WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sudnif S.A. v. Tulle
Case No. D2000-0807
1. The Parties
The Complainant in this administrative proceeding is Sudnif S.A., incorporated in Switzerland and having its principal place of business in Switzerland. The Complainant’s authorized representative in this administrative proceeding is Attorney-at-law, Stefan Widmark, Advokatfirman Vinge KB, Stockholm, Sweden.
The Respondent in this administrative proceeding is according to the NSI-database Tulle, 173 Laffayette Str. Apt. 202# New York, NY 10013 with a Contact Address at Kasper and Victoria Lannartsson, Bondesonsgatan 8, 112 52 Stockholm. Respondent´s authorized representative is Attorney-at-law Johan Sjöbeck, L.A. Groth & Co. KB, Stockholm Sweden.
2. The Domain Name and Registrar
This dispute concerns the domain name findus.com .
The registrar with which the Domain Name is registered is Network Solutions Inc.,
Huntmar Park Drive, Herndon, VA, U.S.A.
3. Procedural History
A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on July 17, 2000, and the signed original together with four copies was received by WIPO Center on July 18, 2000. The WIPO Center sent an Acknowledgment of Receipt to the Complainant, dated July 20, 2000.
On July 20, 2000, a Request for Registrar Verification was transmitted to the Registrar. The Registrar confirmed on July 21, 2000, the information in the request and forwarded the requested WHOIS details, and confirmed that the Uniform Domain Name Dispute Resolution Policy was in effect and stated that the domain name was on "Active" status.
The policy in effect at the time of the registration of the domain name at issue is Network Solutions´5.0 Service Agreement, which incorporates the general Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN"). There is no evidence that the Respondent ever requested that the domain name at issue be deleted from the domain name database. Accordingly, the provisions of the Policy bind the Respondent.
The assigned WIPO Center Case Administrator completed a Formal Requirements Compliance Checklist on August 8, 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 fee for a single-member Panel was paid on time and in the required amount by the Complainant.
No formal deficiencies having been recorded, on August 8, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, the Registrar and ICANN), setting a deadline of August 27, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by the required means.
The Respondent filed a response on August 23, 2000.
On September 6, 2000, in view of the Complainant’s designation of a single panelist the WIPO Center invited Mr. Knud Wallberg to serve as a panelist in Case No. D2000-0807, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.
Having received, Mr. Knud Wallberg’s Statement of Acceptance and Declaration of Impartiality and Independence, on September 13, 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 September 26, 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 Response, the Policy, the Uniform Rules and the WIPO Supplemental Rules.
4. Factual Background
The Complainant is the owner of the trademark FINDUS, which is registered and used in a number of countries for frozen food products. Complainant is thus the holder of the Swedish trade mark registration FINDUS®, reg. no. 75272, which covers and is being used for i.e. frozen raw fish, frozen coated fish, frozen vegetables, frozen meat, frozen potato products and frozen prepared dishes.
The FINDUS® brand is one of Europe's leading European frozen food brands, with its origins in the Nordic region. The brand FINDUS® formerly belonged to Societé des Produits Nestlé S.A., a subsidiary of Nestlé S.A. Recently the Investment Company EQT acquired the part of the Nestlé Group’s business that works under, inter alia, the FINDUS® brand ("the Findus Group"). The trademark registrations for the brand FINDUS® have after the acquisition been placed with the Complainant. The Complainant then licenses a right to use the brand FINDUS® to the respective local Findus Group company. The business conducted under the FINDUS® brand includes prepared meals, pizzas, recipe dishes, crêpes, vegetables and fish. The Findus Group employs almost 3,500 full time employees.
No detailed material is provided about the Respondents business activities, apart from the information mentioned below under 5.
5. Parties’ Contentions
This Complaint is based on the following grounds:
The Complaint is the owner of the Swedish trademark registration FINDUS® (reg. no 75272) as well as registrations in other countries around the world. The FINDUS® brand is one of Europe's leading European frozen food brands, with its origins in the Nordic region.
The Domain Name is identical to the Complainant’s trademark FINDUS®.
The Complainant is unaware of any rights or legitimate interests of the Respondent in respect of the Domain Name.
In the beginning of 1997, a representative from the Internet Consultant Company Propello Internet AB was in contact with the Respondent regarding the domain name. At that time the consultant was acting on behalf of the Findus Group with the purpose of trying to acquire the domain name. Before contacting the Respondent the consultant had noted that Respondent had registered both the domain name in question and another domain name which was also equivalent to another famous Swedish brand. At this point in time nothing was mentioned about a search engine. According to the consultant he and Respondent reached an agreement on the transfer of the Domain Name to the Findus Group for a compensation of SEK 2,000 (approximately USD 230). The consultant sent a confirmation mail but never received a response from the Respondent.
Recent contacts between the parties has revealed that the Respondent claims that it registered the domain name findus.com with the aim of using it as a domain name for a search engine and that this plan was present already at the time of the previous contacts in the beginning of 1997. It would however take some time until they were ready to launch the search engine but the hope was that it would be during the year 2000. In spite of this the Respondent stated that they could be interested in selling the Domain Name for the right amount. As regards the price the respondent said that the Domain Name ought to be worth around SEK 1 million (approximately USD 115,000).
On March 19, 2000, the Complainant sent a letter to the Respondent offering SEK 100,000 (approximately USD 11,500) for the domain name. Further, the Respondent was asked to send information regarding the claim that the Respondent was developing a search engine. The demand for such information was motivated with the fact that Findus questioned this claim. In the letter Findus claimed to have legal grounds for challenging the Respondents registration of the Domain Name.
In an e-mail of March 23, 2000, a representative of the Respondent replied to this letter and denied any wrongdoing but confirmed that the Respondents were willing to sell the domain name. The day after the said representative sent an additional e-mail underlining that the Respondents main interest was to create a search-engine under the same findus.com.
According to the Complainant the above described facts clearly shows not only that the Domain Name is identical to a trademark in which the Complainant has rights but also that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith.
The Respondents do not dispute the fact that the domain name in question is identical to the Complainant’s trademark save for the TLD .com. However, the Respondents consider this to be a case of reversed domain name hijacking. The trademark has a different commonly used meaning in another language, i.e. English and it would be unfair to allow the Complainant to monopolize this phrase in the English speaking on-line community.
Regarding the alleged agreement from 1997, the Respondents are of the opinion that a very aggressive representative of the then owner of the FINDUS mark pressed them into accepting the proposal. The Respondents were at that time planning on moving to the USA. Therefore, before leaving, the Respondents did contact the representative, in order to clarify and solve the problem with the domain name. The respondents explicitly asked if Nestlé still wanted the domain name. However, the representative replied that they no longer were interested in the domain name.
As to the later contacts between the parties to this case the Complainant's representative approached the Respondents. The representative kept asking the Respondent how much money he would consider selling the domain name for. The Respondent told the representative repeatedly that the domain name was not for sale, as he was planning on developing a search engine together with others. Despite this answer, the representative kept pressing the Respondent to name a sum that he would consider selling for. The Respondent responded that the domain name was not for sale, but if he had to put a price tag on the domain name, he simply said that the price would have to be around one million SEK. The fact that, when approached by someone on behalf of the Complainant, the Respondents agreed to sell the domain name for an imaginary sum is not evidence that the Complainants registered the domain name primarily for the purpose of selling it to the Complainant. Case law supporting this view is Case D2000-0089 from April 3, 2000, at 7(2) "the fact that, when approached by someone on behalf of the Complainant, Source Internet was agreeable to selling the domain name for $1500 is not evidence that source Internet registered the domain name primarily for the purpose of selling it to the Complainant."
The Respondents stress that the fact that the legal representative did not completely grasp the Internet business idea of the Respondents and had to send another clarifying e-mail should not be to the detriment of the Respondents.
The Respondents also oppose the allegations by the Complainant that the domain name has been registered and used in bad faith. Firstly, it would be fair to say that back in 1996, when the Respondents registered the domain name, the rules regarding domain names where not as clear as they are now. However, the Respondent registered the domain name in order to set up an English search engine called "FIND US". The business idea was to initially use other already developed free search engines in order to attract visitors and then sell banner ads in order to make enough profit so that it would be possible to buy or develop a search engine of their own, in order to expand the business from there. Since one of the Respondents has a full-time job since 1985, dealing with e-commerce related issues, the business plan is realistic and possible to fulfill. However, developing such an on-line search service in solely leisure time is time-consuming. Presently, the website connected with the domain name contains only a simple but fully functionally search engine. It may be simple, but it was posted there long before the Complainant’s representative contacted the Respondents this year. During the years, the Respondents have developed a business relationship with some other entities. Using their combined skills, these people, together with the Respondents, have planned to take the development of the search engine "FIND US" a step further during year 2000. The Respondents legal representative has however advised the Respondents not to develop the site further until the matters are resolved with the Complainant.
Regarding the choice of domain name, the Respondents feel urged to stress the fact they chose to register the domain name because it was descriptive for services in relation to search engines and that the registration was made with the intent of establishing an on-line search engine. It goes without saying that the word "findus" means, "find us" when pronounced in the English language. The usage of similar descriptive names is a common feature for search engines around the world. There are numerous examples of similar names for search engines of which can be mentioned:
www.findus.net, www.findushere.com, www.findit.com, www.findlaw.com, www.findfast.com, www.usfind.com, www.usafind.com, www.findmail.com, www.searchus.com
There also exist numerous domain names similar to that of the Respondent’s domain name:
www.find-usa.com, www.find-us.com, www.findingus.com, www.usfinder.com, www.usafind.net, www.usfind.net, www.findsearch.com, www.findusnow.com, www.foundus.com, www.finduseasy.com, www.gofindus.com, www.fastfindus.com, www.homefindus.com, www.efindus.com, www.howtofindus.com, www.findus.org.
The Respondents thus contend that "findus" is a term commonly used on the Internet, either for search related services or for describing the geographical location of a business. When building websites, it is common to name the page containing such geographical information something similar to "/findus.html". If one is to search for "findus" on any search engine, one will end up with thousands of hits containing this word. It is an interesting fact that nearly all of these "findus words" have the meaning "Find Us" i.e. some sort of description of how to find someone, often the company behind the website.
The fact that the Complainant did not register "findus domain names" (for example "findus.net", "findus.org", "findus.nu", "findus.de") even though these sites were available for registration, is an indication of reversed domain name hijacking. For example, "findus.net" was available for registration until January 19, 1999, "findus.org" was available for registration until June 17, 1999, and "findus.nu" was available for registration until March 5, 1999. Not until March 16, 2000, did the Complainant register the Swedish domain name "findus.se". Obviously the application for this Swedish domain name was made a few weeks prior to this date. As stated in the complaint, the Complainant contacted the Respondents on March 9, 2000, and tried to buy the domain name "findus.com" and on March 19, 2000, (three days after the Swedish registration was accepted by NIC-SE) the Complainant sent a letter to the Respondents. This pattern suggests that the Complainant, having applied for a Swedish domain name suddenly felt an urge to also be the owner of another TLD. Had the Complainant sincerely wanted to reflect the trademark in a domain name and register "findus" under another TLD such as .net, .org, or .nu, etc. this opportunity had been possible for a very long time. One could argue that such failure to realize until too late, that the Internet is a vast and important market, could be considered a fatal flaw in the Complainant’s case. Therefore, the Respondents are of the opinion that the Complainant is trying to utilize the UDRP system in an unfair way in order to acquire an easy-to-remember and attractive domain name from someone else.
The Complainant has not produced any evidence of facts indicating that the Respondents registered or used the domain name in bad faith. The domain name has a descriptive meaning in the English language and the Respondents have sincere plans to expand the existing search engine together with other skilled people in order to create a valuable future business and make profit from advertising. The on-line community consists mainly of English speaking persons, and the Respondents believe that the words "findus" mean "find us" to a majority of the on-line community, something that a plethora of websites and on-line searches suggest. Furthermore, the time and effort the Respondents have taken to respond to the Complaint indicates that there is a bona fide interest in the domain name.
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.
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) that the domain name has been registered and used in bad faith.
1) Similarity with Complainants rights
It is undisputed between the parties and is also evident that the distinctive part of the domain name is identical to the Complainant’s distinctive and well-known trademark FINDUS.
2) Respondents rights or legitimate interests and 3) Bad faith
The Complainant has not licensed or otherwise permitted Respondent to use its trademark or to apply for any domain name incorporating the mark.
The Respondent has not demonstrated to have any underlying rights to the domain name neither as a trademark, a trade name or a company name.
The question is then whether or not the Respondent has proven to have any other legitimate interest in the domain name, cf. Paragraph 4(a)(ii) and 4(c) of the Policy. In this respect the Panel notes the following:
The domain name was registered in 1996. The Respondent claims that the intention right from the start was to create a web site with a search service, and that the domain name reflected this fact since it should be construed as the English words "find us". The Respondent has not furnished any concrete evidence showing that this is actually the case. On the other hand the claim can not be dismissed prima facie. The website under the disputed domain name at this point in time actually contains a search service called FIND US.COM. The Panel has also taken note of the fact that many other web sites and the corresponding domain names contains the word FINDUS in a context where it is quite apparent that the word must be construed as a contraction of the two words "find" and "us".
On this background the Panel finds that it can not exclude the possibility that the Respondent may have a legitimate interest in the domain name, but that this question is closely interrelated to the question of bad faith, cf. Paragraph 4 (a) (iii) and 4 (b) of the Policy.
As to the question of bad faith it is undisputed that the former owner of the trademark had been in contact with the Respondent in 1997, and that the Respondent at that time expressed a willingness to sell the domain name to the owner. Some of the specific circumstances about these contacts are, however, disputed, and the Panel wants to emphasize that it is not in a position to draw any final conclusion as to how these contacts were conducted. It is however, not in itself an act of bad faith to register and sell domain names. Bad faith only occurs if the domain name infringes rights belonging to someone else, and if the registration is made with the intention of somehow disrupting or damaging the business of the holder of the said right. If the Registrant has a legitimate interest in the domain name but nevertheless is willing to sell it to someone else who also has a legitimate interest in the domain name this can not be considered as an action performed in bad faith.
It should also be noted that apparently no further contacts between the parties took place from 1997, until the beginning of March 2000, where the Complainant again approached the Respondent. There is thus no evidence that the Respondent on its own initiative has actively tried to sell the domain name to the Complainant.
The overall conclusion of the Panel is therefore that all the preconditions for cancellation or transfer of the domain name according to Paragraph 4 (a) of the Policy are not fulfilled.
In view of the above circumstances and facts the Panel finds that the domain name registered by Respondent is confusingly similar to the trademark in which the Complainant has rights. The Respondent has, however, demonstrated that he may have legitimate rights to the domain name, and the Panel finds that it can not be clearly established that the domain name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy and 15 of the Rules, the Panel concludes that the registration of the domain name findus.com shall not be transferred to the Complainant.
Dated: September 25, 2000