WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

AB Kvällstidningen Expressen v. Mr. Marcus Ekholm

Case No. DNU2003-0001

 

1. The Parties

Complainant is AB Kvällstidningen Expressen of Stockholm, Sweden, represented by Danowsky & Partners Advokatbyrå KB of Sweden.

Respondent is Mr. Marcus Ekholm of Nacka, Sweden..

 

2. The Domain Name and Registrar

The disputed domain name <expressen.nu> is registered with ".NU" Domain Ltd.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 24, 2003. On March 27, 2003, the Center transmitted by email to ".NU" Domain Ltd. a request for Registrar Verification in connection with the domain name at issue. On March 27, 2003, ".NU" Domain Ltd. transmitted by email to the Center its Verification Response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Registrar also confirmed that the Uniform Domain Dispute Resolution Policy applied to the Registration, that the language of the Registration Agreement is English and that Respondent had submitted, in that Agreement, to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning, or arising from, the use of the domain name.

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 Respondent of the Complaint, and the proceedings commenced on April 4, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was April 24, 2003. The Response was filed with the Center on April 24, 2003.

The Center appointed Mr. Henry Olsson as Sole Panelist in this matter on May 7, 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. The Projected Decision Date was May 21, 2003.

 

4. Factual Background

The Complainant is a limited corporation established under the laws of Sweden and has its principal place of business in Stockholm. The evening newspaper "Expressen" was first published in 1944. Complainant is the owner and publisher of the newspaper which has a daily issue of around 350,000 copies.

In accordance with Paragraph 3(b)(xiii) of the Rules, Complainant agrees to submit, only with respect to any challenge that may be made by Respondent to a decision by the Administrative Panel to transfer or cancel the domain name at issue, to the jurisdiction of the courts at the location of the principal office of the concerned Registrar.

 

5. Partiesí Contentions

A. Complainant

Complainant first alleges that in accordance with Policy, Paragraph 4(a), Respondent is required to submit to a mandatory administrative proceeding because the domain name is identical or confusingly similar to a trademark in which Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the trademark or the domain name and that the domain name was registered and is being used in bad faith.

Complainant submits that Complainant holds and uses the trademark "Expressen" since 1944 and that the mark is used in connection with newpapers, magazines, photographs, advertisement and marketing texts and photographs inter alia in databases on the Internet containing such material. In fact, according to Complainant, "Expressen" is one of the most well-known newspapers and trademarks in Sweden.

Complainant alleges that it holds exclusive rights in the trademark at issue in classes 14, 16, 25, 28, 35, 38, 39, 41 and 42. To support this, Complainant has submitted a copy of a registration certificate relating to the trademark. Furthermore, Complainant alleges that it is also holder of the registered domain name <expressen.se> and that the domain name at issue in this case is clearly identical or confusingly similar to the trademark "Expressen" and the domain name <expressen.se>. In fact, according to Complainant, "Expressen is one of the most well-known trademarks in Sweden.

Complainant mentions also that Complainant, in addition to the paper version of the newspaper Expressen, also publishes an Internet version of the paper under the domain name <expressen.se>.

As regards the activities of Respondent, Complainant alleges that a Swedish mailing address has been registered in connection with the domain name at issue and that the material presented on the website of Respondent is in the Swedish language. Complainant stresses that Respondent is a Swedish resident and is aware that the trademark "Expressen" and the domain name <expressen.nu> exclusively belong to Complainant. Therefore, the domain name <expressen.nu> should be considered to have been registered and used in bad faith.

Complainant underlines that the website <expressen.nu> is directed towards a Swedish audience. According to Complainant, the website includes a lot of material that is provocative and such as to damage the name and the goodwill associated with the newspaper and the trademark "Expressen."

In summary, Complainant calls the attention to the following circumstances when considering the elements under Paragraphs 4(b) and c) of the Policy:

- The domain name <expressen.nu> was registered by Respondent with the knowledge that it would disrupt the business of Complainant;

- Respondent has, by registering and using the domain name, at issue intentionally attempted to attract Internet users to its website or on-line location by creating a likelihood of confusion with the trademark of Complainant as to the, source, sponsorship, affiliation, or endorsement of the website of the Registrant as to products or services on the website or location of the Registrant;

- Respondent has not been commonly known by the domain name and has not acquired any trademark or service mark;

- Respondent is making a non-legitimate use of the domain name, with intent to divert consumers and to tarnish the trademark at issue.

In accordance with Paragraph 4(i) of the Policy, for the reasons described above, the Complainant requests the Administrative Panel appointed in this administrative proceeding to issue a decision that the contested domain name be transferred to the Complainant or cancelled.

Complainant adds, finally that to its best knowledge no other legal proceedings have been commenced or terminated in connection with, or relating to, the domain name <expressen.nu>.

B. Respondent

In its Response, Respondent first submits that <expressen.nu> is an underground website and not a news site like <expressen.se>. It has been present on the Internet since autumn 1999, and according to Respondent, Complainant has known about the site since February 2001. Respondent stresses that the website at issue at the beginning had no visitors and after three months perhaps about 100 visits. In March 2003, the site had, according to certain sources that Respondent refers to, more than 500,000 visitors.

As regards legitimate interest, Respondent asks if legitimate interest is not shown by the fact that that today the site has nearly 20,000 unique visitors per day/day and one year ago about 6,000 such visitors per day.

Respondent stresses that it never tried to sell the domain at issue to Complainant or made any effort to make money from the use of the name of Complainant, and, furthermore, never tried to be like Complainant. Therefore, according to Respondent, the domain name at issue cannot be said to be used in bad faith.

Respondent submits that the website <expressen.nu> is directed towards a Swedish audience that is around 15 to 25 years and is established for that audience.

Respondent adds that it never heard anything from Complainant until January 23, 2003, when the authorized representative of Complainant sent a number of papers. Also, Complainant submits, a number of Swedish firms use the word "Expressen" in their company names, such as "Orientexpressen," Tåg-Expressen," "Masexpressen," "Idreexpressen" and others.

 

6. Discussion and Findings

Paragraph 15 of the Rules prescribes that the Panel shall decide a Complaint on the basis of the statements made and documents submitted and in accordance with the Policy, the Rules and any principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that Complainant has to prove each of the following:

- that the domain name registered by Respondent is identical with, or confusingly similar to, a trademark or a service mark in which Complainant has rights;

- that Respondent has no rights or legitimate interests in the domain name; and

- that the domain name has been registered and is being used in bad faith.

In the following part of the Decision, the Panel discusses each of those elements.

From the Registrar Verification follows that the Policy is applicable to the registration of the domain name at issue. There is consequently an obligation for Respondent to submit to a mandatory administrative proceeding as the one now initiated in respect of the domain name.

A. Identical or Confusingly Similar

In this respect, Complainant has, according to Paragraph 4(a)(i) of the Policy, to prove that the domain name at issue is identical with, or confusingly similar to, a trademark or a service mark in which Complainant has rights.

The domain name at issue in this case is <expressen.nu>.

Evidence presented in the case shows that Complainant is the owner of the registered trademark "Expressen" which is, in the view of this Panel, a mark which is well known in Sweden for a widely known evening newspaper.

The domain name at issue contains the trademark with the addition of ".nu." As has been clearly established in several earlier domain name dispute cases, this is an addition which does not remove the likelihood of confusion with a trademark. The Panel therefore finds it to be established that the domain name at issue is confusingly similar to the trademark in which Complainant has rights.

B. Rights or Legitimate Interests

In this respect, Complainant has, according to Paragraph 4(a)(ii) of the Policy, to prove that Respondent has no rights or legitimate interests in the domain name at issue.

Complainant has invoked basically that Respondent has not been commonly known by the domain name and has not acquired any trademark or service mark rights. Respondent has, in this respect, referred to the fact that the website under the domain name at issue has a great number of visitors and asked whether this is not a sign of a legitimate interest in the domain name.

Upon consideration of the evidence in this case the Panel can find no such connection between Respondent and the domain name at issue that could suggest any form of legitimate interest in the sense of the Policy. What Respondent has mentioned to the effect that the number of visits is a sign of legitimate interest is, from the point of view of the Policy, of no relevance when determining the issue of legitimate interest from a legal point of view.

Therefore, the Panel finds it to be established that Respondent has no rights or legitimate interests in the domain name at issue in the sense of the Policy.

C. Registered and Used in Bad Faith

In this respect, Complainant has, according to Paragraph 4(a)(iii) of the Policy, to prove that the domain name has been registered and is being used in bad faith. Furthermore, Paragraph 4(b) of the Policy sets out some circumstances which, in particular but without limitation, shall, if found to be present by the Panel, be considered as evidence of registration and use in bad faith.

Complainant has invoked several circumstances in order to prove the bad faith of Respondent. Such circumstances are that the trademark "Expressen" is well known in Sweden and that Respondent is a Swedish resident and, furthermore, that the contents on the website is provocative and aimed at damaging the name and goodwill of Complainant. Therefore, Respondent has, according to Complainant registered the domain name primarily for the purpose of disrupting the business of Complainant and has tried to create a likelihood of confusion with the mark of Complainant.

Respondent, on the other hand, has basically stated that it never tried to make money out of the website and never tried to be like Complainant and also referred to the website as an "underground" phenomenon.

The Panel accepts what Respondent has said in the sense that it never tried to make money out of the domain name at issue and also that the website is completely different from the news-oriented website of Complainant. It is thus clear that there is no real competition in the sense of the Policy between Complainant and Respondent. Also, there is no evidence that the website under the domain name at issue has been used for any specific commercial gain by Respondent. It is, furthermore, not evident that the direct purpose of the registration and use of the domain name is, or has been, to disrupt the business of a competitor. Rather the circumstances present in the case indicate that Respondent has been well aware both of the trademark "Expressen" and of the fact that this trademark is well known among the Swedish public and that Respondent has registered the domain name in order to use that wide knowledge of Complainantís trademark to attract as many users as possible to its own website. Respondent must have been well aware that the use of the domain <expressen.nu> almost automatically make the Swedish public believe that the website is linked to the newspaper and thus presumably make the website particularly attractive.

It is of course fully legitimate per se from the point of view of the Policy to establish an "underground" website with provocative content, but this must not be done in a way that violates intellectual property rights of others. Respondent could have chosen among many other ways to create an attractive website than including the well-known mark of Complainant in its domain name. By nevertheless doing so, Complainant has used that trademark for attracting users to the website to the detriment of interests and trademark rights of Complainant. In the view of the Panel this action by Respondent amounts to registration and use of the domain name at issue in bad faith in the sense of Paragraph 4.b of the Policy.

D. Conclusions

On the basis of these considerations, the Panel considers it established that the domain name at issue is confusingly similar to the trademark in which Complainant has rights, that Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and is being used in bad faith.

Complainant has, as remedies, requested the transfer of the domain name or cancellation of it without clearly indicating its preference. The Panel assumes that the alternative mentioned as the first one, i.e. a transfer, is Complainantís preference. Consequently, the Panel approves the request for transfer of the domain name.

 

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 <expressen .nu> be transferred to Complainant.

 


 

Henry Olsson
Sole Panelist

Dated: May 13, 2003