WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Nordea AB v. P. Ganzarain

Case No. DBIZ2002-00207

 

1. The Parties

A. The Complainant

The Complainant in this administrative proceeding is Nordea AB (publ), Sweden.

B. The Respondent

The Respondent in this administrative proceeding is P. Ganzarain, Norway.

 

2. Domain Name and Registrar

This dispute concerns the domain name <nordea.biz>.

The Registrar with which the domain name is registered is Ascio Technologies, Inc. (hereafter "the Registrar").

 

3. Procedural History

The WIPO Arbitration and Mediation Center ("the Center") received the STOP complaint on April 28, 2002. The Center transmitted via e-mail to the Registrar a Request for Registrar Verification in connection with Complainant on June 6, 2002.

On June 10, 2002, the Registrar confirmed that it was the registrar of the disputed domain name, and that the disputed domain name was registered by the registrant, P. Ganzarain.

On June 11, 2002, the Center confirmed that the Complainant had complied with all formal requirements pursuant to the Start-up Trademark Opposition Policy for .BIZ adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2002. ("the STOP"), the Rules for Start-up Trademark Opposition Policy for .BIZ ("the STOP Rules"), and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ ("the WIPO Supplemental STOP Rules").

The Notification of STOP Complaint and Commencement of Administrative Proceeding was sent to Respondent on June 11, 2002.

The Respondent sent an e-mail with the following contents to the Center on June 13, 2002:

"I hereby STOP my claim for the domain <nordea.biz> that has been disputed by Nordea AB.

I have also mailed Nordea and given them all information about the domain account at <speednames.com>.

Pls withdraw the complaint against me and confirm this STOP".

On July 10, 2002, the Center issued a Notification of Respondentís Default.

The Panel has been appointed on July 16, 2002.

 

4. Factual Background and Partiesí Contentions

A. The Trademark

The complaint is based on the trademark Nordea, registered in Finland under Nį 221 504, on September 14, 2001, and the international registration in several countries, including Sweden and Norway (Reg. Nį 747 113). The Complainant is also the owner of trademark registrations or pending trademark applications (applications filed in 2000) for the mark NORDEA in over 30 countries worldwide. (These include inter alia CTM-application Nį 1970706, appl. date 24 Nov. 2000). The registration is made for goods and services in international Classes 9, 35, 36 and 38. The exact description of goods and services is:

09. Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus;

35. Advertising; business management; business administration; office functions;

36. Insurance; financial affairs; monetary affairs; real estate affairs;

38. Telecommunications.

The mark NORDEA is extensively used in relation to financial, insurance, real estate and internet banking services as well as all the other goods and services it has been registered/applied for.

B. The Complaint

The Complainant alleges that it is the owner of domain name registrations for the name NORDEA worldwide including generic extensions (.com, .net, .org, .info) as well as over 30 national domain names, for instance <nordea.no> in Norway. Most of the domain names are in active use with active web sites. The Complainant asserts that in accordance with STOP Paragraph 4 (a) each the three elements is present:

The disputed domain name nordea.biz is identical to the worldwide trademark registrations/applications for the mark NORDEA, specified above, in which Complainant has rights. It is also identical to the Complainantís company name Nordea AB (publ) as well as over 30 domain names in which the Complainant has rights.

The Respondent has no rights or legitimate interest in the disputed domain name. The Respondent is a private person living in Norway and his own name bears no relationship to the domain name, neither does the company name, Domains Inc., which he has used. Further, there is no web site hosted using the disputed domain name, indicating clearly that no business activity is being conducted by the Respondent using the domain name in connection with a bona fide offering goods and services.

The Respondent has registered the disputed domain name in bad faith for the primary purpose of selling it to the Complainant in order to gain financial benefits. On April 16, 2002, the Respondent sent an e-mail message directly to the Complainant in which he offered the domain name for sale. Considering that the Complainant, its company name and trademark NORDEA are widely and well-known in Scandinavia, the Respondent obviously has been or should have been aware of the complainants rights to the domain name when registering it. This fact further indicates the Respondentís bad faith. Furthermore, sending an e-mail directly to the complainant shows that the Respondent was aware of the Complainantís right to the name.

C. The Response

On June 13, 2002, the Respondent sent an e-mail to the Center, "stopping [his] claim for the domain name <nordea.biz>".

Otherwise, the Respondent did not file a Response and the Center has properly issued a Notification of Respondentís Default on July 10, 2002.

 

5. Discussion and Findings

(a) Trademark Identical to the Domain Name

There is no doubt that the domain name <nordea.biz> is identical with the Complainantís trademark, NORDEA, as the top level domain name .biz is not a distinguishing feature.

(b) Respondentís Lack of Rights or Legitimate Interests in the Domain Name

The Respondent, defaulting, did not assert any right or legitimate interests in the domain name at issue and explicitly withdrew his claim on this domain name by e-mail of June 13, 2002.

(c) Domain Name Registered or Used in Bad Faith

On April 16, 2002, the Respondent sent an e-mail to the Complainant in which he offered the domain name for sale. Together with the Respondentís withdrawal of his claim by e-mail of June 13, 2002, this is a strong indication for a bad faith registration, because (1) it shows that the Respondent was aware of the Complainantís rights and (2) it indicates that the Respondent does not purport to have any bona fide use of the domain name.

 

6. Decision

In the light of the foregoing, the Panel decides that the domain name at issue is identical to the trademark of the Complainant, that the Respondent does not have any right or legitimate interests in the domain name, and that he registered the domain name in bad faith. Therefore, the Panel orders that the domain name at issue be transferred to the Complainant.

 


 

François Dessemontet
Sole Panelist

Dated: July 30, 2002