WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Trygg-Hansa AB v. Arild Rosenberg

Case No. D2003-0071

 

1. The Parties

The Complainant is Trygg-Hansa AB, Stockholm, of Sweden, represented by Groth & Co KB of Sweden.

The Respondent is Arild Rosenberg of Norway, represented by Bjørnar Eilertsen

 

2. The Domain Name and Registrar

The disputed domain name is <trygg-hansa.com> (the "Domain Name").

Registrar is Dotster, Inc. of Vancouver, WA, USA, http://www.dotster.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 3, 2003. On March 5, 2003, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On March 5, 2003, Dotster.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 6, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2003. The Response was filed with the Center on March 22, 2003.

The Center appointed Mladen Vukmir as the sole panelist in this matter on March 28, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

After having received all of the submissions, and the complete file material by courier mail on March 31, 2003, the Panel verified the language of the submissions. As the Registrarís Registration Agreement is in the English language, and most of the material submitted was in English language, in accordance with the Rules, paragraph 11(a), the Panel decided that English language is to be the language of the administrative proceeding. The Panel examined the contents of the documents submitted by the Parties partially in the Swedish and/or Norwegian languages such as WHOIS database excerpts and trademark registration excerpts as well and found them to be understandable as far as their content relates to the standardized domain name and intellectual property registries database contents.

 

4. Factual Background

The Complainant demonstrated to be the holder of several trademarks, some of which are device marks including the words "TRYGG HANSA" and some are word marks covering words "TRYGG" or "HANSA". These trademark registrations include the following:

- TRYGG HANSA - for all services in the classes 35, 36, 41 and 42, registered November 27, 1992, with the Swedish Patent and Trademark Office (Reg. No 242 707). A copy of the registration certificate and information regarding a previous name change from Trygg Hansa SPP Holding AB to Trygg Hansa AB is provided as evidence.
- The Swedish trademark TRYGG for insurance and financial services (Reg. No 326498). The date of registration is March 6, 1998. The Complainant provided as evidence a printout from the Swedish trademark database Olivia.
- The Swedish trademark HANSA in class 8, 9 and 22 covering life rescue tools among other things. The date of registration is July 31, 1998 (Reg. No 266632). A printout from the Swedish trademark database Olivia is provided as evidence.
- Another trademark upon which the Complaint is based is TRYGG HANSA, for insurance and financial services, registered in Norway (Reg. No 213450). A copy of a printout dated August 21, 2002 from the trademark database Saegis is provided as evidence.

This Complaint is also based upon the TRYGG-HANSA trademarks in the following countries:

- France (No 1 690 629) A printout from the trademark database Saegis is provided as evidence.
- Finland (No 134 398) A printout from the trademark database Saegis is provided as evidence.
- Latvia (No M 39 566) A copy of the registration is provided as evidence.
- Estonia (No 25128) A copy of status report regarding the Estonian trademark registration is provided as evidence.
- Denmark (19933993) A printout from the trademark database Saegis is provided as evidence.
- Great Britain (No 1 446 445; 1 446 446) Two printouts from the trademark database Saegis are provided as evidence.
- Poland (Z165863) A copy of status report regarding the Polish trademark registration is provided as evidence.
- Benelux (491 912) A printout from the trademark database Saegis is provided as evidence.
- Germany (No 2 029 163) A printout from the trademark database Saegis is provided as evidence.
The Respondent does not contest the existence or validity of any of the above registrations. The Panel did not verify independently these data but it accepts is as they were not contested.

 

5. Partiesí Contentions

A. Complainant

The Complainant basses the Complaint on the following grounds:

The Complainant subscribes to the opinion that the disputed domain name <trygg-hansa.com> is undoubtedly confusingly similar to the trademark TRYGG HANSA in which the Complainant Trygg-Hansa AB has trademark rights, save for the TLD ".com" and the hyphen "-". Since the spelling of the domain name and the trademark is the same, the Complainant succumbs to the opinion that they ought to be considered identical. In addition to the reasoning above, the Complainant believes that the domain name <trygg-hansa.com> is confusingly similar to the trademarks TRYGG and HANSA. The domain name contains both the trademarks TRYGG and HANSA in their entireties, only separated by a hyphen.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the name TRYGG-HANSA. To the best of the Complainantís knowledge, the Respondent is not an owner of any trademark, service mark, company name, product or service with a name similar to that of the Domain Name. Neither is the Respondent using the Domain Name in connection with a bone fide offering of goods or services. The Complainant points out to the fact that the Respondent has only vaguely explained that he intends to establish a non-commercial business and that despite the Complainantís request to receive a more detailed business plan in writing, the Respondent has chosen not present any such plan to the Complainant. The Complainant attaches importance to the fact that the Respondent, when requested, has not presented any business plan for the alleged non-commercial business at all.

The Complainant is of the opinion that the domain name has been registered and used in bad faith. The Domain Name was, in the Complainantís opinion, registered in order to prevent the Complainant, a large Scandinavian insurance company, from reflecting its trademark in a corresponding domain name under the gTLD ".com". In the Complainantís first letter to the Respondent, dated June 19, 2002, the Complainant offered to reimburse the Respondentís official registration fee as well as any official fee arising due to the transfer. However, the Respondent has indicated that he is willing to "amicably discuss a transferal of the domain name" under the condition that he receives monetary compensation covering "all his establishing costs, expenses and bills associated with the registration and the transferal, including necessary expenses for legal assistance". The Complainant requested the Respondent to further clarify the above-mentioned monetary compensation. On November 27, 2002, the Complainant tried to find a solution that would be satisfactory for both parties and offered SEK 5000 in an attempt to reimburse not only the registration fee and transfer fee but also the alleged legal fees. The Complainant states that he has a reason to believe that the Respondent found this good faith offer too low because the Respondent only replied January 14, 2003, saying that the Domain Name is not for sale.

In his further correspondence preceding the filing of the Complaint, the Complainant has stated to the Respondent that the Complainant used to be the former holder of the disputed domain name but a company responsible for renewals failed to renew the Domain Name timely. The Complainant holds that when registering the disputed Domain Name, the Respondent must have been aware of the Complainantís interest in the Domain Name. One of the reasons for this is the fact that the Complainant is the holder of domain names such as <trygghansa.com>, <trygg-hansa.net>, <trygghansa.net>, <trygg-hansa.org>, <trygghansa.org>, <trygg-hansa.info>, <trygghansa.info>, <trygg-hansa.biz> and <trygghansa.biz>. The Complainant is also the holder of ccTLD:s such as <trygg-hansa.se>, <trygghansa.se>, <trygg-hansa.no>, <trygghansa.no>, <trygg-hansa-nu> and <trygghansa.nu> among others. The Complainant submitted the copies of WHOIS database printouts dated March 3, 2003, as evidence.

Based on the circumstances described above gives the Complainant reason to believe that the Respondent registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the owner of the trademarks TRYGG HANSA for a valuable consideration in excess of out-of-pocket costs directly related to the Domain Name.

The Complainant points to the fact that the disputed Domain Name is not resolving towards a website other than a standard page built by the Registrar saying, "Welcome to Trygg-Hansa". Any Internet user who visits the website connected with the disputed Domain Name will be exposed to advertising from third party companies that has no connection to the Complainant that they may have been looking for. The printouts of the website dated June 17, 2002, October 14, 2002, and March 3, 2003, are provided as evidence, together with the examples of third party advertising. The Complainant points to the established UDRP case law which states that using a domain name in bad faith is not limited solely to positive actions, and that the inaction is regarded as being within the concept and cites Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 20, 2000) and Strålfors AB v. P D S AB, WIPO Case No. D2000-0112 (April 17, 2000).

The Complainant, considering all of the above, concludes that the Domain Name is identical to the TRYGG-HANSA trademark, the Respondent has no rights or legitimate interests in respect of the domain name <trygg-hansa.com> and that the Domain Name was registered and is being used in bad faith.

B. Respondent

The Respondent responded to the statements and allegations in the Complaint and requests the Administrative Panel to deny the remedies requested by the Complainant. The Respondent does not contest that the Complainant has produced evidence of having registered trademarks in a number of countries.

The Respondent does, however, contest that the conditions requested by the Policy in Paragraph 4 a(ii) has been met by the Complainant. The Respondent elaborates on what he considers to be credible evidence of his "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", in the sense of the Policy, para. 4 c (iii). In other words, the Respondent asserts that he has legitimate interest in respect of the Domain Name because he was making a legitimate non-commercial use of the Domain Name, without intent for commercial gain to misleadingly divert the consumers.

Moreover, the Respondent contests that "the Domain Name has been registered and is being used in bad faith". In this connection the Respondent asserts that the Complainant has only produced parts of the correspondence that has taken place between the Parties, implying that these have been cherry-picked pieces of the correspondence and that those correspondences that were omitted would shed a different light on the relation between the Parties and their respective rights.

As a matter of fact the Respondent introduces the documentation that has been, in his opinion wilfully omitted alleging that the Complainant's arguments are based on the documentation he has submitted, without mentioning the fact that other documentation could place his arguments in a completely different light. The Respondent submitted most of the documentation he is referring to.

In respect of its rebuttals of the Complainantís allegations the Respondent is pointing out to his alleged plans and provides an attempt to logically explain his actions as in compliance with the UDRP law which developed thus far. In this sense the Respondent points to his wish to preserve the fundamental concept from medieval times to establish a forum Ė through the development of a website Ė where the users can share their knowledge free of charge in any areas they so desire to contribute to a safer way of life. The Respondent has allegedly desired to restrict himself as little as possible during the start-up phase, since he desires to use the World Wide Web as the unique tool it is to allow the users to determine the scope and development of the site, irrespective of limits other than a common understanding of the content. The Respondent maintains that the site has and will be developed and operated on a non-commercial basis. It will be able to function as an interactive forum/network for people of all ages who seek safety, and it will in time give the users an extensive database of tips, inspiration and advice in various areas as to how they can adapt their way of life to achieve greater day-to-day safety. Instead of focusing on material interests and busy day-to-day life, it is the Respondent's perception that people have for example a great deal to gain with respect to their mental well-being by going back in time and gathering inspiration from the stress-free life of earlier times. The Respondent is concerned that the lifestyle afflictions of our time are one of the unfortunate effects of today's way of life and he intends to keep the site free of advertising and completely free of any commercial influences. Finally the Respondent states that he is performing the start-up job on idealistic grounds without any intention of profit.

The Respondent elaborates further minutiae related to his development plans and concludes that all these plans have been postponed due to the strong response from the Complainant, where it is so clearly evident that he will attempt to wrest this domain name from the Respondent. The Respondent also states that he incurred extensive legal costs as a result of what is perceived to be wrongful actions. Apparently, the Respondent appears to imply that an attempt of the reverse domain name hijacking might have occurred.

In his analysis of the Respondent's actions preceding this dispute, the Respondent is pointing out that in his country of domicile, the documentation shows that the Complainant has registered "Trygg Hansa" with a lifebuoy between the words as a graphic symbol. Further, the Respondent states that in Norway in particular and in Scandinavia in general, the word "Hansa" is a name of a geographic area. It is further alleged and shown by evidence that it is also the name of a well-known Norwegian brand of beer.

Allegedly, from olden times it was the name for a marketplace, and it is used in a number of company names. The evidence is submitted showing that the Register of Business Enterprises has numerous entries containing the word "hansa". "Hansa" is also an international medieval term for a place where individuals can band together to promote their interest. The evidence is provided which documents the concept as it is used in a similar context under the domain "www.hansa.com". Sharing and the development of forums are key to the historical significance of this word.

The word "trygg" is, according to the Respondent, a generic word that means safe or secure in Norwegian. Documentation of such a translation from a Norwegian-English dictionary is submitted with the Response.

The Respondent concludes that the combination of these words is therefore an ideal expression of what he wants to realise with the site. Although he concedes that the spelling of the Respondent's domain name in Norwegian is very close to the Complainant's company name, he maintains there is no apparent risk of confusion without much elaborating on why there actually would be no confusion in light of the apparent similarity. It is key to this case, in the view of the Respondent, that the Complainant cannot have any exclusive right to the use of generic terms, nor can he have an exclusive right to a combination consisting of two generic and extensively used words in Scandinavia.

The Respondent then turns his attention to the allegations by the Complainant that there is advertising on the Respondent's site. The Respondent states that the Complainant has himself been the primary cause of the lack of development of the site by causing the extensive legal assistance expenses after the Complainant has threatened action on the grounds that his use is not legal. Consequently, the Respondent has not been able to afford to develop the site yet, and he has merely allowed the default page used by the Internet Service Provider Dotster Inc. for sites that have not yet been published to remain. It is alleged that the key in this connection is the fact that the Respondent is a private individual without the financial resources of the Complainant. His planned website is, it is repeated, based on idealistic grounds without any expected income. He requires at the same time assistance for programming the site, which also requires certain initial start-up costs. The Respondent goes as far as to assert that the acceptance of the Complainantís argument in this sense in this case will represent acknowledgement of a form of extortion.

The Respondent wishes to point out that the Complainant has requested that the Respondent produce a business plan for the site use and that this request was not made until after the Complainant had attempted to threaten the Respondent into giving up the domain name by bringing the case before the WIPO. Thus it appears evident to the Respondent that this question from the Complainant was only submitted in an attempt to establish a formal basis for bad faith, without any real interest in or desire of having such a plan submitted.

The Respondent alleges that his plans to establish the site on a non-commercial basis are based on his own private work and that it is therefore not natural or necessary to have any business plan or other documents that are normally required by and associated with commercial endeavours. The Respondent insists that a business plan is on the contrary an expression of a commercial line of thought and operations, which is something that he is contributing to establishing a counterbalance against with this website, where the focus is on more fundamental desires for a safe way of life. It is therefore not apparent for the Respondent that the absence of such a commercial instrument can be of any significance as an argument in this complaint case against a non-commercial entity. The Respondent repeats here that he complained that the Complainant's actions have caused him to incur not insignificant expenses for legal assistance and that these are expenses that the Respondent would have otherwise used for development of the website.

In respect of the Complainantís allegations that the Respondent desired to sell the domain for a significant sum of money the Respondent retorts that his actions are construed as an attempt to establish a formal basis for claiming bad faith on the part of the Respondent. The Respondent maintains that the documents in this case show that this has not been the case, and it is not true. The Respondent asserts that this offer has been made by the Complainant in an attempt to establish bad faith on his part and that this is a true reason why the Complainant has made an offer to pay SEK 5000 to the Respondent. The Respondent states that he has rejected this offer and earlier offers, since the domain name was not for sale.

The Respondent tries with great effort to establish that at no point during the negotiations was he prepared to transfer the Domain Name, with consideration or without, as it simply is not for sale. He states that the only offer he made was conditional upon the presentation of the adequate legal evidence. The Respondent maintains that, as the Complainant never fulfilled this condition, he withdrew any offer he might have made in the letter of July 31, 2002. The Respondent further asserts that the discussion on this point continued in his letter of September 30, 2002, a letter that the Complainant has chosen not to submit.

The Respondent holds that it is evident from this letter that he was open to remedying the situation by transferring the name if there were legal aspects of the trademark registration in Norway requiring such a transfer. The Complainant was accordingly requested to provide further information on this, if this was considered to be in violation of Norwegian law. Reference is made to the explicit request in the letter of July 31, 2002, from the Respondent.

As the Complainant did not prove any violation of Norwegian law on his behalf, the Respondent concluded that the Complainantís request for transfer is unfounded. The Response further elaborates on the alleged incongruities in Complainantís correspondence, but what seems obvious to the Panel is that there was certain amount of misunderstanding between the Parties in addition to their hardening positions at this juncture of their negotiations. The Response itself at this stage gets somewhat less clear in stating what are the alleged inconsistencies in the Complainantís position around the month of September 2002, and the following months.

The Respondent emphasises however that, in his opinion, it appears to be clear that his proposed attempt to resolve the dispute that would have existed if the Complainant had had adequate legal protection in Norway, can in no way be regarded as having been made in bad faith. The Respondent points out to several other WIPO cases, without citing any, that any such proposal for financial compensation shall, moreover, not be automatically regarded as having been made in bad faith.

The Respondent denies to have had any income from the website or the Domain Name, and alleges that he does not have any plans for any income-generating activities in the future. The Respondent tries to emphasises that in spite of the fact that he has rejected several Complainantís express written invitations and requests to contribute to a clarification of the Respondent's non-commercial activities, he does not have any plans to use the name in such a manner that it would be in violation of any of the rights of the Complainant.

The Respondent asserts that he has also repeatedly requested in writing that the parties meet with a view to clarifying any risk of misunderstandings and misuse of the Domain Name that is expressed by the Complainant, since the Respondent has stated expressly several times that he does not intend to use the domain name in any manner that would represent a violation of the Complainant's rights. These initiatives should document the good faith of the Respondent, in his view, as opposed to the allegations to the contrary by the Complainant. For reasons unknown to the Respondent, the Complainant has not responded to this in spite of repeated requests. The Respondent states that the Complainant has failed to mention any of these developments in the Complaint, but fails to produce any specific evidence in this respect either, except for the general course of correspondence already mentioned above.

The Respondent is also trying to raise the issue of the Complainantís failure to renew his Domain Name registration after it expired. The Respondent cites his repeated requests to be advised why the Complainant had not secured the rights to this domain name a long time ago, when it appears in retrospect that he is so interested in securing the rights to the name, the Complainant gave an explanation in his letter of November 27, 2000. It is evident there that the Complainant had registered the name, but had failed to renew it.

The Respondent asserts that the Complainant himself must be responsible for the consequences if he fails to renew a domain name. In this case the fundamental guiding principle of first come Ė first serve right applies. The reason why it was not renewed is of secondary importance, and it is also impossible for others to verify. The Respondent speculates that it could have just as well been an expression that the Complainant no longer desired to maintain this domain name, but that he regretted this decision afterwards.

During the period when the name was available, Respondent was in the market to acquire a domain name, and he found that this name was available. Thus he registered the name in good faith. He had obvious reasons to believe that if other parties had rights to the name, then it would have already been taken, since the registration was not carried out, as is known, until May 30, 2002, long after all the hype about domain names had subsided. The Respondent maintains that he had no knowledge of the domain's prior ownership history, and he was not interested in it either.

 

6. Discussion and Findings

The policy is addressed to resolving disputes concerning allegations of abusive domain name registration.

Paragraph 4(a) of the Policy establishes three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

i) Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

ii) Respondent has no rights or legitimate interests in respect of the domain name; and

iii) Respondentís domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a Complainant to warrant relief. They will be addressed separately below.

A. Identical or Confusingly Similar

The Complainant demonstrated to be the holder of several trademarks. In this Panelís view, the Swedish device mark including the words "TRYGG HANSA" and a life buoy is dominated by the textual portion consisting of the words "Trygg" and "Hansa". In addition the Complainant is a the holder of the Swedish word marks covering words "TRYGG" or "HANSA". The Complainant is also holder of a Norwegian word trademark "TRYGG HANSA". As stated above, the complainant is also rightful holder of the TRYGG-HANSA trademarks in France, Finland, Latvia, Estonia, Denmark, Great Britain, Poland, Benelux and Germany.

The similarity analysis shows that the Domain Name consisting of the words "Trygg" and "Hansa" joined by a hyphen is identical to the Norwegian word mark "Trygg Hansa". The Domain Name further contains elements identical to the Swedish trademarks "Trygg" and "Hansa" rendering the Domain Name confusingly similar to the various Complainant trademarks. Due to the word element being dominant in the "Trygg Hansa" Swedish trademark, and the life buoy graphic element actually joining the words in a manner similar to the function hyphen has in the Domain Name, the Panel holds that it is possible in this case to consider the Domain Name identical to the device trademark as well. It was held in Park Place Entertainment Corporation v. Mike Gorman, WIPO Case No. D2000-0699 (September 10, 2000), that: "the fact that Complainantís design element is not reproduced in Respondentís domain name is of no practical significance. Because domain names cannot include design elements, Internet users must seek a website by typing in the name they know, rather than a design element."

Having established that the Domain name and some trademarks rightfully held by the Complainant are identical, while some other are confusingly similar, the Panel did not further examine the trademarks held by the complainant in other countries.

In respect of the Respondentís allegations that the words "trygg" and "hansa" are per se generic the Panel notes that the trademarks contained them have been validly registered, widely used and have probably acquired significant acquired distinctiveness. In any case, the Panel does not agree with the Respondent that this issue is in any way central to this dispute. Even when it was found that the trademark itself might be generic in some jurisdictions, it has still been held that the question as such is outside the scope of the Administrative Proceeding (although it may be relevant to the 2nd and 3rd criteria). So in TPI Holdings Inc. v. JB Designs, WIPO Case No. D2000Ė0216 (May 22, 2000) the Panel stated: "While this Administrative Panel accepts that the Respondent may have merit in the argument that the said trademark is descriptive and that there are other similar trademarks and that the trademark may not be registrable in certain jurisdictions, these are questions outside the scope of this Administrative Proceedings and it concludes that the Complainant has satisfied the first part of the test." Accordingly, this Panel finds the argument on the generic-ness of the words constituting the Complainantís trademark to be moot in the context of par. 4(a)(i) of the Policy.

It seems from the Response that the Respondent concluded and holds that, so long as the Complainant holds a national (Norwegian) trademark registration in his country, in this case for "insurance services" (IC 36), that he can freely perform other activities on the Internet under the .com gTLD in all other fields. It appears to the Panel from the submitted evidence that this erroneous conclusion prevented the Parties from reaching a peaceful resolution of the dispute. Therefore, it is to be stated immediately that the Respondent, while being unaware of the various requirements set by Paras 1 and 2 of the Policy is apparently also unaware of the proper meaning of the requirement of the para 4 (a)(i) of the Policy. In other words, the Respondent erroneously holds that it is relevant that that the field he is active with the Domain Name is different from the class of the goods or services in which the Complainantís trademark is registered. It has been held in Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016 (March 27, 2000) that: "For the question of similarity in the context of the Policy it is not relevantÖ for which goods or services the trademark has been registered or that other identical or similar trademarks exist." Accordingly and by analogy, the list of the Norwegian enterprises whose company name includes the term "Hansa" submitted by the Respondent is found to have no relevance to this dispute as well.

The Respondent somehow reached a misguided conclusion that, as he has stated expressly several times that he does not intend to use the domain name in any manner that he perceived would represent a violation of the Complainant's rights he could continue to hold a Domain Name registered against the provisions of the Policy. The Respondent apparently misconstrued the Policy and by erroneous application of trademark law to a domain name dispute arrived at an untenable conclusion that Complainant does not have sufficient rights to preclude his registration of the Domain Name.

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Domain Name. Once a complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights apply, the burden of production on this requirement shifts to the Respondent to rebut the showing.

It is evident that the Respondent makes strong efforts to demonstrate that he is in compliance with the requirements of the para 4 (c) of the Policy. These efforts, in the Panelís opinion, amount only to a post facto attempt to justify total lack of demonstrable preparations to use the Domain Name in connection with bona fide offering of goods or services. The Respondent does not even try to claim that he has been commonly known by the Domain Name prior to any notice of the dispute, and he fails to show that he was at any point actually making a legitimate noncommercial or fair use of the Domain Name.

When the Respondent alleges that his plans to establish the site on a non-commercial basis are based on his own private work and that it is therefore not natural or necessary to have any business plan or other documents that are normally required by and associated with commercial endeavours the Panel concurs. The Panel does not consider the business plan to be a prerequisite for running a legitimate website, but at the same time the Panel disagrees with the Respondentís interpretation of a business plan as formal document in the sense of a corporate terminology. The Panel feels that the Complainant simply invited the Respondent to produce some evidence which could be relevant in the sense of the para 4 (c). Therefore, although it agrees that it is not apparent that the absence of such a commercial instrument can be of any significance as an argument in this Complaint it is more important that during the negotiations the Respondent did not attempt to provide a bona fide explanations or evidence of his actual position regarding his right or legitimate interests.

The Panel is not persuaded by the Respondents interpretation of his own actions and plans to use the Domain Name for establishing an Internet forum for discussions. The Panel notes that it is sometimes easy to offer post facto explanations for certain actions or inactions in a given context. The attempts to persuade this Panel that the Respondent chose the Domain Name, identical to the Complainantís registered trademark based on his conviction that Internet is a given medium to re-establish the medieval lifestyle harmony simply failed. After carefully considering the Respondentís elaborate statements and the submitted evidence this Panel finds them not to be persuasive enough to prevail and concludes that the Respondent did not establish any rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

Under Paragraph 4(b) of the Policy, evidence of bad faith registration and use includes:

(1) circumstances indicating the domain name was registered for the purpose of resale to the trademark owner or competitor for profit;

(2) a pattern of conduct showing an attempt to prevent others from obtaining a domain name corresponding to their trademarks;

(3) registration of the domain name for the purpose of disrupting the business of competitor; or

(4) "by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainantís mark . . ."

The Panel, after having carefully evaluated the evidence and the contentions of both Parties finds that on some 4(b) requirements, in order to resolve the present situation, it is necessary to infer the conclusions from the factual pattern that lead to this dispute. There is no "smoking-gun" to be found here, such as an open request for a payment that would constitute "valuable consideration in excess ofÖ documented out-of-pocket costs directly related to the domain name."

However, from the Respondentís overall behavior and from the fact that he turned down without further negotiation an offer for compensation of the costs in exchange for transfer of the domain name, which he himself originally invited to be made, the Panel infers that there was actually intention to sell the domain name at an undefined later stage. Namely, an offer in the amount of SEK 5000, which could, in the opinion of this Panel, be considered a reasonable compensation of the out-of-pocket costs directly related to the domain name, was not even seriously considered by the Respondent. The Respondent actually never made any further request documenting his real costs and proposing further negotiations. The only Respondentís concern discernible to the Panel was to deflect any accusation by the Complainant that he is trying to sell the domain, rather then to try to negotiate the transfer of the domain Name in good faith as he offered at the point before the compensation was discussed. The Panel cannot escape impression that the Respondent was from the outset aware of the UDRP requirements and that he tried to avoid the reach of para 4(b)(i). If the domain name was really not for sale at the moment of the first contact of the Parties, the Respondent could have made such a statement from the outset and behaved consequently. The conclusion of the Panel is that the Respondent actually turned down the Complainantís offer because it did not meet his unpronounced expectations after lengthy negotiations.

Realizing that not all of the circumstance of his behavior do not work in his favor, in a last ditch attempt to reverse the evidence against the meaning of his refusal to accept the reasonable reimbursement of the out-of-pocket costs directly related to the Domain Name, the Respondent enters in a lengthy argument of the context of his refusal to negotiate the transfer upon the Complainantís request to do so. He points to the alleged intention of the Complainant to pull his words out of the context.

The Panel does not side with the Respondent when he asserts that the Complainant attempted to hide elements of negotiations preceding the present dispute. In this Panelists experience, it is a rather common course of domain dispute transfer negotiations to have a prolonged period of attempting to resolve a dispute without resorting to a domain name dispute resolving mechanism under the UDRP or some other action. It cannot be held against a complainant who attempts to achieve a peaceful transfer of a domain name by exploring various settlement options that s/he somehow forfeited his/her rightful position to claim a domain name s/he may hold legally his/her right. In other words, a Respondent who did not achieve his negotiation goals cannot claim that his rights somehow grew legally stronger and better founded because of the mere fact that the negotiations were started and that his present Complainant has explored various good faith negotiation strategies.

Equally, this Panel disagrees that producing less then a complete set of correspondence by a Complainant would result in substantially weakening a Complainantís rights to claim a domain name, unless such conduct is made in bad faith. In absence of such elements in the present case, and after having had examined the contents of the complete correspondence between the Parties, the Panel finds that the fact that the correspondence has been produced by the Complainant only in its relevant parts is irrelevant for the position of the Parties in the dispute. As the complete documentation discloses only that the Complainant has been reasonably attempting to negotiate the transfer of the Domain Name he considers his rightful property, against somewhat less reasonable position of the Respondent, the Panel concludes that the Respondent is simply trying to construe Complainantís bad faith there where actually none is to be found.

In other words, this Panel holds that some inconsistencies in correspondence during the good faith negotiations with a possible future respondent should not be held against a possible future complainant. A failure of producing full correspondence, for example, simply cannot be held against a complainant unless such an omission is not made in an attempt to distort the realities of the course of events preceding an UDRP dispute.

Moreover, the Panel agrees with the Complainant when he points out to the established UDRP case law which states that using a domain name in bad faith is not limited solely to positive actions, and that the inaction is regarded as being within the concept. The four criteria set forth in the Policy paragraph 4(b) are nonexclusive. In addition to these criteria, other factors alone or in combination can support a finding of bad faith.

One such factor is that Respondent has made no use of the Domain Name. Complainant alleges that Respondent has not developed any active website at <trygg-hansa.com> or made any other use of the Domain Name. See Telstra Corp. v. Nuclear Marshmallows WIPO Case No. D2000-0003 (February 20, 2000).

In Telstra it was established that registration together with "inaction" and other facts can constitute bad faith use, and the Telstra decision has since been cited for that proposition and followed by subsequent Panels. Ingersoll-Rand v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021 (March 14, 2000); Guerlain, S.A. v. Peikang WIPO Case No. D2000-0055 (March 27, 2000); Compaq Computer Corporation v. Boris Beric WIPO Case No. D2000-0042 (March 30, 2000); Sanrio Company Ltd. and Sanrio, Inc. v. Neric Lau WIPO Case No. D2000-0172 (April 26, 2000); 3636275 Canada, dba eResolution v. eResolution.com WIPO Case No. D2000-0110 (April 13, 2000); Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc. WIPO Case No. D2000-0090 (April 12, 2000); Strålfors AB v. P D S AB WIPO Case No. D2000-0112 (April 17, 2000); InfoSpace.com, Inc. v. Tenenbaum Ofer WIPO Case No. D2000-0075 (May 2, 2000); Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367 (January 20, 2002).

It was held that, "[B]ecause Respondent is contributing no value-added to the Internet -- it is merely attempting to exploit a general rule of registration -- the broad community of Internet users will be better served by transferring the domain name to a party with a legitimate use for it." Educational Testing Service v. TOEFL WIPO Case No. D2000-0044 (March 17, 2000).

In Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 20, 2000) at 7.8-7.9 it is stated that: "(t)he significance of the distinction is that the concept of a domain name "being used in bad faith" is not limited to positive action; inaction is within the concept.". In Strålfors AB v. P D S AB, WIPO Case No. D2000-0112 (April 17, 2000) at 5 it is stated that: "Inaction is clearly within the concept of "being used in bad faith" and it is possible for inactivity by the Respondent to amount to the domain name being used in bad faith." It was also held by a learned Panelist that: "With regard to Ďbad faithí, paragraph 4(b) of the Policy sets out various circumstances which could constitute evidence of registration and use in bad faith, but it is not exhaustive. The Panel notes that paragraph 4(a)(iii) of the Policy requires both registration in bad faith AND use in bad faith. In some cases decided under the Policy it has been found that it is unnecessary to consider the two limbs of this provision separately, as the "use" requirement has been found not to require positive action, inaction being within the concept." See Cadbury Limited v. Jonathan Harris, WIPO Case No. D2000-1249 (December 13, 2000).

Therefore, in considering whether the fact that the Domain Name resolves to the standard providerís inactive domain name page constitutes an inaction amounting to bad faith, the Panel concludes that it does.

In addition to the stated above, the Panel considered some additional cases possibly relevant to the resolution of the dispute. In Weetabix Limited v Mr J. Clarke Ė WIPO Case No. D2001-0775 (October 13, 2000) it was decided that bad faith was established also where "the Respondent knew or should have known of the registration and use of the trade mark prior to registering the domain name". This Panel adheres to the position under which in the circumstances of regional usage of a registered trademark, a respondent cannot easily invoke a defense of not having constructive knowledge of a trademark registration(s). If such a usage is also offered over the Internet, such user should make a reasonable effort to learn whether the words constituting his domain name are protected, a "responsibility" required by para 2 of the Policy which states: "It is your responsibility to determine whether your domain name registration infringes or violates someone elseís rights." It is clear that the Complainantsí identifiers have been properly protected as trademarks. For these reasons the Respondent should have known, or likely even knew that the "TRYGG HANSA" trademarks are dully protected before registering the Domain Name.

Finally, the Respondent also succumbed to another widely held myth of the Internet users, which the Panel wishes to address. Namely, the Respondent holds that the gTLD names registrations are effectuated exclusively on the "first come-fist serve" basis. While this is true for the names registered in accordance with the Policy requirements, it never became true for those registrations effectuated contrary to the provisions of the Policy. Therefore, when the Respondent asserts that the Complainant himself must be responsible for the consequences when failed to renew a domain name, he is not right. In this sense, the Respondent invokes what he calls "fundamental guiding principle of first come Ė first serve right" as applicable. The Panel will seize the opportunity to state that regardless of whether an original domain name registration lapsed or a was never registered, a registration that has been effectuated has to be made in accordance with the Policy requirements to respect trademark holders rights.

The Panel concludes that much of Respondentís lengthy discussions are made in an attempt to distort the underlying facts, a method which another learned panelist in his decision called a "smokescreen". The Panel, considering all of the above, holds that the Domain Name is identical or confusingly similar to the various "TRYGG HANSA" trademarks owned by the Complainant, that the Respondent has no rights or legitimate interests in respect of the domain name <trygg-hansa.com> and that the Domain Name was registered and is being used in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <trygg-hansa.com> be transferred to the Complainant.

 


 

Mladen Vukmir
Sole Panelist

Dated: April 11, 2003