WIPO

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sonera Ojy and Telia AB (Publ.) v. Daungsoo Ghim

Case No. D2002-0403

1. The Parties

The First Complainant is Sonera Oyj, a Public Limited Company incorporated and existing under the laws of Finland, and having its principal place of business in Helsinki, Finland.

The Second Complainant is Telia AB, a Public Limited Company incorporated and existing under the laws of Sweden, and having its principal place of business in Farsta, Sweden.

The Complainants are represented by Esa Korkeamäki and Matti Vedenkannas, both of HH Partners, Attorneys at Law, Ltd., Helsinki, Finland.

The Respondent is Daungsoo Ghim, whose address is given as 388-1, Pungnap-dong, Songpa-gu, Seoul, 138-736, Republic of Korea.

 

2. The Domain Name and Registrar

The domain name at issue is <soneratelia.com>.

The Registrar with which the disputed domain name is registered is Network Solutions, Inc., 21355 Ridgetop Circle, Dulles, VA, 20166, United States of America.

 

3. Procedural History

On April 30, 2002, a Complaint was received via email by the WIPO Arbitration and Mediation Center ("the Center") for decision in accordance with the Uniform Domain Name Dispute Resolution Policy ("the Policy"), adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26,1999. The hardcopy version was received on May 6, 2002.

On May 2, 2002, the Registrar responded to a request for verification of the disputed domain name <soneratelia.com> confirming:

h the details of the Respondent;

h that the Policy applied to the disputed domain name;

h that the Registrar would not cancel, transfer, activate, deactivate or otherwise change the status of the disputed domain name except as provided by the Policy; and

h the language of the Service Agreement is English.

On May 8, 2002, the Center transmitted a Notification of Complaint Deficiency to the Complainantís representative as the Complaint was not signed as required by the Rules.

On May 16, 2002, the Center received an Amended Complaint (hereafter referred to as "the Complaint"), signed by the Complainantís authorized representative.

On May 17, 2002, the Center transmitted a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent. The Respondent was advised that a response to the Complaint was required within 20 calendar days i.e. by June 6, 2002.

On June 4, 2002, the Center received a Response via email. The hardcopy version of the Response was received on June 14, 2002.

On June 17, 2002, the Panel was appointed. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").

The Panel has independently determined and agrees with the assessment of the Center that the Complaint meets the formal requirements of the Rules and the Supplemental Rules.

 

4. Factual Background

The Complainant has asserted and provided evidence in support of the following facts. Unless stated otherwise, the Panel finds these facts established.

The First Complainant

The First Complainant, Sonera Oyj, states that it is a leading provider of mobile and advanced telecommunication services on a worldwide basis. It states that it is growing as an operator, as well as a provider, of transaction and content services in Finland and in selected international markets. It also offers advanced data solutions to businesses, and fixed network voice services in Finland and neighboring markets. In 2001, its revenue totalled Ä2.2 billion. It has around 10,000 employees.

The First Complainantís business was originally operated by the Finnish State as a public service corporation, named The Post and Telegraph Office. In 1998, the Finnish Parliament approved the privatization of the company. The company, which at that stage operated under the name "Telecom Finland" changed its name to "Sonera Oyj" and was listed on the Helsinki Stock Exchange and on the NASDAQ National Market System in the United States of America. The First Complainant states that its share turnover on NASDAQ during 2001 was 40.4 million shares.

The First Complainant states that the advanced data solutions that it offers through its subsidiaries have established a reputation for the First Complainant as "a forerunner in cutting-edge technology". It states that this has contributed to the promotion of the companyís trademark on the international markets, including the Far East.

As set out in more detail later, the First Complainant recently announced that it will merge with the Second Complainant, the Swedish telecom company Telia AB.

The Second Complainant

The Second Complainant, Telia AB, is described by the Complainants as the First Complainantís Swedish counterpart. The Second Complainantís business was originally operated by the Swedish State as a public service corporation called Televerket. In 1993, the Swedish Government decided to transform Televerket into a state-owned public company, Telia AB.

The Complainants state that Telia AB is the leading telecommunications company in Sweden and a market leader in mobile communications, broadband/internet services and IP-based network services. The Telia Group provides "a comprehensive range of products and services in the fields of IT and telecommunications in over 30 countries worldwide". These include telecom, data, multi-media and information services.

Trade Mark Registrations

The First Complainant is the proprietor of 128 trademark registrations for the word SONERA in various countries around the world.

The First Complainant does not have a trademark registration in Korea, where the Respondent is domiciled. However, an application was filed with KIPO (Korea Intellectual Property Office) on July 2, 1999, and accepted for registration and published on November 15, 2000. This trademark registration for Korea is about to issue.

The Complainants state that the trademark SONERA is used on a worldwide basis as a symbol for the First Complainantís business activities. They claim that the trademark SONERA has become famous in the international telecommunications field.

Similarly, the trademark TELIA is registered in a number of countries, and is well-known within the telecommunications field. The Second Complainant has registered the trademark TELIA in relation to data and telecommunication products and services in more than 30 countries worldwide.

The Complainants did not provide a complete list of the Second Complainantís trademark registrations around the world, although they said that these would be provided if required. Instead, they rely on the fact that the Second Complainantís entitlement to the trademark TELIA has already been the subject of evaluation in Telia AB v. Alex Ewaldsson and Birgitta Ewaldsson, WIPO Case No. D2000-0599. It is not clear from that decision whether the Second Complainantís trademark TELIA is registered in Korea.

Merger between the First and Second Complainants

The Complainants state that due to the high profile of both the First and Second Complainants, the international media anticipated the merger of the First and Second Complainants for quite a long time. The actual announcement of the merger plan of the First and Second Complainants in late March 2002 was apparently not a major surprise to the international telecommunication community. The Complainants annexed examples of articles dated January 10, 2002, March 22, 2002 and March 24, 2002 anticipating the proposed merger.

Also, on March 22, 2002, the Finnish National Broadcasting Company YLE broadcast a report of the merger talks. The report was distributed worldwide on the same day by Reuters News Agency and confirmed by Reuters on March 24, 2002. On March 24, 2002, the Financial Times also reported the merger plan.

The Respondent registered the disputed domain name <soneratelia.com> on March 25, 2002.

The merger plan was officially announced on March 26, 2002, after the majority shareholders in the companies (the Government of Sweden and the Government of Finland) had reached agreement on the terms of the merger. The official announcements were widely reported by the international media.

It appears from the Complaint that sometime between March 25, 2002 and April 2002, the Complainants contacted the Respondent regarding the registration of the disputed domain name. On April 26, 2002, the Respondent replied as follows:

"Iím sorry Iím late for answering.

The reason why I registered the domain is only to manage a personal website.

What is your international lawís authority for saying that the ownership of soneratelia.com is your both companies, being a name of the new established company not made?

Can you insist the right of the domain name, as only a possibility that the new companyís name will be decided to soneratelia?

Then, Is teliasonera.com yours, too?

At any rate, I have not a plan to manage the website for business but only private website.

If you really need the domain, I am amicably willing to negotiate for the settlement.

Iím looking forward to hearing from you."

 

5. Partiesí Contentions

A. The Complainants

The Complainants state that the relevant part of the domain name in issue, "SONERATELIA" is identical to the distinctive combination of the trademarks SONERA and TELIA, which are registered and owned by the Complainants. Both trademarks SONERA and TELIA were registered before the disputed domain name was registered.

The Complainants refer to the decision of MedicaLogic/Medscape, Inc v. The Domain You Have Entered Is For Sale, NAF FA0094933. In that case, the Panel concluded that the Complainant owned the rights in the combined mark "MEDICALOGIC/MEDSCAPE". Prior to merging, MedicaLogic and Medscape each individually owned their respective trade marks. The Panel found that the merger did not alter their rights to the mark, stating that "the combined mark is unusual and distinctive and the Complainant has exclusive rights to the combined mark".

The Complainants also referred to PharmaciaUpjohn AB. v. Sol Meyer, WIPO Case No. D2000-0785. That case concerned the registration of the domain name <pharmaciamonsanto.com>. The domain name was registered on the same day as the media announced that PharmaciaUpjohn AB and Monsanto company were in merger talks - the Panel concluded that all three elements of the Policy had been made out and ordered the transfer of the domain name to the Complainant.

The Complainants claim that both the trademark SONERA and the trademark TELIA are purely invented word marks and the exact combination of these words is not one that traders would legitimately choose unless they were seeking to create an impression of an association with the Complainants.

The Complainants allege that by virtue of the widespread use and reputation of the trademarks SONERA and TELIA, members of the Internet community, as well as any "representative of the worldwide telecommunication community" would believe that the entity owning the disputed domain name was the company created by the merger of the First and Second Complainants or was in some way associated with the Complainants.

The Complainants confirm that they have not licensed or otherwise permitted the Respondent to use their trademarks, nor have they licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating those marks.

The Complainants also allege that the disputed domain name was registered in bad faith:

(a) the Complainants are not aware of any trademark registrations or applications in any country filed in the name of the Respondent or any other party for the trademark SONERATELIA, nor are they aware of any use of the mark SONERATELIA for any goods or services, nor any preparations for such use;

(b) the merger plan between the First and Second Complainants was widely anticipated and reported in the media even before the plan was formally announced. In these circumstances, the Complainants believe that the disputed domain name was registered for the purpose of selling the disputed domain name to either of the Complainants for valuable consideration in excess of the Respondentís out-of-pocket costs directly related to the disputed domain name, or in order to prevent the Complainants from obtaining the disputed domain name;

(c) even if the Respondent has not (thus far), made an offer to sell the disputed domain name to the Complainants, the mere act of registration alone must, in the circumstances be considered to constitute "use in bad faith". The Complainants refer to the decision of PharmaciaUpjohn AB v. Sol Meyer (supra), in which the Panel concluded that:

"The fact that the Domain Name was registered on the very day that news was first published of the merger talks between the Complainant and Monsanto Company leads the Panel irresistibly to the conclusion that it was an opportunistic act by an alert entrepreneur with a view to making a profit.

Accordingly, the Panel finds that the circumstances set out in paragraph 4(b)(i) of the Policy are present. If the Respondent has not already made a demand for a sum in excess of his documented out of pocket costs directly related to the Domain Name, he will at some stage do so. The Panel is of the view that maintaining a registration for that purpose is use in bad faith.

Additionally, even if the Panel is wrong on that and the Respondentís intention is and always has been to sit back and do nothing with the Domain Name, but simply to Ďblockí the Complainant and its parent and related companies, the Panel is of the view that there is nothing Ďgood faithí about that posture."

The Complainants submit that the fact that the disputed domain was registered only one day before the official announcement of the merger plan and after the merger talks were first reported by the international media demonstrates that the disputed domain name was registered in bad faith.

The Complainants also note that on April 26, 2002 the Respondent contacted the Complainant via email stating that the Respondent is "amicably willing to negotiate for the settlement" if the Complainants "really need the domain name". The Complainants allege that even though this email did not contain a direct offer to sell the disputed domain name, it is evidence that the disputed domain name was initially registered for the sole purpose of selling the disputed domain name to the Complainants for valuable consideration in excess of the Respondentís out-of-pocket costs related to the disputed domain name.

B. The Respondent

The Respondent claims that in Korea the trademark "SONERA" is not well-known. The Respondent annexed a search for "SONERA" on a Korean search engine, which did not disclose any results. The Respondent also points out that the trademark "SONERA" is not yet registered in Korea and the company Sonera Oyj does not have a presence in Korea.

The Respondent claims that his intention in registering the disputed domain name was not to manage the website for business, but as a private website. The Respondent states that he initially tried to settle the problem "peacefully" but the Complainants submitted the Complainant "without any talking with me".

The Respondent also states that as the international media anticipated the merger of both companies with various other main players in the telecom field for quite some time, the Complainant "gave up the rights itself".

The Respondent also contends that as the merged company has not decided upon its new name the disputed domain name is not identical or confusingly similar to a trademark or service mark in which the Complainants have rights.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to:

"decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".

The burden for the Complainant, under paragraph 4(a) of the Policy, is to show:

● 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

● That the Respondent has no rights or legitimate interests in respect of the domain name; and

● That the domain name has been registered and is being used by the Respondent in bad faith.

Domain Name is Confusingly Similar/Identical to a Trademark or Service Mark in which the Complainant has Rights

The Complainants have demonstrated that individually they each have rights in the respective marks SONERA and TELIA which are registered as trademarks in many countries. Both marks are original and distinctive marks; both are invented words with no ordinary meaning.

Here the Panel finds that the two Complainants have rights to the combination of their two trademarks (and names) and to the combined goodwill which the combination SONTERA TELIA enjoys. The fact that the two Complainants were likely to merge and that they were in merger talks was widely publicized before registration of the disputed domain name. Even though the merged entity is not a party to the Complaint, the Panel is satisfied that, as at the date of filing the Complaint, the two Complainants have shown full entitlement to the individual trademarks SONERA and TELIA and to the combination of the two trademarks.

The Panel therefore finds that the disputed domain name is confusingly similar to the First Complainantís mark SONERA and confusingly to the Second Complainantís mark TELIA.

Respondent has no Rights or Legitimate Interests in Respect of the Disputed Domain Name

The Policy outlines (paragraph 4(c)) circumstances which, if found by the Panel to be proved, shall demonstrate the Respondentís rights or legitimate interest in the domain name. These circumstances are:

(i) before any notice to the Respondent of the dispute, the Respondentís use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent claims that he registered the disputed domain name in order to use it as "a personal website" but has not disputed that he was aware of the Complainants and their registered trademarks at the time he registered the disputed domain name. The Respondent has not provided any evidence as to why he selected this particular domain name for his "private website".

In the absence of any evidence as to how or why the disputed domain name was selected by the Respondent, the Panel considers that it defies coincidence to suggest that he independently conceived of this unusual domain name and did not have the Complainants in mind. The suggestion seems all the more unlikely in light of the fact that the Respondent registered the disputed domain name the day after it had widely been reported through Reuters that merger talks between the First and Second Complainants were taking place. Also, there is no suggestion or evidence that the Respondent is commonly known by the disputed domain name.

Overall the Panel can find no evidence to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name.

Domain Name has been Registered and is being Used in Bad Faith

Paragraph 4(b) of the Policy states:

"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."

It should be noted that the circumstances of bad faith are not limited to the above.

The Panel finds that the Respondent registered the disputed domain name primarily for the purpose of selling it to the Complainant or to a competitor of the Complainant. Registration of the disputed domain name was an opportunistic act from which the Respondent thought he could gain. In his reply to the Complainantsí first Complaint, the Respondent stated:

"If you really need the domain name, I am amicably willing to negotiate for settlement."

This a clear indication that the Respondent was willing to sell the registration in exchange for money Ė more than likely in excess of his out-of-pocket costs. There could be no other reason for the Respondent registering a domain name comprising an unusual combination of trademarks with which he had no previous connection and in respect of which he had no rights or legitimate interest. Furthermore, the timing of the registration, after much publicized speculation of the merger in the business press, and the day after announcement of the merger talks, clearly defies coincidence and demonstrates the Respondentís real motives.

There is also something of an indication of the Respondentís intentions in the Response. Here the Respondent states:

"Why the Complainant has not registered the domain name, although the merger was anticipated for quite a long time? As Compliant [sic](c: Anticipation of the Merger) "the international media has anticipated the merger of both companies with various other main players in the telecom field for quite a lomg [sic] time now". Therefore, the Complainant gave up the rights itself."

The Respondentís words in bold suggest that the Respondent (who has not disputed knowledge of the Complainants) regarded it as fair game to register their combined trademarks as a domain name. Although there is no pattern of such conduct on the part of the Respondent, it is a fair inference from the Response that the Respondent was looking either to block the Complainants from registering the disputed domain name or to sell it to them.

The Panel considers that the comments of the Panel in Pharmacia & Upjohn AB v. Sol Meyer, WIPO Case No. D2000-0785 closely match the facts of this case:

"The fact that the Domain Name was registered on the very day that news was first published of the merger talks between the Complainant and Monsanto Company leads the Panel irresistibly to the conclusion that it was an opportunistic act by an alert entrepreneur with a view to making a profit.

Accordingly, the Panel finds that the circumstances set out in paragraph 4(b)(i) of the Policy are present. If the Respondent has not already made a demand for a sum in excess of his documented out of pocket costs directly related to the Domain Name, he will at some stage do so. The Panel is of the view that maintaining a registration for that purpose is use in bad faith.

Additionally, even if the Panel is wrong on that and the Respondentís intention is and always has been to sit back and do nothing with the Domain Name, but simply to Ďblockí the Complainant and its parent and related companies, the Panel is of the view that there is nothing Ďgood faithí about that posture."

The Panel therefore concludes on the facts of this case that the disputed domain name was registered in bad faith.

 

7. Decision

For the foregoing reasons, the Panel decides that:

(a) the disputed domain name registered by the Respondent is confusingly similar to trademarks in which the Complainants have rights;

(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name;

(c) the disputed domain name was registered and is being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <soneratelia.com> be transferred to the Complainants.

 


Andrew Brown
Sole Panelist

Dated: June 27, 2002