WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kraft Foods (Norway) vs. Fredrik Wide and Japp Fredrik Wide
Case No. D2000-0911
Complainant is Kraft Foods AS whose address is Johan Throne Holsts Plass 1,
N-0503 Oslo, Norway. Its contact details are: telephone number +47 22 04 44 73; fax number +47 22 04 44 88. The e-mail address to the contact person in the company is "firstname.lastname@example.org." Complainantís authorized representative is Jonas W. Myhre, Supreme Court Attorney, Hjort Law Office, PO Box 471, Sentrum,
N-0105 Oslo, Norway, with telephone number +47 22 47 18 00, fax number +47 22 47 18 18 and e-mail address "email@example.com".
Respondent is Mr. Fredrik Wide. In Network Solutionsī Verification Response (see below) his address is , is indicated as "JAPP A-112 Hatleberg, Bergen-Sandviken, Bergen-Sandviken 5041, Norge." In the Whois database the same address is given, with the telephone number +47 938 00373. According to Complainant, the Swedish Post Service has given his address as "Lockarpskioväg 52, S-238 41 Oxie, Sweden." Also, according to Complainant, the Swedish Telephone Directory Inquiries indicated his telephone number as +46 4 054 8902. The Complaint furthermore gives Respondents
e-mail addresses as "fwide@HATLEBERG.SIB.HL.NO" and "firstname.lastname@example.org".
2. The Domain Name and Registrar
The domain name at issue is "JAPP.COM" which is registered with Network Solutions Inc. Virginia, United States.
It transpires from the Complaint and its attachments that the registrar is Network Solutions, Inc.
3. Procedural History
A Complaint was received by the World Intellectual Property Organization Arbitration and Mediation Center (the Center) by e-mail on August 1, 2000, and in hardcopy together with exhibits on August 2, 2000. The same day the Center issued an Acknowledgement of Receipt and sent a Registrar Verification Request to Network Solutions, Inc.
On August 11, 2000, a Registrar Verification Response was received by the Center. It indicated
a) that Network Solutions had received a copy of the Complaint sent by Complainant
b) that Network Solutions is the Registrar of the domain name registration
c) that the Registrant is indicated as "JAPP (JAPP5DOM), A 112 Hatleberg Bergen- Sandviken, Bergen-Sandviken 5041, NO"
d) that the domain name is "JAPP.COM"
e) that the Administrative Contact, Billing Contact is "Wide, Fredrik (FW1699) fwide@HATLEBERG.SIB.HL.NO JAPP A-112 Hatleberg Bergen-Sandviken, Bergen-Sandviken 5041, NO + 47 938 00 073
f) that Technical Contact, Zone Contact is Hostmaster, TABNet (TH941) VerioHostmaster@VERIO.NET 5 Financial Plaza, Napa, CA 94558, 707 256-1999 (FAX) 707 256 1997
g) that Network Solutions 4.0 Service Agreement is in effect, and
h) that the domain name registrations JAPP.COM is in "Active Status."
The Whois Search Results attached to the Complaint indicate that the domain name was registered on March 14, 1999.
Having verified, on August 16, 2000, that the Complaint satisfied the formal requirements of the Policy and the Rules, a Notification of Complaint and Commencement of Administrative Proceeding was transmitted the same day by Post/Courier with enclosures a) to Fredrik Wide under his address in Oxie (mentioned above), b) to "Japp, Fredrik Wide under his mailing address in Hatleberg, Bergen-Sandviken (mentioned above) and, c) to Hostmaster Tabnet, 5, Financial Plaza in Napa, California (also mentioned above). Furthermore, Complaint without attachments was sent by facsimile to Hostmaster Tabnetīs fax number indicated above and to the two
e-mail addresses to Mr. Wide which have been indicated above; it was also sent to "email@example.com" and to "firstname.lastname@example.org". Furthermore, it was sent to Complainant and to the Internet Corporation for Assigned Names and Numbers (ICANN) and to Network Solutions, Inc.
The Mail Delivery Subsystem indicated on August 16, 2000, that "email@example.com" had not been found.
On August 31 and September 15, respectively, the Center received two communications from Complainant, concerning certain contacts which Respondent had with one of Complainantís subsidiaries. Those are further discussed below.
On September 15, 2000, the Center received a communication from Complainant containing a copy of a letter from the representative of Kraft Foods AS in Norway stating: "I address you to let you know that Fredrik Wide called us on August 14, 2000, to offer our Swedish company, Kraft Sverige AB to buy the japp.com domain for SEK 25.000. He also called us at Kraft Foods AS in the end of August to offer us the japp.com domain for the same amount (SEK 25000). On September 5, 2000, he called our Norwegian company Kraft Foods Norge AS and said it was a last chance to buy the domain, the price was SEK 10 000, -we told him that we will wait for a decision from WIPO."
Having received no response from Respondent, the Center on September 19, 2000, issued a notification of Respondent Default which was sent by e-mail to Respondentís e-mail addresses and were copied to Complainant.
Complainant requested the appointment of a Swedish Panelist, the reasons being, among others, that such a Panelist would know the Norwegian and Swedish languages and laws in the field concerned without risk of confusion due to translation of the documents. This request was communicated to Respondent who, however did not respond to Complainantís request in this regard.
On September 19, 2000, the Center invited Mr. Henry Olsson to be Sole Panelist in this case. Having received, on September 20, Mr. Olssonīs Statement of Acceptance and Declaration of Impartiality and Independence, it appointed on that same day Mr. Olsson as Sole Panelist in the case. The Projected Decision Date was set to be October 4, 2000.
The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the WIPO Supplemental Rules.
4. Factual Background
Complainant Kraft Foods AS is a wholly owned subsidiary of Kraft Foods Holding (Europe) GmbH, which is in turn a company in Kraft Foods International. Kraft Foods AS is the parent company for Nordic operational companies in Norway (Kraft Foods Norge AS, formerly A/S Freia), Sweden (Kraft Sverige AB, formerly Kraft Freia Marabou AB, and AB Estrella) and Denmark (Estrella A/S) and also owns part of Oy Estrella Ab in Finland.
The Swedish Company Marabou started the production of a chocolate bar in Sweden in 1946 and the bar was named JAPP from the same year. The Norwegian company A/S Freia started production of JAPP in 1949 and it became a great success. In Finland the JAPP bar was launched in the mid-1980s
The trademark JAPP has been registered as device marks and word marks in Norway, Sweden, Finland, Iceland, Germany, Latvia, Lithuania, Estonia, Belarus, Russia, European Union and Andorra. Complainant has to the Complaint attached registration certificates concerning these registrations. Most of these registrations are effected in the name of the older companies which are indicated within parenthesis above but which, according to Complainant, have now been assigned to Complainant as the present parent company of those companies. The trademark registrations are still in force.
As regards Respondent it appears from Network Solutionsī Verification Response that the Registrant for the domain name at issue is JAPP (JAPP5DOM) and that Mr. Wide is the Administrative and Billing Contact.
5. Parties Contentions
Complainant indicates, as regards the legal basis for the Complaint, that the Agreement between Registrant and MelbIT pursuant to which the domain name at issue was registered states that Registrant agrees to be bound by MelbIT Domain Name Dispute Policy which is incorporated by reference and made part of the Agreement. That Policy is the one approved by ICANN on October 24, 1999.
Complainant contends that Kraft Sverige AB (previously Kraft Freia Marabou AB) - who, as mentioned before is a wholly owned subsidiary of Complainant - registered the domain name JAPP.COM with Network Solutions Inc. on November 20, 1996, and paid the registration fee for the period until November 20, 1998. Thereafter, the Swedish company paid a renewal fee for the JAPP.COM registration until November 20, 1999. To support this statement, Complainant has submitted a copy of a receipt of January 22, 1999, relating to a payment of 35 USD to Network Solutions with reference to an invoice No 2793837. According to Complainant, Network Solutions has not given any notice that the payment did not secure renewal of the domain name registration of "JAPP.COM nor has any refund been made.
On March 14, 1999, the same domain name JAPP.COM was registered by Respondent using Verioīs domain name registration service (which enables registration on line). Section 2 of the Registration Agreement states: "We do not check to see whether the domain name you select, or the use you make of the domain name, infringes legal rights of others. We urge you to investigate to see whether the domain name you select or its use infringes legal rights of others, and in particular we suggest you seek advice of competent counsel." In the view of Complainant this warning in the Agreement gave Respondent a strong indication to make sure that the registration did not violate any other rights in the domain name.
Complainant alleges that JAPP is a well known mark in the Scandinavian countries, especially in Sweden and Norway; Respondent can, in the view of Complainant, hardly argue that he never heard of JAPP before and it would have been very easy for Respondent to check whether someone else had registered trademarks for JAPP.
Relations to National Law
Complainant contends that the registered trademark JAPP is governed by Norwegian and Swedish trademark and marketing law; Respondent is Swedish and was at the time of the registration resident in Norway and thus was legally obliged to make due consideration of Complainantís JAPP mark before selecting and registering the domain name JAPP.COM. To support the statement concerning the protection which the trademark JAPP would have, Complainant has invoked provisions in certain Norwegian Acts. Thus, under Section 4 of the Norwegian Trademarks Act of 1961 the trademark owner is granted an exclusive right in his mark to the effect that no one other than the holder has the right to use, in the course of trade, the same sign on his goods; this applies regardless of whether the sign is used on the goods or their packaging, in advertising, in business documents or in any other way, including the use of it in the form of a spoken word, and this regardless of whether the goods are intended to be sold or offered in any other way in this country or abroad, or imported into this country. Complainant has also invoked Section 1 of the Norwegian Marketing Act of 1972. This provisions contains a prohibition against acts or behavious in the course of trade that is in conflict with good business practices in the relationship between business people or which is unfair in relation to consumers or which is otherwise in conflict with marketing practices.
Complainant alleges that the expression "in the course of trade" which is used in both legislative instruments has been interpreted in a wide manner so that a situation where a person (Respondent) offers the domain name for sale to another person (Complainant) would fall within the prohibition.
To support his contentions concerning the legal protection of the trademark JAPP Complainant has submitted unofficial translations of the relevant Sections in the Norwegian Acts mentioned above and also of the corresponding provisions in the Swedish Acts.
As regards the legal protection of the trade name JAPP Complainant also invokes Article 8 of the Paris Convention for the Protection of Industrial Property according to which: "A trade name shall be protected in all the countries of the Union without the obligation of filing or registration, whether or not it forms part of a trademark."
As a conclusion of the reasoning in this part of the Complaint, Complainant alleges that there is no indication that Respondent has done anything to investigate and/or made any consideration as to whether JAPP.COM would infringe legal rights or others and that he has thus infringed national law protecting Complainantís trade mark registrations.
Relations to the Policy
Complainant contends that, as shown in the attachments, it has registered the trademark JAPP both as a word mark and as a device mark in several countries, including Norway and Sweden; the domain name JAPP.COM is identical to the trademark except the addition of the word "COM" as is shown in at least one earlier case before a Panel the addition "COM" is an irrelevant distinction since it is an appendage which is only meant to indicate that the domain name, at least in principle, is intended to be commercial. To support this Complainant has submitted a decision of a Panel in an earlier case (D2000-0418).
Complainant contends that there is no relation between Complainant and Respondent and Respondent is not a licensee of Complainant, nor has he otherwise obtained an authorization to use Complainantís trademark. There is nothing that associates or connects Respondent to JAPP; he could have chosen any domain name if his intention was to create his personal web site. This indicates that Respondent had no legitimate interests in the name JAPP.
From these circumstances follows, according to Complainant, that Respondent has no legitimate interest in respect of the domain name.
As regards Respondentís bad faith, Complainant first contends that the fact that Respondent choose to register a well known mark to which he has absolutely no connections or rights indicates that he did not have good faith when registering the domain name JAPP.COM.
The domain name at issue does not lead to any real/active website or to any other on-line presence but to a web site which is practically empty and does not serve any other purpose or function except indicating that the domain name JAPP.COM is taken; Respondent has not contributed or added anything to the web site which is a standard Verio designed site. Complainant contends that the Verio commercial says "Welcome to my Future Website" which could indicate that a site is under construction; however, the site has been unchanged since the domain name at issue was registered in March 1999. There is, according to Complainant, absolutely no indication that Respondent is intending to create a website under the domain name at issue. This in itself may indicate bad faith due to the inactivity of Respondent. Complainant refers in this respect to a decision in a Panel case this year (D2000-0003).
The fact that Respondent has not taken the web site into use indicates that the domain name at issue was registered in order to prevent Complainant from reflecting the mark in a corresponding domain name; Respondent has engaged in a pattern of such conduct by refusing to cooperate and to reply to Complainantís letters and e-mails. This also indicates that the domain name was registered primarily for the purpose of disrupting Complainantís business. This is in itself damaging for the business of Complainant who has made plans for the use of JAPP.COM in its marketing of JAPP internationally. Due to domain name registration rules in the Nordic countries, it is not been legally possible for Complainant to register a national domain name with a corresponding web site for JAPP.NO because one organization/entity is allowed to register only one domain name registration under the country domain. Complainant and its subsidiaries have already registered domain names which correspond to the company names and have accordingly not been in a position to register another domain name - JAPP - under the Nordic country domains. It is therefore very important for Complainant that its trademark JAPP can be reflected in a corresponding international domain name.
Complainant alleges that Respondent registered JAPP.COM in order to exploit the goodwill and marketing value associated with the well-known trademark JAPP. The facts indicate that the domain name was registered primarily for the purpose of selling the domain name registration to Complainant for valuable consideration in excess of the domain name registrantís out-of pocket costs directly related to the domain name. Complainant has offered to Respondent to cover all his expenses in relation to the registration of the domain name and not to initiate any legal proceedings if he agrees to transfer the right to Complainant. Respondent has, however not been willing to make such a transfer unless Complainant agrees to pay 50000 USD; Complainant refers in this respect to a copy of an e-mail from Respondent to Complainant of March 30, 2000. This mail correspondence is in Norwegian (question from Complainantís representative whether Respondent is willing to sell the domain name at issue and, if so, for which amount) and Swedish (reply from Respondents e-mail "firstname.lastname@example.org" stating - in rough translation - "Thank you for interest shown: I am willing to sell the Japp.com.domain for USD 50 000 so that I can instead buy a domain consisting of two letters; however, I reserve the right to withdraw if I do not hear from you in the nearest future. Kind regards Fredrik Wide." As mentioned above under "Procedural History" Complainant has also submitted copies of a letter indicating that Respondent contacted Complainant and one of its Swedish subsidiaries to offer the domain name at issue for SEK 25000 and 10000 respectively.
According to Complainant, the fact that Respondent has offered to sell the domain name to Complainant is in itself indicating bad faith on the part of Respondent.
Taken together, the elements submitted under this heading indicate, according to Complainant, that the domain name JAPP.COM should be considered as having been registered and used in bad faith, as stated in paragraph 4 (a)(iii) of the Policy.
Complainant contends that all three requirements in Paragraph 4. a of the Policy are fulfilled and requests that, in accordance with Paragraph 4.b (i) of the Policy and for the reasons elaborated on above, the Panel issue a decision ordering that the domain name JAPP.COM be transferred to Complainant.
Complainant has, in accordance with Paragraph 3.b (xiii) of the Rules, agreed to submit, only with respect to any challenge that may be made by Respondent to a decision by the Administrative Panel to transfer or cancel the domain name at issue, to the jurisdiction of the courts where Respondent is located, as shown by the address given for the domain name holder in the concerned Registrarís Whois database on July 31, 2000, which is the time of submission of the Complaint to the Center. Accordingly, the jurisdiction that applies to the dispute is Norway, and any possible future legal proceedings regarding this matter will be initiated before a Norwegian Court.
Respondent has not submitted any Response and is in Default.
6. Discussions and Findings
Rule 15 of the Rules prescribes that the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
The Verification Response shows the Registrant is JAPP (JAPP5-DOM) with the same address as Mr. Wide who is mentioned as the Administrative and Billing Contact for the domain name. The e-mail correspondence of March 9 and 30, 2000, between Complainant and Mr. Wide and later alleged offers to sell the domain name to Complainant indicate that Mr. Wide obviously is acting for the domain name at issue. The Panel considers that Mr. Wide is be Respondent in this case relating to the domain name JAPP.COM and draws the conclusion that the Complaint with attachments have been properly communicated to him.
In the case of Default by a Party, Rule 14. b of the Rules prescribes that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, these Rules, the Panel shall draw such inferences therefrom as it considers appropriate. In this case Respondent has not submitted any Response and consequently, despite the possibility given, has not contested any of the contentions by Complainant. The Panel will therefore have to operate on the basis of the factual statements contained in the Complaint and the documents available to support these contentions.
Applied to this case, Paragraph 4.a of the Policy directs that Complainant must prove each of the following:
a) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
b) that Respondent has no rights or legitimate interests in the domain name; and
c) that the domain name has been registered and is being used in bad faith.
In the following part of the decision, the Panel discusses each of these elements.
a) Identity or Confusing Similarity
The domain name at issue is "JAPP.COM"
The domain name incorporates the trademark JAPP and is thus almost identical to the trademarks and service marks JAPP which have been registered and are now - according to the uncontested evidence to this effect produced by Complainant - being owned by Complainant. The only difference is that the domain name includes the suffix COM. As has been stated in several previous Panel decisions this suffix is meant to indicate, at least in principle that the domain name is intended to be commercial. In the view of this Panel this is an insignificant distinction which does not change the likelihood of confusion.
On the basis of these findings and due to the fact that the allegations and statements of Complainant are undisputed, the Panel considers that the domain name registered by Complainant is confusingly similar to the trademarks in which Complainant has rights.
b) Rights or Legitimate Interests
Complainant has not licensed or otherwise authorized Respondent to use Complainantís trademarks and there is no relationship between Respondent and Complainant.
Complainant has a number of registrations in different countries and also a registration with the European Community trademark registration of the mark JAPP for goods and/or services.
Respondent has not demonstrated any circumstances to show why he has chosen the name JAPP - which is, at least in Sweden, a fairly well known mark for chocolate bars - as his domain name. By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to Paragraph 4 c. of the Policy, any rights or legitimate interests in the domain name.
Therefore, on the basis of the arguments and the evidence brought by Complainant, the Panel considers that Complainant has sufficiently established that Respondent has no right or legitimate interest in the domain name chosen.
c) Registration and Use in Bad Faith
To show that bad faith exists, Complainant has to present evidence that such bad faith exists in at least one of the situations mentioned in Paragraphs 4.b (i) to (iv) of the Policy.
Complainant has contended that the elements shown and the evidence submitted suggest that the domain name registration at issue has been registered and is being used in bad faith. The contents of those contentions are shown more in detail above. Thus, the fact that Respondent chosen to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue. Furthermore Complainant contends that the domain name does not lead to any real/active web site or to other on-line presence and that Respondent has not added anything to the rather standard Verio web site since the registration of the domain name at issue was effected in March 1999; this inactivity of Respondent may in itself indicate bad faith: that fact rather indicates that the domain name was registered in order to prevent Complainant from reflecting the mark in a corresponding domain name and to exploit the goodwill and marketing value associated with the mark JAPP. According to Complainant, the elements presented in the case indicate that the domain name was registered primarily for the purpose of selling the domain name registration to Complainant for valuable consideration in excess of the Registrantís out-of pocket costs directly related to the domain name. Respondent has refused to accept an offer to this effect but has been willing to sell the mark for a far higher price.
By not submitting a Response Respondent has failed to invoke any circumstance which could dispute Complainantís contentions as regards bad faith. On the contrary, some of those contentions are supported by written evidence, in particular the e-mail correspondence concerning the possible sale of the domain name at issue for 50 000 USD and also by later alleged offers to sell the domain name to Complainant, which allegations have remained uncontested by Respondent.
In this situation the Panel has basically to operate on the basis of the circumstances presented by Complainant and left uncontested by Respondent. As regards the issue of use in bad faith, the Panel attaches a special importance to the fact that Respondent has shown no activity in order to actually use the domain name for the purpose of creating a web site or otherwise link it to any on-line presence.
On the basis of the circumstances presented and the evidence submitted, the Panel concludes that in fact
i) the circumstances in the case indicate that Respondent has registered the domain name primarily for the purpose of selling the registration to Complainant for a valuable consideration in excess of documented out-of-pocket expenses directly related to the domain name,
ii) the domain name has been registered in order to prevent the owner of the trademark JAPP from reflecting the mark in a corresponding domain name and that the circumstances in the case prove that Respondent has engaged in a pattern of such conduct.
Consequently, the Panel finds that the circumstances indicated in Paragraph 4.b.(i) and (ii) of the Policy are present. On the other hand, the Panel does not consider that the domain name has been registered primarily for the purpose of disrupting the business of a competitor as mentioned in Paragraph 4.b.(iii).
On the basis of this finding the Panel finds that there is conclusive evidence that the domain name JAPP.COM was registered and is being used in bad faith as stated in Paragraph 4.b. of the Policy.
In the light of the foregoing. the Administrative Panel finds that the domain name JAPP.COM is confusingly similar to Complainantís trademarks, that Respondent has no rights or legitimate interests in respect of the domain name and that Respondents domain name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4.i of the Policy and in accordance with the request by Complainant, the Panel requires that the domain name JAPP.COM be transferred to Complainant.
Dated: September 23, 2000