WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Enskilda Securities AB and Enskilda Securities Holding AB
Alex Ewaldsson also acting as AE1840.org and 1840-ORG as well as acting as euroregister.com and Domain4Sale
Case No. D2002-0339
1. The Parties
The Complainant is Enskilda Securities AB and Enskilda Securities Holding AB jointly, both being companies incorporated under Swedish law. The former is a wholly owned subsidiary to the latter. Their address is Nybrokajen 5, S-103 36, Stockholm, Sweden.
The Respondents are, according to contact details from Registrarís Whois database (Melbourne IT Ltd.), AE 1840.org (also written AE 1840-ORG and AE 1840.ORG). Address indicated for all registrations of domain names: Box 5555, SE-114 79 Stockholm, Sweden. All contested registrations have been traced back to Alex Ewaldsson, Box 1380, SE-172 27 Sundbyberg, Sweden, as the person behind the domain name registrations and consequently considered to be the person behind the Respondents in this case, as acting for domain name holders mentioned here above. The Respondents will hereinafter be referred to as "Respondent".
2. The Domain Names
The domain names at issue are <enskildasecurities.net>, <enskildasecurities.org>, <enskildasecurities.info>, <enskilda.org> and <enskilda.info>, all registered with Melbourne IT Ltd. doing business as Internet Names Worldwide, Level 2, 120 King St., Melbourne, Victoria 3000, Australia.
3. Procedural History and related Administrative Ruling by the Panel
A complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on April 9, 2002. Its receipt was acknowledged to the Complainant by the WIPO Center on April 15, 2002. The Complainant chose to have the dispute decided by a single-member Administrative Panel. The next day, the WIPO Center requested and, on April 17, 2002, in due form received Registrar Verification. Payment of the administration fee was duly received. After Formal Compliance Review, 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"), the formal date of the commencement of the administrative proceeding was set to be April 18, 2002. A Notification of Complaint and Commencement of Administrative Proceeding to the parties and the Registrar was issued on that same day, followed by a Response Default Notification on May 15, 2002. On May 20, 2002, WIPO Center received an e-mail communication, signed Birgitta Ewaldsson (together with Alex Ewaldsson party to the proceedings in WIPO Case No. D2000-0599 Telia v. Alex Ewaldsson and Birgitta Ewaldsson, decided August 8, 2000, and consequently familiar with ICANN/WIPO procedure) referring to the Notification: "This mail or anything concerning this matter has been serviced to Mr. Ewaldsson. He is returning back to office the 25th of August and will be noticed of this then promptly. He will then sign reception of these documents immediately" (there is also a text "In Swedish" with a partially divergent meaning).
The Panel was properly constituted on May 27, 2002. It was founded on a Statement of Acceptance and Declaration of Impartiality and Independence dated May 22, 2002. A Notification of Appointment of Administrative Panel and Projected Decision Date was properly issued on May 27, 2002, indicating as single panelist Professor Gunnar Karnell. Latest date for a decision was set to be June 10, 2002.
The Panel chooses, with reference to article 11 (a) of the Rules, to disregard the content of the text "In Swedish", as mentioned here above. It does not contain an appropriate request to the Provider in accordance with article 5 (d) of the Rules for an extension of time for the filing of a response. Referring to article 5 (a) and (e) of the Rules, the Panel gives no heed to the content of later e-mail communications between representatives of the parties to each other, also transmitted to WIPO Center, and causing the Center to inform the parties that the Policy and Rules do "not foresee further submissions after the Complaint/Response. However, your email will be forwarded to the panel and the panel will have sole discretion on whether to accept and/or consider the e-mail in deciding the case." All counted, the Panel finds that each party has been given a fair opportunity to present its case, as required under article 10 (b) of the Rules and that there is no cause for an extension of the period of time fixed for these proceedings (cf. article 10 (b) of the Rules).
Consequently, the Panel finds that there has been no valid response to the complaint.
4. Factual Background
In compliance 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 addresses 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; for this to apply to all the domain names included in the complaint.
5. Partiesí Contentions
A. Complainant (summary; and request for remedy)
Enskilda Securities is an independent investment bank, founded in 1982. It provides investment banking and stock-brooking services to corporate clients and institutional investors, conducting its business from its head-office in Stockholm as well as from offices in Copenhagen, Frankfurt, Helsinki, London, New York, Oslo, Paris and San Francisco (Silicon Valley).
Enskilda Securities Holding AB carries out its business in the daughter company Enskilda Securities AB. Both companies have an interest in the present case related to the domain names at issue because of the legal connection between them, implying that the trademark rights to ENSKILDA and ENSKILDA SECURITIES are used by the daughter but owned by the mother company.
Alex Ewaldsson has contacted the Complainant with an e-mail offer sent on April 17, 2000, over <email@example.com> ("Till ledningen för Enskilda Securities!"), concerning the domain names <enskilda.org>, <enskildasecurities.com>, <enskildasecurities.net> and <enskildasecurities.org>. The offer was made in his capacity of owner of the names [The Panel notes that ownership regarding <enskildasecurities.com> may have been incorrectly claimed by him], all here disputed domain names registered under the notion AE1840.org (AE being short for Alex Ewaldsson). AE1840.org is also the name stated in the registrations for <enskilda.info> and <enskildasecurities.info>, implying that also these two registrations are owned by Alex Ewaldsson, being the person behind all the domain names at issue in the present case. The organization addresses, stated over identical box numbers and city codes, indicated in the registrations are www.enskilda.org, www.enskilda.info, Domain4Sale and www.euroregister.com, all registered also with identical telephone and fax numbers. The Whois information stated in the registrations for the domain names is a mixture of contact details, which has the character of fictitious information. For some of the domain names the organization name or organization address is stated as the domain name in question. Thus, for instance, is <enskilda.org> registered by AE1840.org at the organization www.enskilda.org and the <enskilda.info> is registered by AE1840-ORG at the organization www.enskilda.info. A NIC-handle search on AE1840 shows that this notation is used by Alex Ewaldsson in domain name matters. The trade names used by Alex Ewaldsson are not registered in the Swedish company names registers. Judging from the addresses and contact details stated in the domain name registrations, all trade names and organization names used for the purpose of registration, are connected to Alex Ewaldsson and his activities.
The Complainant has been using the trademarks ENSKILDA and ENSKILDA SECURITIES since 1982 in connection with financial and monetary services. In 1982 the company Enskilda Securities, Skandinaviska Enskilda Ltd, was founded in London and this was when use of the trademarks ENSKILDA and ENSKILDA SECURITIES began. The Enskilda Securities Group is today acting on the financial markets in eight countries, namely Sweden, Norway, Denmark, Finland, Germany, Great Britain, France and USA. Enskilda Securities is one of the leading investment banks and it is frequently rated as market leader.
The company name Enskilda Securities AB was registered in Sweden in 1991.The holding company was registered in 1998. It is the owner of the following registrations:
Trade mark Register Appl. Date No.
ENSKILDA Community trademark 2000-12-15 002001170
ENSKILDA Switzerland 2000-12-20 485850
ENSKILDA SECURITIES Community trademark 2000-12-15 002001402
ENSKILDA SECURITIES Switzerland 2000-12-20 485851
In addition to these registrations there are also trademark applications in Sweden, US, Canada and Russia. The trademarks ENSKILDA and ENSKILDA SECURITIES are applied, registered and used in connection with financial and monetary services.
ENSKILDA and ENSKILDA SECURITIES are also protected as trademarks as a result of extensive use on the Swedish market. The trademarks have been in use for more than 20 years and have a widely spread reputation not only in Sweden, but on the financial markets world-wide, as shown by the result of several business surveys.
The Complainant is already the owner of the following domain names containing the words ENSKILDA and ENSKILDA SECURITIES:
The domain names <enskilda.org>, <enskilda.info>, <enskildasecurities.info>, <enskildasecurities.org> and <enskildasecurities.net> are all identical to the Complainants trademarks ENSKILDA and ENSKILDA SECURITIES respectively.
b)The Respondent has no rights or legitimate interests in respect of the domain names.
The Respondent is recorded as registrant as well as administrative contact of the domain names <enskilda.org>, <enskilda.info>, <enskildasecurities.info>, <enskildasecurities.org> and <enskildasecurities.net>. The Respondent does not have any trademark rights in relation to ENSKILDA or ENSKILDA SECURITIES. Neither has the Complainant granted any rights related to its trademarks to the Respondent.
The Respondent has offered to sell the trademarks <enskilda.org>, <enskildasecurities.org> and <enskildasecurities.net> (about <enskildasecurities.com>, see comment by the Panel here above) to the Complainant in an e-mail sent on April 17, 2000. This implies that the Respondent does not have any legitimate interests in respect of the domain names. In this e-mail offer the Respondent indicates that the domain names were registered for a prospective client. There is no indication about who this client would have been and there is no indication that the registration would have been made at the request of Enskilda Securities. This statement can therefore not be seen as an explanation of legitimate interest. The Respondent himself states that the reason for his offer of the domain names to the Complainant is that it is his opinion that the domain names should belong to the company which holds the corresponding company names. This means that the Respondent admits having no legitimate interest in the domain names.
The company name and trademarks ENSKILDA SECURITIES and ENSKILDA are well known in Sweden. The word ENSKILDA or the combination of the Swedish word ENSKILDA and the English word SECURITIES is not what traders would legitimately choose as domain names unless they would seek to create an impression of an association with the Complainant. The Respondent is a person who has stated addresses in Sweden and it is therefore not likely that he was unaware of the Complainants extensive use of the trademarks.
c) The domain names have been registered and are used in bad faith.
The Respondent has provided unclear address information for the purposes of his domain name registrations. The names stated as "organizations" do not exist as business or trade names. This implies that the Respondent was not acting bona fide when it registered the domain names.
The Respondent has offered to sell the domain names to the Complainant, admitting that the domain names should belong to the owner of the corresponding company name. In this offer the Respondent also states that he is involved in a business with the purpose of registering "financial names" on the Internet.
The Respondent has registered the domain names in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name and he is engaged in a pattern of such conduct. The Respondent has previously been found to have registered more than 200 domain names containing the word TELIA in bad faith (Telia AB v. Alex Ewaldsson and Birgitta Ewaldsson, WIPO Case No. D2000-0599.
When using the domain names one is redirected to the web site <www.euroregister.com>, a web site with domains for sale. The domain names of the Complainant are not offered on the site, but studying the other domain names offered by the Respondent it becomes obvious that the Respondent is engaged in activities focused on registering domain names in bad faith.
The meta tags entered by the Respondent on the web sites connected to the domain names all clearly indicate that the Complainant was the target of the Respondents activities. The meta tags are used in order to attract visitors who use search engines when looking for information about the Complainant. The meta tags entered by the Respondent are, for example, "enskilda, enskildasecurities, seb, enskildabanken, bank, bors, borsen, aktier" (English translation of "börsen": stock exchange; of "aktier": shares).
No evidence of bona fide online presence by the Respondent can be found in relation to the domain names.
d)The Complainant has requested, in accordance with Paragraph 4 i. of the Uniform Policy, that the domain names <enskilda.org>, <enskilda.info>, <enskildasecurities.info>, <enskildasecurities.org> and <enskildasecurities.net> be transferred to the Complainant.
The Administrative Panel understands this request to mean that, although we have a two-party Complainant, all domain names shall be transferred to the holding corporation, being the one registered as holder of relevant registered trade mark rights.
There has been no valid response from the Respondent.
6. Discussion and Finding
A. The domain names at issue are confusingly similar to trade marks to which by registration and/or use Complainants have acquired rights prior to Respondentís registrations of the domain names. The Panel chooses to base its decision on the adduced registrations and applications for registrations of trade marks, leaving aside any possible rights based upon the use of marks as unnecessary for reaching the Panelís conclusions; thereby also avoiding a pointless discussion about any split of rights between Complainants.
B. Regarding rights and legitimate interests relating to the domain names, the Respondent has failed to shown evidence of any such rights or interest. All domain name registrations have been made after the coming into existence of the trade mark rights of the Complainant. Also, the arguments provided by the Complainant convincingly establish the absence of any relevant rights or interest attributable to the Respondent. The Panel concludes, from how the domain name has been used together with Respondentís failure to respond to the complaint, that there are no rights or interest worthy of legal recognition on the part of the Respondent.
C. The Panel does not believe that the Respondent has chosen its domain name without knowledge of the pre-existing trade marks. The Respondent has registered and uses the domain names in an intentional attempt to sell the domain name registrations to the Complainant/trade mark owner or another party for valuable compensation in excess of documented out-of-pocket costs directly related to the domain names, at that engaging in a pattern of conduct of preventing the trade mark owner from reflecting its marks in corresponding domain names. It is obvious that the domain names have been registered and are being used in bad faith.
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 Complainant has chosen to require that the domain names be transferred to the Complainant and so they shall be. However, the Administrative Panel understands this request to mean that although we have a two-party Complainant, all domain names shall be transferred to the holding company, Enskilda Securities Holding AB, being the entity registered as holder of relevant trade marks, as registered or applied for in registration proceedings.
The Administrative Panel requires that the registration of the domain names <enskildasecurities.net>, <enskildasecurities.org>, <enskildasecurities.info>, <enskilda.org> and <enskilda.info> be transferred to the Complainant Enskilda Securities Holding AB.
Dated: June 4, 2002