registered
AB Indiska Utställningen 556008 – 5424 1908 – 11 - 19
Name changed to:
Indiska Magasinet 556008 – 5424 1980 – 02 – 04
True and correct copies of the printouts of said registrations from the various registries are attached to the Complaint as Annex [ C] : 0-9.
In connection with the INDISKA mark, Indiska has established an Internet website comprised of the INDISKA mark, INDISKA.SE, and has also registered its trade name INDISKA MAGASINET as the domain name INDISKAMAGASINET.COM, for which a web site is under construction. The INDISKA.SE website today allows computer users to inform themselves of Indiska’s contact details. Printout is attached to the hard copy of the complaint as Annex [ F] .
5. Parties’ Contentions
Complainant contends that the relevant part of the domain name in issue, INDISKA.COM, is "INDISKA", and that this is clearly identical to Complainant’s various trade mark registrations of INDISKA.
The INDISKA mark is of tremendous value to Indiska, and its importance cannot be emphasized enough. Ever since the company was introduced on the market, in 1901, the name of the company then being "Indiska Utställningen", Complainant has used the name INDISKA on all its products and services. See declaration by Åke Thambert, attached to the hard copy of the Complaint as Annex [ D] ; Share holder letter of Indiska Utställningen and copies of advertisements, attached to the Copy of the Complaint as Annex [ E] . Furthermore, Complainant registered the name as a trade mark for the first time in 1992. Since then, it has registered 6 other trade marks around the world for INDISKA. Indiska has spent substantial time, effort and money advertising and promoting the INDISKA mark throughout Sweden and Denmark. As a result, the INDISKA mark has become famous within these two countries and Indiska has developed an enormous amount of goodwill in the mark.
Courts have recognized that consumers expect to find a company on the Internet at a domain name address comprised of the company’s name or mark. See Panavision Int’l, L.P.v. Toeppen, 141 F.3d 1316 (9th Cir.1998) (A customer who is unsure about a company’s domain name will often guess that the domain name is also the company’s name… [ A] domain name mirroring a corporate name may be a valuate corporate asset, as it facilitates communication with a customer base"). Thus, consumers expect to find an Indiska website at INDISKA.COM. Instead, consumers who connect to INDISKA.COM discover that there is no such website. This creates confusion among the consumers and may result in economic loss for Indiska.
Respondent has no connection or affiliation with INDISKA, and has not received any license or consent, express or implied, to use the INDISKA mark in a domain name or in any other manner. Respondent has no legitimate interest in INDISKA.COM and has made no good faith or fair use of the domain name INDISKA.COM.
Respondent has registered and is using the domain name in bad faith, as evidenced by the following: (1) P&G registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name (see Policy Paragraph 4(b)(i)) and (2). P&G has engaged in a pattern of conduct that indicates that it registered the domain name to prevent the owner of the mark from reflecting the mark in a corresponding domain name (see id. Paragraph 4(b)(ii)).
Respondent has registered INDISKA.COM for the purpose of selling the domain name to Indiska.
The present owner of the domain name registered INDISKA.COM on December 6, 1999. (Before that, the domain name was registered by somebody else).
Complainant contacted Respondent on December 21, 1999 per telephone, asking if the Respondent was willing to transfer the domain name. Respondent answered that they were willing to transfer the domain name, if only Complainant paid a suitable price. Later on the same day, Complainant sent Respondent an email asking to what price Respondent would consider a transfer of the domain name. Respondent replied to the email with an offer of selling the domain name for SEK 150 000 to Complainant. Complainant did not accept the offer, but offered Respondent SEK 5000 – 7000 for a transfer. Respondent did not answer to this email, because he thought that the price was far too low, see correspondence between the parties, attached as Annex [ H] to the Complaint.
Respondent has also registered other Swedish trade marks as domain names. One of these is SVT24, being a registered trade mark for digital TV in Sweden, and the owner of the trade mark being Sveriges Television AB (Swedish Television AB). The trade mark was applied for in 1997, and Respondent registered the domain name in November 1998. It is obvious that Respondent registered this domain name in bad faith, especially taking into account all the advertising carried out by the trade mark owner for the digital TV service. See copy of the trade mark registration certificate attached as Annex [ I] to the Complaint, and a Whois printout of the domain name registration, attached to the Complaint as Annex [ J] .
Finallay, Complainant has requested the Administrative Panel to issue that the contested domain name <indiska.com> shall be transferred to Complainant.
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
The domain name <indiska.com> is identical with the trademark INDISKA registered by the Complainant.
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 INDISKA in the corporate name and the domain name at issue, the fact that it is highly improbable that the Respondent has selected the name without first having noticed the Complainant´s rights to the trademark and the fact that the Respondent shortly after the registration upon request to transfer the domain name indicated his willingness to transfer the domain name for SEK 150 000, that the domain name has been registered and 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.
In view of the above circumstances and facts the Panel decides, that the domain name registered by the 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 Respondent’s 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 <indiska.com> be transferred to the Complainant.
Dated: August 9, 2000