WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kvaerner ASA vs. Brynjar Steinsøy
Case No D2001-0216
1. The Parties
Complainant is Kvaerner ASA, P.O. Box 169, N-1325 Lysaker, Norway. Complainantís authorized representative in this case is Schjodt Law Firm, attention Guru W. Wanvik, P.O Box 2444 Solli, N-0201 Oslo, Norway.
Respondent is Brynjar Steinsøy, Eikeveien 28, N-4315 Sandnes, Norway. Respondentís authorized representative in this case is Arvid Sjødin, Law Firm Advokatfirma Sjødin, P.O. Box 860, N-4004 Stavanger, Norway.
2. Domain Name and Registrar
The domain name at issue is "www.kvearner.com" The Registrar is Network Solutions, Inc. (NSI), 505 Huntmar Park Drive, Herndon, Virginia, United States.
3. Procedural History
The World Intellectual Property Organization Arbitration and Mediation Center (the Center) received a Complaint from Complainant by e-mail on February 9, 2001, and in hard-copy form on February 14, 2001.
Having verified that the Complaint complied with the formal requirements, the Center issued, on February 23, 2001, a Notification of Complaint and Commencement of Administative Proceeding, which was notified to Respondent and to Complainant as well as to the Registrar and to ICANN.
On February 21, 2001, the Center issued a request for Registrar Verification and received a Verification Response on February 22, 2001.
According to that Response:
- NSI is in receipt of the Complaint sent by Complainant
- NSI is the Registrar of the domain name at issue
- NSI's WHOIS data base shows the Registrant to be: Brynjar Steinsoey Domainname trading, Eikesveien 28, Sandnes, 4300, NO
- the domain name is: "KVEARNER.COM"
- Administrative Contact, Billing Contact is: Steinsoey Brynjar (BS13448) "bsteins@NMA.NO", BS Domainname Trading, Eikeveien 28, Sandnes 4300, NO
- Technical Contact is: Center, Network Operations (CB645) hostmaster @NETCORPS.COM, 2261 Morello Ave, Suite C, Pleasant Hill, CA 94523
- NSI's Service Agreement Version 4 is in effect, and
- The domain name registration is in active status.
The Center received a Response from Respondent on March 15, 2001, and an Acknowledgement of Receipt was issued the same day and communicated to the Parties.
The Center then invited Mr. Henry Olsson to serve as Sole Panelist in the case and received, on March 22, 2001, Mr. Olsson's Statement of Acceptance and Declaration of Impartiality and Independence. The same day the Center appointed Mr. Olsson as Sole Panelist and issued a Notification of Appointment of Administrative Panel and Projected Decision Date which was duly communicated to the Parties. The Projected Decision Date was April 5, 2001.
The Sole Panelist considers that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the WIPO Supplemental Rules.
4. Factual Background
Complainant Kvaerner ASA is a public limited company of Oslo, Norway, with a London-based international headquarters. It has an annual revenue of approximately USD 6 billion and a permanent staff of about 35, 000 in nearly 35 countries in Europe, Asia and the Americas. The company is basically an Anglo-Norwegian engineering and construction group. It is an industrial technology provider of solutions to engineering, contracting and construction challenges. It has two core business areas, namely E&C, which stands for Engineering and Construction, and Oil & Gas, but its activities also include shipbuilding and pulping equipment.
Respondent and its activities are dealt with more in detail below under Respondentís contentions.
In accordance with Paragraph 3(b)(xiii) Complainant has 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 that is the subject of the Complaint, 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 data base at the time of the submission of the Complaint to the WIPO Center.
5. Parties Contentions
As a general background Complainant contends that it holds 14 registered trademarks all of which are variants of the two main marks "KVÆRNER" and "KVAERNER" which are in Norway registered under numbers 162770 and 162771 in classes 1, 7 and 16 for goods and classes 36, 37, 39, 40 and 42 for services (of which class 42 includes also computer programming). Outside of Norway both the device marks and word marks are registered or the subject of pending applications for registrations in more than 60 countries all over the world. The various marks are used in connection with the above-mentioned goods and services and they have, according to Complainant, been successfully used primarily in the areas of industrial technology. They have thus become extremely well-known marks and enjoy a substantial reputation. Furthermore, Complainant administers web pages under the domain names "www.kvaerner.no" and "www.kvaerner.com" which contain information about the company.
Identity or Confusing Similarity
Complainant contends that the domain name at issue is identical or confusingly similar to Complainantís trademarks, the only difference being the collocation of the letters "a" and "e". The anglicised version of Complainantís trademarks does not use the "æ" vowel and therefore consists of the characters "a" and "e", together "ae", which is easily mixed up with "ea" and is thus not, in the view of Complainant, sufficient for distinguishing the domain name at issue from Complainantís trademarks. In fact, there has, as Complainant describes further below, been occasions of confusions between the notions "kvearner" and "kvaerner".
In addition, Complainant states that the suffix "com" is an irrelevant distinction which does not change the likelihood of confusion between the domain name at issue and Complainantís trademarks. As noted in earlier decisions by Administrative Panels the term ".com" refers to a commercial institution and thus is merely a classification of the purpose for which the domain name is being used.
On the basis of these circumstances, Complainant contends that, under any circumstances, the domain name must be said to be confusingly similar to Complainantís trademarks.
Rights or Legitimate Interests in the Domain Name
Complainant contends that Respondent has no rights or legitimate interests in the domain name at issue.
Complainant first states that it has not licensed or otherwise permitted Respondent to use its trademark or to apply for a domain name incorporating such mark.
According to Complainant, Respondent is a private person involved in several Norwegian companies which have Internet services as a part of their business, among them Norsk Material Administrasjon AS (NMA) and Vision Media Group AS.
Complainant alleges that "www.kvearner.com" leads to the website of "Kv-earner" which is an abbreviation of the slogan "Known Value Earner" which is continuously used on the websites of "KV-earner." Those sites contain offers to customers on how to make money and keep a log on the traffic from their clients' websites through adding the "Kv-earner" banner to their websites. The abbreviation is, according to Complainant, not very logical and therefore implies that Respondent exploits Complainantís trademarks and company name.
Complainant contends that the use of the name and logo "Kv-earner" on those websites constitutes a severe infringement of Complainantís intellectual property rights and thus a violation of the Norwegian Marketing Act, the Norwegian Trademarks Act and the Norwegian Company Names Act. Because of these violations Respondent can, according to Complainant, not be said to have any legitimate interests in respect of the domain name. Respondent also has no other intellectual property rights in the domain name.
For these reasons Complainant alleges that Respondent has no rights or legitimate interests in the domain name at issue.
Registration and Use in Bad Faith
According to Complainant, it must be clear for Respondent, who is a Norwegian, that the domain name "kvearner.com" can only refer to Complainant; the domain name is so obviously connected with such a well known name and company that its very use by someone with no connection with the company suggests opportunistic bad faith.
Furthermore, according to Complainant, Respondent has made unfair use of the domain name at issue. Respondent has thus received e-mails intended for employees in Complainantís company but wrongfully sent to the address "kvearner.com" instead of "kvaerner.com" One of those e-mails was of crucial importance for Kværner ASA; when the company was informed about this wrongly sent e-mail it asked Respondent to confirm that it would delete this e-mail, something that was refused by Respondent.
Complainant furthermore contends that, as a consequence of this e-mail incident, Respondent was, at a meeting on July 26, 2000, with an attorney representing Kværner ASA offered NOK 100 000 for the transfer the domain name and all documents and information connected to it. Respondent refused this offer but made a counter offer to Kværner ASA to buy the domain name for NOK 2 000 000, which was, however, refused as completely unacceptable.
According to Complainant this incident resulted in an investigation by the Norwegian Authority for Investigation and Prosecution of Economic and Environmental Crime and an indictment of Respondent for violation of certain provisions in the General Penal Code dealing principally with violation of trade secrets and/or extortion and attempts in that respect. This case will be tried in court for one week starting on August 20, 2001.
Complainant contends that these incidents and circumstances prove that the domain name at issue was registered primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant or to a competitor of Complainant.
On the basis of these events and considerations Complainant alleges that the domain name at issue has been registered and is being used in bad faith.
Complainant requests, in accordance with Paragraph 4(b)(i) of the Policy, that the Administrative Panel issue a decision that the domain name "www.kvearner.com" be transferred to Complainant.
In its Response, Respondent discusses the various allegations by Complainant and rejects those allegations. These are summarised below under the same headlines as those used in summarising the Complaint.
Identity or Confusing Similarity
According to Respondent the domain name "kvearner.com" was established on August 16, 1999 for the purpose of marketing and promoting technical solutions for registration of Internet and website traffic and banner advertising clicks among other technical solutions. Those solutions have been used on several websites and are still in use. The domain name is an abbreviation of the full site and service name, which is "Known Value Earner." As also stated by Complainant, this is repeated on the website so that there should be no doubt about the fact that this site has nothing to do with Complainant or its trademarks. In order to avoid any unnecessary discussions concerning the logo and the profile of the website, Respondent has modified various elements on the site. According to Respondent, Complainant has never brought to Respondentís attention that there is or has been any dissatisfaction with the website, the logo or the profile.
According to Respondent, the domain name "kvearner.com" or the website title "Known Value Earner" is obviously not in conflict with Kværner ASA's trademarks. Respondent alleges that there are other domain names which have one or two characters different from Complainantís trademarks. Examples of this are "www.kvarner.com", "www.kverner.com", "www.kaerner.com", "www.kerner.com" and "www.kveerner.com." In addition, according to Respondent Ė who has in this context referred to a list annexed to the Response Ė there are "KVAERNER" domain names which have been registered by others or not registered at all.
Respondent furthermore states that it has never used any wording or keywords that could be misunderstood or are in conflict with Complainantís trademarks or business; the website "Known Value Earner" is and has from the day of registration been used for promoting Respondentís technology and there has never been any information on the site that has mislead the users or offended Complainant.
Finally, as regards this aspect of the Complaint, Respondent states that Complainant and Respondent are not competitors and that the domain name was not registered for the purpose of selling, renting or otherwise transferring it to Complainant.
Rights and Legitimate Interests
It is, according to Respondent, correct that Complainant has never licensed the right to use Complainantís trademark, but this has never been an issue for Respondent.
Respondent furthermore alleges that the website "Known Value Earner" has been available on the Internet for more than 18 months and had a high amount of traffic during that period and also a high number of banner advertisements for "Known Value Earner" on several websites during that period. According to Respondent there has never been any contact or dialogue between Complainant and Respondent on this or other issues related to the Complainantís trademark. Finally, Respondent claims that it has intellectual property rights in the technology used and presented on the website as well as to the slogan and the domain names.
Registration and Use in Bad Faith
Respondent states that it received e-mails intended for Kværner ASA both from people outside that company and from people inside it. Some of these e-mails have been forwarded to Kværner's Webmaster until, on June 22, 2000, Respondent received a message from that Webmaster requesting Respondent to stop sending those e-mails to Complainant and stating, in Norwegian (translated into English here), inter alia: "As Webmaster it is not my job to forward or to return wrongfully sent emails." To support this, Respondent has submitted the complete Norwegian original e-mail from Complainantís Webmaster.
Respondent furthermore states that, on July 20, 2000, it received an e-mail Ė of which Respondent has submitted a copy, without attachments - from a company (here referred to as SCC) addressed to "email@example.com". Respondent contacted the Chief Executive Officer of SCC and informed him that this sensitive mail had been wrongfully sent to "Known Value Earner's" domain name and e-mail account "kvearner.com." Respondent did not contact Complainant and, contrary to what Complainant has stated, Complainant did not ask Respondent to delete this e-mail. On the other hand, an attorney representing SCC requested Respondent to issue a written guarantee that the information contained in the e-mail had not and would not be distributed or made available to other persons or to the public and that the e-mail and the attachment would be deleted. Following the advice of an attorney, Respondent did not issue such a written guarantee but gave the CEO of SCC an oral guarantee to this effect on July 21, 2000. The meeting referred to by Complainant took place with an attorney from the same law firm that represents Complainant in this case; that attorney did not, however, represent Complainant at that meeting but rather SCC. To prove this Respondent has submitted an extract from an investigation report (hearing of the attorney as a witness) in the subsequent court case referred to below. Respondent states that it did not have any contacts with that attorney before July 20 or after that meeting.
Respondent alleges that no offer of NOK 100 000 was ever discussed with Complainant or with anyone representing it. In fact this offer was given by SCCīs representative on behalf of SCC and was brought up by this representative at his initiative without any written offer or description of the terms around it. Respondent has never given any counteroffer of NOK 2 000 000 as stated by Complainant. Respondent states that it never tried to sell the website "Known Value Earner" or the domain name to SCC, to Complainant or to anybody else.
As a result of the situation in which SCC came, that company reported the situation for criminal investigation as a violation of certain Articles in the Norwegian Criminal Code. This was done in order to secure the documents which had been wrongly sent to Respondentīs e-mail address.
To support its statements in this context, Respondent has submitted a certain number of documents, in particular copies of e-mails and of portions of the investigation documents (in Norwegian) in the criminal proceeding.
In summary, Respondent submits that the domain name "www.kvearner.com" is not and has not been used in bad faith.
6. Discussions and Findings
Rule 15 of the Rules prescribes that the Panel shall decide a Complaint on the basis of the statements made and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
The Service Agreement relating to the domain name registration at issue incorporates the Policy which is consequently applicable to this case.
Paragraph 4.a of the Policy directs that Complainant must prove each of the following:
- that the domain name registered by Respondent is identical or confusingly similar to a trademark or a service mark in which Complainant has rights,and
- that Respondent has no rights or legitimate interests in the domain name, and
- that the domain name has been registered and is being used in bad faith.
In the following parts of this decision, the Panel discusses each of those elements.
Identity or Confusing Similarity
In this respect, Complainant has, according to Paragraph 4a(i) of the Policy, to prove that the domain name at issue is identical or confusingly similar to a trademark or a service mark in which Complainant has rights.
The domain name at issue is "www.kvearner.com".
The documentation submitted in this case shows that Complainant is the holder of a number of trademarks, which are variants of the two main marks "KVÆRNER" and "KVAERNER."
The Panel agrees with Complainant in the sense that the combination "ae" in the English version of the trademarks is easily mixed up with "ea" in the domain name and that, as shown in the documentation, such a confusion has obviously occurred on several occasions. The Panel also considers that, as found in several earlier Panel decisions, the suffix ".com" is not a sufficiently distinguishing factor to change the likelihood for confusion.
On the basis of these considerations the Panel concludes that there exists in fact a confusing similarity between the domain name at issue and Complainantīs trademarks.
Rights or Legitimate Interests
In this respect Complainant has, according to Paragraph 4.a.(ii) of the Policy, to prove that Respondent has no rights or legitimate interests in the domain name.
Respondent has alleged that the domain name "www.kvearner.com" leads to the websites of "Kv-earner" which stands for the slogan "Known Value Earner" and has, since the registration of the domain name, been used for promoting Respondentīs technology. Complainant has stated that the abbreviation is not very logical, that the implication is that Respondent exploits Complainantís trademarks and company name and that the use of "Kv-earner" on those pages constitutes a severe infringement of Norwegian intellectual property and marketing legislation.
The finding that there is a confusing similarity between Complainantís trademarks and the domain name at issue does not per se exclude that Respondent may have a right or a legitimate interest in the domain name. Respondent, as a Norwegian, must be familiar with Complainantís company and trademark and must have understood that there was a considerable risk of confusion with Complainantís trademark, company name and websites. Several subsequent events did in fact show that this risk existed. On the other hand it would seem that Complainant has not contacted or taken any other action in relation to Respondent and its activities before the unfortunate events in July, 2000.
Respondent has alleged that the domain name has, since its registration, been used for promoting Respondentís technological solutions and these allegations are supported by the documentation submitted in the case. The conclusion must be that the domain name has in fact been used for Respondentís business purposes since its registration.
In view of these circumstances, the Administrative Panel cannot find that Complainant has sufficiently established that Respondent has no rights or legitimate interests in the domain name at issue.
Registration and Use in Bad Faith
In this respect Complainant has, according to Paragraph 4a(iii) of the Policy, to prove that the domain name has been registered and is being used in bad faith.
As stated above, in the view of the Panel, Respondent must have understood, at the time of the registration of the domain name, that there was a considerable risk of confusion with Complainantís trademarks. Further developments showed that this risk of confusion materialized on several occasions. These circumstances suggest that in fact the registration may have been made in bad faith. On the other hand evidence available also shows that in fact Respondent tried to neutralize the negative effects, for instance by redirecting wrongly sent e-mails until it received a message from the Complainantís Webmaster that this would not be accepted any more. As also mentioned above, it would seem that Complainant did not take any action against the domain name at issue before the unfortunate incident with the wrongly sent e-mail, and Complainant does not seem to have taken actions against other domain name registrations which may also be creating confusion. It would in fact seem that Complainant took action against Respondent only because of the incident with the e-mail in question.
Evidence submitted in this case does not support Complainantís allegations that it was on behalf of Complainant Ė but rather on behalf of SCC - that an offer was made to Respondent to transfer the domain name for a substantial sum of money, nor is it clear in this case whether and how a counter-offer has been made, even if some indications in the above-mentioned report on the hearing of the attorney/witness point in that direction.
The Panel finds that the confusing similarity between the domain name at issue and Complainantís trademarks (and domain name) must have been the prime reason why the e-mail in question was wrongly sent to Respondent. This fact does not, however, in the view of the Panel, per se show bad faith at Respondentís side as regards his activities in regard to the domain name at issue. The events following the incident with the e-mail do not, in the opinion of the Panel, primarily concern the domain name as such but rather the relations between Complainant, the sender of the e-mail and Respondent; the Panel has no reason nor any authority to consider those circumstances, which are being dealt with in Norwegian Courts.
On the basis of these considerations, first, the Panel cannot find that evidence available in this case would support Complainantís contention that the domain name was registered primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant or to a competitor of Complainant as prescribed in Paragraph 4.b.(i) of the Policy, nor does evidence available or other circumstances in this case support the conclusion that the domain name at issue has actually been used in bad faith.
On the basis of the foregoing the Administrative Panel concludes that the domain name at issue is in fact confusingly similar to Complainantís trademarks, that it has not been proved that Respondent has no rights or legitimate interests in the domain name at issue and that it has not been proved that the domain name has been or is being used in bad faith.
Complainantīs request for a transfer of the domain name "www.kvearner.com" to Complainant is denied.
Dated: March 27, 2001