WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bonnier AB v. Control Alt Delete
Case No. D2001-0402
1. The Parties
The Complainant is Bonnier AB, a legal person under public law, incorporated under
the laws of Sweden, Torsgatan 21, 113 90 Stockholm, Sweden.
The Respondent is, according to contact details from the Registrantís WHOIS database, Control Alt Delete, with address noted to be Rådmansgatan 7, Stockholm, Sweden; its formal trade name, as registered in the Swedish Corporate Register, being Control Alt Delete Stockholm AB, Rådmansgatan 7, 114 25 Stockholm, Sweden, under registration number 556518-7837.
2. The Domain Name
The domain name at issue is <bonniers.com>, registered with Network Solutions Inc., 505 Huntmar Park Drive, Herndon, VA 20170, U. S. A., on July 3, 1996.
3. Procedural History
A complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on
March 22, 2001, and was there received in hardcopy form on March 23, 2001. Payment of the administration fee was made by bank transfer on March 21, 2001, and duly received. Receipt of the complaint was acknowledged by the WIPO Center to the Complainant on March 23, 2001. Request for Registrar Verification was issued on March 26, 2001, and the response by the Network Solutions Inc. was received the following day. After appropriate Formal Compliance Review, correctly verifying that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Uniform Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), a Notification of Complaint and Commencement of Administrative Proceeding to the parties and Network Solutions Inc. was issued on March 30, 2001, followed by a Response Default Notification on April 20, 2001.
The Complainant chose to have the dispute decided by a single-member Administrative Panel. There having been no response to the complaint, the Administrative Panel was properly constituted on April 30, 2001, the formal date of commencement of this administrative proceeding. It was founded on a Statement of Acceptance and Declaration of Impartiality and Independence dated April 26, 2001. A Notification of Appointment of Administrative Panel and Projected Decision Date was properly issued, indicating as a sole panelist Mr. G. Karnell.
There have been no further submissions. The date scheduled for the issuance of the Panelís decision is May 13, 2001.
4. Factual Background
In accordance with Paragraph 3 (b) (xiii) of the Rules, the Complainant has agreed to submit, only with respect to any challenge that may be made by the Respondent to a decision by the Administrative Panel to transfer or cancel the domain name that is the subject of its complaint, to the jurisdiction of the courts where the Respondent is located, as shown by the address given for the domain name holder in the concerned registrarís Whois database at the time of the submission of the complaint to the WIPO Center. Both parties are located in Sweden.
In four earlier cases before WIPO Administrative Panels, domain names registered by the Respondent have been ordered to be transferred to the respective Complainant upon findings that the Respondent had no rights or legitimate interests in respect of the domain names and that the Respondentís domain names had been registered and were being used in bad faith: cases D2000-0381, D2000-0609, D-2000-1671 and D2001-0338.
5. Partiesí Contentions
A. Complainant (short summary; and request for remedy)
The Respondentís domain name is identical to the Complainantís trade mark and trade name BONNIERS and confusingly similar to the Complainantís trade mark and trade name BONNIER.
The Complainant is the holding company to a great number of entities within the Bonnier group, whose total turnover at the time of registration of the Respondent as a private company on shares equalled approximately 900.000.000 EURO. Since 1930 BONNIERS became synonymous of the publishing company which is now the Complainant and its subsidiaries. The trademark/tradename BONNIER/BONNIERS was already earlier and still remains extremely well known to identify the Complainant, its goods and services, on the Swedish market. A recent recognition study regarding the trademark BONNIERS testifies to the fact. The words BONNIER and BONNIERS constitute established trade marks on that market with such a reputation as even to render their proprietor, the Complainant, exclusivity there for all goods and services. The Swedish national encyclopaedia "Nationalencyklopedin" contains the trademark BONNIERS as a reference.
Also, BONNIER and BONNIERS are contained in a great number of registered trade names. The trade names of about 85 entities within the group contain the component BONNIER in their trade name.
Under the Swedish Trademark Act (SFS 1960:644) Article 2, an exclusive trademark right is acquired without registration when the mark has been established on the market. Article 6 of the same Act, about confusing similarity of symbols, as well as its article 3, second paragraph, render supplementary foundation to Complainantís assertion that unregistered rights should suffice as support to its claim, all the more so because both parties are domiciled in Sweden. Applicable Swedish principles of law should apply in addition to the Uniform Policy, the Rules and the Supplemental Rules.
The Respondent has no rights or legitimate interest in the domain name <bonniers.com>. The Respondent, being a notorious "cyber squatter", has registered for itself as domain names a considerable number of well known Swedish trademarks, names etc. with the intent of gaining profit therefrom, as shown by newspaper cuttings and other material (attached to the complaint). The Respondent has not established any right in the trademark/tradename BONNIERS. The Respondent does not even have a mailing address or a listed telephone number.
The Respondent has registered the domain name <bonniers.com> and uses it in bad faith. It has registered Ė together with the presently disputed registration - as domain names trademarks belonging to others so as to prevent their owners from reflecting their marks in corresponding domain names. Having been contacted by legitimate trademark owners it has stated that it would charge them per commenced hour for the contact. Articles in Swedish newspapers show how the Respondent has requested money in excess of documented out of pocket costs related to the domain name. Complainantís representative has met with representatives of the Respondent who have shown intention to sell or rent out domain names registered by it. The mere continued possession of the domain name registered in the name of the Respondent constitutes a use thereof in bad faith.
The Complainant has requested, in accordance with Paragraph 4 i. of the Uniform Policy, that the Administrative Panel transfer the domain name <bonniers.com> to the Complainant.
There has been no response from the Respondent.
6. Discussion and Findings
On the basis of the Complainantís submissions and evidence introduced by the Complainant, and in particular with regard to the content of the relevant provisions of the Uniform Policy, (paragraph 4. a. to c.), the Administrative Panel considers that the case does not deserve any lengthy arguments on its part. It notes that the Uniform Policy only applies to conflicts between trade marks/service marks and domain names, and it does not find any reason to discuss in the present context the advisability of an extension of protection outside the sphere of trade marks or service marks.
A. The Panel finds that the domain name <bonniers.com> is identical (except for the gTLD .com), with the notoriously established trademark/service mark BONNIERS, a mark to which Ė although not evidenced to have become registered as such - the Complainant has rights since decades. The Panel considers it superfluous to include the shorter form BONNIER in any detailed arguments and findings. As trademarks both forms are in their use not clearly distinguishable from each other. BONNIER is confusingly similar to the domain name dominant.
B. Evidence provided by the Complainant shows that the Respondent has no rights, nor any legitimate interest, in respect of its domain name. On the contrary, its registration for the Respondent forms part of a manifest intentional abuse of the domain name system on the part of the Respondent, acting so as to gain financially from the transfer of domain name registrations to trademark owners and others and/or to disrupt legitimate business activities.
C. The Respondent has been shown to have registered the domain name in bad faith and to misuse the domain name system to the detriment of legitimate trade mark right holders, in the present case of the Complainant in ways described in the Uniform Policy under article 4 b. (i) and (ii). Its continued possession of the registration of the domain name <bonniers.com>, as of a number of others within its general "cyber squatter " scheme, constitutes conclusive evidence that the name is being used in bad faith. An attitude of "wait and see" policy of current inactivity on the part of the Respondent Ė not responding to the complaint - does not deserve legal recognition under the circumstances evidenced in the case.
D. The Administrative panel concludes that all elements mentioned in the Uniform Policy under article 4 a. (i)-(iii) are present in the case.
The Administrative Panel requires that the registration of the domain name <bonniers.com> be transferred to the Complainant.
Dated: May 4, 2001