WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Svea Ekonomi AB v. Tomego/Stefan Svensson
Case No. D2004-0685
1. The Parties
The Complainant is Svea Ekonomi AB, Solna, Sweden, represented by Johan Sjöbeck, Groth & Co KB, Sweden.
The Respondent is Tomego/Stefan L. Svensson, Gothenburg, Sweden, represented by Stefan L. Svensson.
2. The Domain Name and Registrar
The disputed domain name <sveafinans.com> is registered with Register.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2004. On August 30, 2004, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On August 31, 2004, Register.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 September 1, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September 21, 2004. On September 9, 2004, the Respondent requested an extension of time for its response. The Center agreed to an extension until September 28, 2004. The Response was filed with the Center on that day.
The Center appointed Gunnar Karnell as the sole panelist in this matter on October 11, 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 registered trademark on which the Complaint is based is the Swedish word mark SVEA FINANS, registered on September 27, 1996; registration number 317 645 for classes 35 and 36.
The domain name <sveafinans.com> was registered by the Respondent on December 12, 2002.
The Complainant has demanded that the registration of the domain name be transferred to the Complainant.
The Respondent has claimed that the Complaint was raised in bad faith in an attempt at reverse domain name hijacking and urged the Panel to decide accordingly.
5. Parties’ Contentions
The Complainant was founded in 1981, and it has provided loans to the public since 1987. Its turnover has increased from approximately 3 million SEK in 1986, to approximately 200 million SEK in 2003. It has over 7000 customers and more than 185 employees. It has expanded its business to Norway and Finland, owning companies with the name SVEA FINANS also abroad. The Complainant also notes that since September 5, 2000, it owns a Swedish secondary company name SVEA FINANS.
a) The domain name <sveafinans.com> incorporates the trademark SVEA FINANS in its entirety. They are identical, but for the suffix .com.
b) The Respondent has no rights or legitimate interests in respect of the domain name. To the best of the Complainants’ knowledge, the Respondent is not an owner of any trademark, service mark or equivocal with a name similar to that of the domain name in question. Neither is the Respondent using the domain name in connection with a bona fide offering of goods or services without intent for commercial gain or to tarnish the trademark at issue. The Respondent is not commonly known by the name Svea Finans through his use of the domain name connected with the disputed domain name. The Respondent misleads and diverts Internet users (that are searching for the Complainant) to other commercial web-sites controlled by the Respondent and he takes unfair advantage of the Complainant’s trademark and the goodwill associated with it. Not until August 26, 2004, did the Respondent post a disclaimer on the web-site connected with the disputed domain name, informing Internet users that the Respondent has no connection with the Complainant.
c) The domain name was registered and is being used in bad faith. The Respondent registered the disputed domain name <sveafinans.com> on December 12, 2002. On the same date, the Complainant registered the domain names <sveafinans.net> and <sveafinans.org>. The Respondent registered the disputed domain name in order to prevent the owner of the trademark SVEA FINANS from reflecting the mark in a corresponding domain name under the gTLD .com.
The Complainant contacted the Respondent by phone in February and March 2004, and requested the Respondent to transfer the disputed domain name <sveafinans.com> to Svea Ekonomi AB.
The Respondent, however, explained that the disputed domain name generated a large amount of Internet traffic to the Respondent’s other commercial web-sites where the Respondent offered financial loans via competitors of the Complainant. The Respondent explained that as long as the Respondent would benefit financially from linking the disputed domain name to his commercial web-sites providing financial loans, there would be no transfer of the disputed domain name to the Complainant.
The Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent’s commercial web-sites by using the goodwill connected to the Complainant’s trademark SVEA FINANS in order to offer financial loans via competitors of the Complainant, such as Resurs Bank The Respondent is using the Complainant’s trademark in the very same branch of trade as the Complainant. The text on a web-site stated: “Would you like to borrow money without security? Apply here”. When applying, Internet users were forwarded to the Respondent’s other web-site, using with the domain name <lanapengar.com>. The text on the web-site stated: “Borrow money fast on the Internet. Would you like to borrow money? Borrow directly – quick and simple. Via <lanapengar.com> (a translation of the domain name would be “borrowmoney.com”) you can borrow money from Resurs Bank. You will receive an answer within hours during office hours. The application for the loan is done directly via the Internet – You receive a quick answer. The provider of the loan is Resurs Bank”.
On April 5, 2004, the Complainant sent a letter to the Respondent, requesting the domain name <sveafinans.com> to be transferred to the Complainant. The Complainant offered to reimburse the registration fee, so that the Respondent would be able to register a non-identical and non-confusing domain name. On April 26, 2004, the Respondent answered, claiming to be open to a discussion regarding a transfer within an undefined time period under certain circumstances that would not necessarily mean that the Complainant would have to pay a financial remuneration.
On May 4, 2004, the Complainant asked if the Respondent would like to explain the kind of “certain circumstances” he was referring to. The Respondent replied, on May 17, 2004, that he could perhaps part with the disputed domain name when it had a reduced search engines ranking. The Respondent claimed that he no longer worked actively with the domain name or the web-site connected with the domain name. Therefore, the domain name would loose ranking during the autumn. On June 3, 2004, the Complainant asked if the Respondent could be more precise regarding the time frame for a possible transfer. The Respondent declared that he would keep the domain name for as long as he had interest in it. On June 9 and 11, 2004, the Complainant asked the Respondent to declare once and for all whether he would be willing to transfer the disputed domain name to the Complainant or not. The Respondent replied that there would be no transfer.
It is an indisputable fact that the Respondent has actively used the domain name <sveafinans.com> in order to provide financial loans via at least one of the Complainant’s competitors, Resurs Bank. Thus, Internet users and potential customers to the Complainant searching for the Complainant’s trademark on the Internet have been forwarded to a competitor of the Complainant and the Respondent has been making money with the help of the Complainant’s trademark. The Respondent has used the goodwill associated with the Complainant’s trademark in order to attract for financial gain, internet users to the Respondent’s web-site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site.
In June 2004, the Complainant contacted the CEO of Resurs Bank (Mr. Kenneth Nilsson) regarding the fact that Resurs Bank was paying money to the Respondent for the Internet traffic and business generated from the disputed domain name, identical to the Complainant’s trademark. When this situation became clear to Mr. Nilsson, the Resurs Bank immediately terminated its co-operation with the Respondent and the link to the Resurs Bank was removed. As a last attempt to find an amicable solution, the Complainant contacted the Respondent on August 23, 2004, indicating that if the parties could not come to an agreement there would be no other options left for the Complainant but to have a WIPO Panel settle the dispute. The Complainant informed the Respondent that the complaint would be sent to WIPO on August 27, 2004. On August 26, 2004, the Complainant met the Respondent in person, to see if the parties could find a solution. The Respondent was interested in some kind of co-operation but still refused to transfer the domain name to the Complainant. After the meeting, the Respondent sent an e-mail to the Complainant, explaining that the web-site now had a disclaimer stating that <sveafinans.com> is not affiliated with Svea Ekonomi AB. Furthermore, the Respondent proposed co-operation and that the Respondent would exclusively provide loans via the Complainant’s business. The Respondent, however, did not mention any transfer of the disputed domain name. The Complainant replied the same day and proposed that the Respondent transfer the domain name to the Complainant and, in return, that the Respondent would be allowed to use the domain name for the next 12 months and provide loans via the Complainant’s business. The Respondent replied but did not provide an answer to the Complainant’s proposal regarding a transfer of the domain name.
On the basis of the above, Complainant asserts that the domain name <sveafinans.com> was registered primarily for the purpose of selling, renting, or otherwise transferring the domain name to the owner of the trademark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name. The Complainant and the Respondent are companies competing partly within the same branch of trade and therefore the Complainant believes that the domain name was registered also for the purpose of disrupting the business of a competitor.
Furthermore, by using the domain name as described above, the Respondent intentionally attempts to attract for commercial gain, Internet users to the Respondent’s web-site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web-site or location or of a product or service on the Respondent’s web-site or location. In addition to this, the registration was made in order to prevent the Complainant from reflecting its trademark in a corresponding domain name under the gTLD .com and to tarnish the trademark by linking it to competitors of the Complainant.
a) The domain name <sveafinans.com> is identical to the Complainant’s trade mark. However, there has never been any confusion or indeed any risk of confusion. Nor has the Respondent ever tried to mislead or divert Internet users.
The Complainant’s trademark is registered for the classes 35 Business administration, Office management and 36 Economic administration. The domain name <sveafinans.com> does not market services under these classes. To the best of the Respondents’ knowledge, the Complainant does not provide loans to private persons. Still, the Complainant writes in his complaint that he is “supposed to provide loans to companies and private persons”. However, this direction was brought on only as late as July 7, 2004, at a shareholders’ meeting.
The Complainant asserts that it has provided loans since 1987. The Respondent does not conceive what kind of loans they are. No information is found on the Complainant’s web-site, nor in its Economic Statements for the year 2003, about any loan service. The Respondent assumes that loans to the public, as there indicated, are factoring credits. Svea Finans is not a well known company, brand or service. Back in year 2002, (when <sveafinans.com> was registered) there was no evidence on the web-site “www.sveaekonomi.se”, regarding the existence of a company, brand or service called Svea Finans, nor about any services providing loans. Under Business Idea & Vision 2002, the Complainant explains its goals, not mentioning starting a loan service. The trademark SVEA FINANS or a company name reflecting it was not internationally known when the domain name <sveafinans.com> was registered by the Respondent in December 2002. Svea Finans AS in Norway was founded in April 2003. Furthermore; the Complainant has no intentions to market “svea finans” as a company or trademark which will provide loans. When the Complainant starts to provide loans this autumn, they choose to market their loans under the name of Svea Direkt (<sveadirekt.se>), a subsidiary founded in August 2004.
b) The Respondent has legitimate interests in respect of the domain name. Since February 2003, the Respondent has created a web-site and marketed a domain name and service, known to provide loans or to help Internet visitors searching for loans on the Internet. The domain name has been in use since its registration and it is still in use. The Respondent has, in a bona fide manner, offered a private loan service, not competing with nor disrupting the Complainant’s business, because the Complainant shows no evidence of offering loans. Ever since February 2003, the Respondent has built recognition amongst Internet users, who have been searching for a loan service.
The web-site “www.sveafinans.com” has been, since it was launched, optimized to be found under high volume search terms such as loans, private loans, fast loans and bank loans on the Search Engine’s Result Pages. Hence, the Respondent is commonly known by the domain name <sveafinans.com>.
The Respondents’ business includes web-sites such as “www.direktfinans.com” and “www.lanapengar.com”, consequently making the Respondent less known as a loan provider, quite contrary to the Complainant, who has not yet launched such a service on the Internet. The Complainant argues that the Respondent takes unfair advantage of the Complainant’s trademark and the goodwill associated with it. But the trademark SVEA FINANS is not commonly known or found on the Internet. The Complainant has not provided any kind of evidence to verify his statement. The Respondent does not want to be recognized as, nor connected to, either Svea Ekonomi or Svea Inkasso, the latter known as a debt collector, who has handled over 750 000 debt collection cases. Quite a few presumptive customers of fast loans have problems with debt collection cases.
The domain name <sveafinans.com> is aimed at being found by Search Engines, for search phrases such as loans and bank loans, not for misleading and diverting Internet users that are searching for the Complainant. None of the Complainant’s web-sites is found on the Search Engines Result Pages under the search phrases above. A search for “svea” or “svea finans”, will not give any results for <sveafinans.com> in the Search Engine Results Pages, nor for the term “svea ekonomi” or “svea inkasso”. It is doubtful, since “svea finans” is not commonly known, if any one of Svea Ekonomi’s customers, would type “www.sveafinans.com” in the address field of a web browser in order to find Svea Ekonomi. Hence, the allegations of misleading and diverting Internet users searching for the Complainant are false. There is a company called Svea Finans AS in Norway. However, that company was founded in April 2003, after the Respondent registered <sveafinans.com>.
c) The domain name was never registered and used in bad faith. The word or name Svea is in common use in company names in Sweden. According to the official Swedish Company Register more than 100 companies carry the name Svea. A search on Yahoo shows around a quarter of a million (approximately 295 000) pages containing the word or name Svea. The Complainant, as well as the Respondent, shares the word Svea with several other companies and domain names. There are 13 598 women in Sweden carrying the surname Svea. Svea also associates to mother Svea (“moder Svea”), referring to the finances of the state of Sweden. Svea is also a name of a region (Svealand) in Sweden and it was the origin of the name to Sweden (Sverige) – Svea kingdom (Svea rike). Finans/Finance is a commonly known descriptive word. <sveafinans.com> is a generic domain name. Anyone could come up with the domain name without having the Complainant in mind.
The reason to register <sveafinans.com> and to create the first version of the web site, was to show banks, such as GE Capital Bank, the Respondent’s ability to build a professional web-site on the Internet, for selling loans to the public. The goal was to get a contract with GE Capital Bank, where the Respondent, as an agent, would mediate private loans. The Respondent came up with the domain name <sveafinans.com> when he tried to combine the word finance (finans) with a word referring to Sweden. The Respondent had previous experience of the Internet loan market in Norway from his employment at Digtective AS. Most of Digtective’s customers were loan agents. In Norway the Internet loan agents often use the name for finance, finans – <realfinans.no>, <parkfinans.no>, <roefinans.no>, <eufinans.no>, to describe their business. Inspired by the Norwegian Internet loan agents and with a goal to start an Internet loan service in Sweden, the word finans (finance) in the domain name, was a first priority. The Respondent wanted to differentiate by his domain name from other Internet loan agents, mainly Norwegian, since there were no Swedish Internet loan agents in 2002. The Respondent knew that the Norwegian Internet loan agents were about to establish themselves in Sweden at that time. After a name check on the Internet, where “svea finans” or “sveafinans” were not found, nor any competing business with a similar name, the Respondent decided to register the domain name <sveafinans.com>.
The web-site <sveafinans.com> was launched in February 2003, and was in full use for the rest of 2003. When the Respondent finally closed an agreement of co-operation with GE Capital Bank, via the domain name <direktfinans.com>, the Respondent chose to close the previous pages on <sveafinans.com> from public viewing. The advice not to use <sveafinans.com>, came from Groth & Co, the Complainant’s authorised representative. GE had given Groth & Co the task to make an identity research regarding five service marks in June 2003. There were five possible agents and their companies/domain names were to be considered in that aspect. Groth & Co gave advice to GE not to use <sveafinans.com> because they believed there could be a name confusion with the company Svea Ekonomi AB. The Respondent had to accept the decision and had to choose another domain name which in January 2004, was to be <direktfinans.com>. What the Respondent at that time did not know, was that Groth & Co also managed the account of Svea Ekonomi and had to take care of the Complainant’s best interest as well. At the same time, GE wanted to make sure that the Respondent was suitable as a loan agent. Since the Respondent passed the “quality control”, it is fair to say, that he is not a person guilty of bad conduct. The decision in February 2004, was to leave one page at the domain name open (sveafinans.com/info.html) where Internet users had the choice to visit “www.lanapengar.com”. At that time the Respondent had joined the affiliate program of TradeDoubler and had started marketing loans of Resurs Bank.
The Respondent’s present intention with the domain name <sveafinans.com>, when the dispute is over, is to publish more pages on the web-site, informing Internet users how and where to apply for loans. It is a valuable domain name since it has many incoming links, is registered and indexed in the most important Search Engines for the Swedish market and the web pages are optimized for high rankings in the Search Engines. It is also a commonly known web-site to visitors searching for loans, since it has been in use for over one and a half year.
From the day <sveafinans.com> was launched in February 2003, and until today, the Respondent has never tried to take advantage of the business of the Complainant. The sites are different in design and have never competed with each other before. The domain name <sveafinans.com> also has its own logotype. There has never been an intention to create a likelihood of confusion with the Complainant’s trademark. When <sveafinans.com> was registered by the Respondent, there were no other domain name names registered with the name sveafinans or svea-finans. The trademark SVEA FINANS was not commonly known and it still is not. The allegations that the Respondent wanted to prevent the Complainant from reflecting the mark in a corresponding domain name under the gTLD”.com” are not at all true. The Respondent has not been engaged in a previous pattern of cyber squatting and the Complainant lacks evidence of actions thereof. Its authorized representative (Groth & Co), has visited several domain names managed by the Respondent, at several occasions, without finding reasons to raise any questions about any such irregular activities.
From 1996, when the trademark SVEA FINANS was registered, until December 2002, the Complainant had the opportunity to register the sveafinans or svea-finans. They also had Groth & Co under payroll to manage their trademarks and to prevent hijackings. So, why did the Complainant not register any domain name containing the name “svea finans” during this period? On the very same day when the Respondent registered <sveafinans.com>, the Complainant registered <sveafinans.net> and <sveafinans.org>. Of these three domain names, the domain name under the gTLD .com is the most valuable and, in kind, most common to register first. The Respondent opines that he registered his domain name first and that the Complainant discovered this and registered its domain name afterwards. The Respondent also raises the question if the Complainant, through Groth & Co, had a monitoring service, checking if any domain name with the name “svea” was registered under the gTLD .com. Unfortunately there is no time stamp for the registration of <sveafinans.com> to verify this. If then the Complainant received information already in December 2002, from Groth & Co that the domain name <sveafinans.com> was taken, why not then claim its right to the domain name? In January 2003, the Complainant also registered <sveafinans.se>. Why register that domain name (and .org, .net) and not use them actively to build a well known trademark? Today, these domain names have a redirect to <sveaekonomi.se>. Should not the Complainant at this time be aware of the presence of <sveafinans.com>? Why not claim its rights then? Is it because <sveafinans.com> does not compete with the Complainant’s business? When the Complainant contacted the Respondent in February 2004, its representative asked if the Respondent could consider giving up the domain name <sveafinans.com> to his employer, not mentioning any disruption of the business, nor that there was competition between the Parties. The Respondent refused, since he had used the domain name for over a year, still had the intentions to use it and had done search engine optimization of the web-site to generate traffic volume.
As the Complainant puts it, “The Respondent benefits financially from linking from <sveafinans.com> to other commercial web-sites providing loans” this is not completely accurate. The reason from the beginning was to show possible partners in the banking industry the Respondent’s ability to create and market a professional web-site, offering private loans on the Internet. Thereafter, the purpose of <sveafinans.com> has changed, whereas today it is the high ranking on the search engines for relevant search terms such as bank loans (banklån), which is the real benefit of the domain name. Today, incoming Internet visitors can choose to continue to look for private loans at Yahoo where the Respondent and other competitors are found. If then a visitor chooses to apply for a loan at, for example, <lanapengar.com> (managed by the Respondent), the Respondent will receive a commission via the affiliate program of TradeDoubler.
The allegation that the Respondent “is using the Complainant’s trademark in the very same branch of trade as the Complainant”, offering loans via Resurs Bank, is not true, since Resurs Bank and Svea Ekonomi are not competitors in the fields of private loans. It is true that they both compete within factoring. The Complainant recently started a banking service and intends to start a new loan service but has not yet launched its service.
On April 26, 2004, the Respondent answered the Complainant regarding their request to transfer the domain name <sveafinans.com>. The Respondent replied that the parties did not compete in the same industry. By then, the Respondent did not know of the Complainant’s intentions to market the very same service on the Internet. The Respondent explained that during the time the Respondent had used the domain name, he had not pretended to have anything to do with the Complainant. The Respondent also said that he never registered or used the domain name in bad faith nor has a historical background as a domain name hijacker. The Respondent was surprised that the Complainant, at this time, i. e. over a year from the first registration date, showed interest in the domain name. He was suspicious regarding the real purpose for a request to transfer. The domain name is valuable for anyone who wants to offer loans, since it is commonly known within loans on the Internet and it has high rankings on the Search Engines such as Google, MSN and Yahoo.
The Respondent has never agreed to a transfer to the Complainant, only stated that he might not reregister or that he would liquidate the domain name under certain circumstances. The reason for not giving a clear answer was his suspicion about why the Complainant had this upcoming interest in the domain name. Was it because of the high rankings in the Search Engines? When the Complainant contacted the Respondent on June 3, 2004, the Respondent had found out through own research that the Complainant intended to offer private loans, something the Complainant had never mentioned to the Respondent before.
In June 2004, Mr. Lennart Ågren, CEO of Svea Ekonomi, called Mr. Kenneth Nilsson, the CEO of Resurs Bank, and told him about his view regarding <sveafinans.com>, never mentioning that they were future competitors to be within private loans. No one was “discussing the fact that the Competitor was paying money to the Respondent for the Internet traffic”, as the Complainant puts it, because Mr. Nilsson did not know about the existence of <sveafinans.com> nor paid any money for the traffic. Mr. Nilsson was confused about the situation and told a colleague to look into it. The colleague, in his turn, informed TradeDoubler about the phone call. TradeDoubler then contacted the Respondent and said that they were worried about <sveafinans.com>. The Respondent himself took the decision to change the content on the web-site <sveafinans.com>, since he was not sure of the content of the previous phone call. These are the true facts and not what the Complainant argues, saying that “When the situation became clear to Mr. Nilsson, the competitor immediately terminated the co-operation with the Respondent and the link to the competitor was removed”. Resurs Bank has never terminated its co-operation agreement with the Respondent. On August 15, 2004, CEO Lennart Ågren called the Respondent and the Respondent told him to write an e-mail regarding the purpose of his contact. The next week, the Complainant sent an e-mail, asking for a transfer, to which the Respondent never replied, believing that the request was a hostile takeover relating to an intention to start competing within the private loan market. Then, CEO Lennart Ågren called the Respondent again, asking for a meeting. The Respondent agreed and a meeting was booked between the Respondent and Mrs. Lena Selander (Product manager for Svea Direkt) for August 26, 2004, the day before the complaint to the WIPO. The Respondent assumed that by sending Mrs. Selander, who was to start the Complainant’s new loan service on the Internet, the Complainant wanted to discuss a co-operation. Similar meetings that the Respondent had previously had with Resurs Bank (via TradeDoubler) and GE Capital Bank. A reader of the complaint about what happened on August 26, 2004, might get the impression that the Respondent was eager to find a solution. The Respondent did not initiate this meeting, nor did he suggest a co-operation, as the Complainant alleges. On August 26, 2004, the Respondent met with Mrs. Selander for a one and half hour meeting. The conversation was friendly and openhearted. The Respondent told her that he would never give up the domain name, and absolutely not to a future competitor as <sveadirekt.se>. Either the dispute would be filed at WIPO or both parties would have to find a solution. Mrs Selander expressed an interest in discussing co-operation, because the Respondent was unwilling to give up his domain name. When she asked the Respondent to write down an idea for co-operation, the Respondent was not sure about whether he could trust the Complainant, a future competitor. The Respondent agreed that he might send her a suggestion by mail, under certain circumstances. These certain circumstances were that if the Complainant later would file a complaint at WIPO, the Complainant would not be in a position to use the discussions about possible co-operation against the Respondent, trying to make him look like he was acting in bad faith. Also, as he told Mrs. Selander, any confidential material would be public, were a WIPO dispute to be filed. Mrs. Selander promised the Respondent not to use their discussion of a possible co-operation against the Respondent. The plan for a co-operation is now, nevertheless, used by the Complainant in its complaint, as evidence of an act of bad faith. Later that afternoon, the Respondent sent his suggestions. Later, the Respondent discovered on his online web-site monitor, that a person from Groth & Co, had taken documentation off <sveafinans.com>. The Complainant later replied to the plan with a request of a domain name transfer in exchange for a co-operation. The Respondent did not accept the proposal under these circumstances.
The disclaimer on <sveafinans.com> was posted after a request from Mrs. Selander. She argued that if the Respondent posted a disclaimer, this action would please the Complainant and be of a benefit for the future. The Respondent now raises the question if the meeting was only a way to find out more information about the Respondent and his business, may be also trying to find ways to make the Respondent act in bad faith, so as to lure him to sell the domain name to the Complainant.
The Complainant argues that “the Respondent offered financial loans via competitor of the Complainant”. This statement is wrong, since the Complainant does not offer private loans. The Complainant offers misleading facts, trying to show, wrongfully, that the Respondent acts in bad faith. The Complainant wants a hostile takeover of his domain name in order to generate business to its new service to be, private loans at <sveadirekt.se>. The Complainant knows how valuable <sveafinans.com> is, since it also works with web-sites (“www.svea-direkt.com” and “www.svea-ekonomi.com”) optimized for the Search Engines. During the pending of this dispute, the Complainant has registered <svea-finans.com>.
The Respondent argues that
- the domain name was neither registered nor used in bad faith by the Respondent. - The Respondent has never tried to or had any intention to sell the domain name.
- the domain name has been in active use all the time, without intentions of disrupting the Complainant’s business.
- the Complainant has never been in competition with the Respondent.
d) The Respondent seeks a finding of Reverse Domain Name Hijacking on the basis that the Complainant is using its financial muscle in an attempt to bully the Respondent into giving up the domain name. The Respondent complains that the Complainant has made no proper effort to discover how and why the Respondent acquired the domain name. The Respondent objects to the fact that the Complainant did not bother to contact the Respondent until February 2004; by then he put time, money and effort into activities such as Search Engine optimisation of the domain name. The Complainant wants to take advantage of the work that the Respondent has done with Search Engine Optimisation of the domain name and it wants to use the domain name because of its high rankings with search engines. The Respondent alleges that the Complainant has mislead the Panel by stating that the parties involved are competitors and/or how they are in competition with each other.
6. Discussion and Findings
A. Identical or Confusingly Similar
The domain name in issue is identical to the Complainants registered trademark SVEA FINANS, the .com part to be disregarded.
B. Rights or Legitimate Interests
At the time of registration of the domain name <sveafinans.com> the Complainant’s trademark SVEA FINANS had been registered for more than six years. The Panel finds no indication that the trademark was in real use in Sweden for what was intended to be covered by the registration during that period. Already after five years, the trademark registration was at risk of being annulled (cf. 25 a § of the Swedish Trademark Act (1960:644); an effect that might have been achieved by the Respondent, had he been able to prove that the registration meant prejudice to his business endeavors ( 26 §). Now, the Panel finds it likely that he did not know about the trademark registration at the date of registration of the domain name. The Panel concludes that, at least, he made efforts to avoid conflict with rights by checking the Internet.
This, however, is not a case about trademark infringement. It is only about whether the Policy criteria of similarity, lack of rights or legitimate interest as well as registration and use of the domain name in bad faith are all met (Policy under paragraph 4(a)).
The Respondent’s only right to be regarded here is the one that relates to his domain name registration and, in particular, to his legitimate interests as they relate to what information has been introduced in the proceedings about the use he has made of it in his business.
The parties agree that on the same day as the Respondent registered his domain name the Complainant registered two domain names containing the word sveafinans, namely <sveafinans.net> and <sveafinans.org>. The Panel believes that these latter registrations were made as a consequence of the Respondent’s registration, as contended by the Respondent; there is no indication offered that the Complainant tried, on that day or earlier, to register <sveafinans.com> for itself. Also, the Panel finds no evidence that the Respondent would have used his domain name under other circumstances than as a bona fide offering of his services, nor does it find reason to believe that the Respondent ever intended, by use of its domain name for commercial gain misleadingly, to divert consumers of services offered by the Complainant or to tarnish its trademark SVEA FINANS. There is no evidence of prior knowledge of the Complainant’s trademark on the Respondent’s side at the time of the registration of the domain name in question. The account of events as described by both parties allows for the conclusion that the Respondent has a legitimate interest in his domain name.
C. Registered and Used in Bad Faith
Having come to the conclusions under B. above, the Panel would be free to leave the issue here under C. without further consideration. Nevertheless, it appears fair to provide a short explanation about the Panel’s findings under the present heading, not least as a background to the conclusion of the Panel regarding the hijacking issue raised by the Respondent.
The Complainant has alleged that the Respondent’s domain name was “registered primarily for the purpose of selling, renting or otherwise transferring the domain name to the owner of the Complainant’s trademark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name”. The Complainant also alleges that both parties compete “partly within the same branch of trade”.
This may today be correct, but what has here been taken into account is the situation at the registration of the domain name and uses that have followed. At the time of registration of the domain name, as it can be read out of the documents entered in evidence in these proceedings, the Complainant was not active in the field of business that was being established by the Respondent – or at least not so active as to be known for it for use and also possibly not even indubitably in conformity with its own publicized legal basis, accessible to the Respondent, as made known to the Panel.
Based on the case file, this Panel is not in a position to find bad faith registration or use. However, the Panel notes the location of the Parties and wishes to stress that its findings are obviously without prejudice to any possible future decision taken by a national court based on national law.
D. Reverse hijacking
Possibly, the Complainant may have been slow in reacting against the uses of the domain name by its owner. However, the Complainant’s actions or failure to react against the Respondent’s activities may well have been motivated by bona fide business considerations related particularly to the sphere of information inaccessible to the Respondent. What may be seen as a competitive relationship to one party may, for unknown reasons to that party, well be otherwise evaluated at one time or another by the other party. The Panel will not reproach the Complainant for any behavior evidenced to the Panel in these proceedings. Information provided to the Panel does not bring indisputable clarity to the matters at hand. Consequently, the Respondent’s request in this respect shall be denied.
The Complainant’s request for transfer of the registration of the domain name <sveafinans.com> to the Complainant is denied.
The Respondent’s request that the Panel decide that the Complaint was filed in bad faith in an attempt at reverse domain name hijacking is rejected.
Dated: October 15, 2004