WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Posten AB v. ControlAltDelete
Case No. D2003-0950
1. The Parties
The Complainant is Posten AB, of Stockholm, Sweden, represented by Domain and Intellectual Property Consultants DIPCON AB, Sweden.
The Respondent is ControlAltDelete, of Stockholm, Sweden..
2. The Domain Name and Registrar
The disputed domain name <posten.com> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 27, 2003. On November 28, 2003, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On December 3, 2003, Network Solutions, LLC 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 December 4, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 24, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on December 29, 2003.
The Center appointed Anders Janson as the sole panelist in this matter on January 12, 2004. 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.
4. Factual Background
The Complainant, Posten AB, is wholly owned by the Swedish Government. The Complainant has been commissioned by the State to guarantee the consignment of letters, parcels, and cashier services throughout Sweden and internationally. The Complainant belongs to an international network, which includes, inter alia, La Poste in France. The international collaboration provides the Complainant with a strong position in 23 European countries. The main market for the Complainant is, however, in the Nordic and Baltic Regions.
The trade name "Posten" has been established on the Swedish market since 1636, and is one of the strongest and most well known trademarks in Sweden. The Complainant is one of Swedenís largest companies with more than 40,000 employees and sales of approximately EUR 2,5 billion per year. The trademark POSTEN was registered in 1997.
The Complainantís business has previously been focused on physical mail- and parcel handling. The Complainant is now, however, also focused on services over the Internet, such as e-mailbox, e-security and e-ID among other things, and is getting well known as a provider of these Internet services.
The Complainant asserts it owns a number of domain names including the whole, or parts of, the registered trademark POSTEN, such as, inter alia, <posten.se>, <posten.biz>, <posten.info>, <posten.nu>, <posten-sweden.org>, postensweden.net>, <posten-sweden.org>, <postbutik.com>, <postbutik.info>, <postbutik.net>, <postbutik.org>, <posten-scerige.com>, <postensweden.com>, <posten-sweden.com>, <swedenpost.net>, <sweden-post.net>, <swedenpost.org>, <swedishpost.net>, <swedishpost.org> and <swedishpostgroup.se>.
The Complainant was first aware of the Respondentís registration of the disputed domain name in 1996, but was at the time not able to convince the Registrar Network Solution LLC to cancel the registration made by the Respondent. In October 1996, the Complainant sent a cease and desist letter.
The Respondent responded on October 14, 1996, that it would not consent to the request.
The Respondent sent a notice to the press on November 5, 1996, offering five companies, of which none was the Complainant, to purchase domain names, all with the gTLD ".com", and which contained their respective names. The Complainant also received the notice. The companies were offered to buy the domain names for USD 5000, or the domain name would remain in the Respondentís possession. Alternatively, the domain name would be transferred to a foundation called "Cyberfriend" which allegedly had been formed to financially help those who "got into trouble" through the Internet. If the companies agreed to purchase the domain names, 70% of the purchase sum would go to the foundation.
The Respondent is not associated with the Complainant. The Panel notes that the disputed domain name does not resolve to an active website. The Panel further notes that the Respondent had an active website in 1996.
The Panel notes that the enclosed documents are in Swedish even though the language of the proceeding is in English. However, since all parties, as well as the Panel, are Swedish, no translation has been made of these documents, and the Panel will consider them in the Swedish language as they were filed.
5. Partiesí Contentions
The Complainant contends that the disputed domain name is identical and 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 disputed domain name.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The Complainant asserts that the Respondent is a "cybersquatter" who has repeatedly registered as domain names trademarks belonging to others, using ControlALtDelete, PDS and Pro Dive as registrant names. The Respondent has previously been the subject of two lawsuits in this regard, both cases before the U.S District Court for the Eastern District of Virginia. The Respondent has also been the subject of several WIPO procedures, such as Sydkraft v. ControlAltDelete, WIPO Case No D2000-0381, Arla Ekonomisk Föreninge v. PDS and Tony Lennartsson, WIPO Case No D2000-0151 and Vattenfall AB v. PDS, WIPO Case No D2000-0359. The Complainant asserts that the Respondent has become well known for registering famous trademarks for the purpose of selling them to their rightful owner for valuable consideration in excess of its documented out-of-pocket costs. In evidence thereof, the Complainant has submitted articles from Swedish newspapers about the Respondent and its actions. The Respondent has engaged in a pattern of bad faith registrations.
The Complainant further asserts that the website that was active in 1996 did not specifically state that it had no affiliation with the Complainant. By the contents of the website it is clear that some contributions on the message board were made from the assumption that the website was affiliated with the Complainant.
The Complainant also asserts that the Respondent, by registering the disputed domain name and thus hindering the Complainant to register the same, causes Internet users to incorrectly believe that the Complainant does not have an Internet presence. This action seriously interferes with the Complainantís business and marketing since the top level domain ".com" is the most common and most important, thus being the top level domain the Internet users are most likely to use. The Respondent has continuously paid the renewal fee, thus not making it possible for the Complainant to register the disputed domain name.
The Complainant finally contends that the disputed domain name <posten.com>
should be transferred to the Complainant.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The domain name at issue is <posten.com>. The Complainant is the holder of the well-known and registered trademark POSTEN. The relevant part of the disputed domain name is identical to the Complainantís registered trademark. When determining whether a domain name and a trademark are identical or confusingly similar, the gTLD and ccTLD which constitutes the suffix must be disregarded.
The Panel finds that the disputed domain name is identical with the Complainantís registered trademark. The Panel therefore holds that the Complainant has established element (i) of the Policy's paragraph 4(a).
B. Rights or Legitimate Interests
When the Respondent does not have an obvious connection with the disputed domain name, the assertion from the Complainant that the Respondent has no right or legitimate interest may be enough to shift the burden of proof to the Respondent to demonstrate that such right and legitimate interest exists. In this case, the Respondent has not filed a Response in accordance with the Rules, paragraph 5.
The Panel finds it established that the Respondent is not in any way affiliated with the Complainant.
The Respondent has not demonstrated or argued that he used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services or that any other right or legitimate interest exists. Registration of a domain name in itself does not establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy. The use that was made of it in 1996 and for an unknown period of time thereafter cannot be considered as a bona fine offering of goods and services.
In conclusion, the Respondent has not presented any evidence of rights or legitimate interests in using the disputed domain name and has no obvious connection to it. The Panel therefore holds that the Complainant has established element (ii) of the Policy's paragraph 4(a).
C. Registered and Used in Bad Faith
Finally the Panel has to consider the question of the disputed domain name having been registered and used in "bad faith."
Paragraph 4(b) of the Policy identifies, without limitation, circumstances that shall be evidence of the registration and use of the domain name in bad faith for the purpose of paragraph 4(a)(iii). The circumstances specifically named in the Policy, paragraph 4(b), do not by necessarily involve either action or inaction in relation to the disputed domain name. Inaction can, in certain circumstances, constitute a domain name being used in bad faith. In addition, the circumstances stated under paragraph 4(b) are not exclusive.
The Respondent has not presented any reasons, evidence or arguments of a legitimate interest in using the disputed domain name. There are no obvious reasons for the Respondent to have a legitimate use of the domain name. The Complainant is the registered owner of the trademark POSTEN that has been established by the Panel to be well known and recognizable. It is highly unlikely that a Swedish citizen by coincidence would have registered the disputed domain name, as the trademark incorporated therein has been in use by the Swedish Government for more than 300 years.
From the case file, it is clear that the Respondent has offered to sell other domain names to the holders of the respective trademarks for a sum which clearly is in excess of the out-of-pocket costs. It is of no relevance that a large percentage of this purchase sum allegedly would go to a foundation. The Respondentís actions in this respect are evidence of bad faith. The Panel finds it established that the Respondent has engaged in a pattern of such behavior.
The disputed domain name prevents the Complainant from registering the domain name. It is the Panels opinion that the Complainantís business is being damaged by the fact that Internet users, who are likely to search for the Complainant under the top level domain name ".com", will be lead to believe the Complainant does not provide information on the Internet, or offers Internet services.
Considering all of the above, the Panel finds that the Respondent has registered the disputed domain name in bad faith, and that it is not possible to conceive any plausible legitimate use of the domain name by the Respondent. In light of these particular circumstances, the Panel therefore concludes that the Complainant has proven that the Respondent was acting in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
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 <posten.com> be transferred to the Complainant.
Date: January 26, 2004