WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NetClean Technologies Sweden AB v. Eric Pansegrau
Case No. D2007-1294
1. The Parties
The Complainant is NetClean Technologies Sweden AB, Gothenburg, Sweden, represented by Wistrand Advokatbyrå, Sweden.
The Respondent is Eric Pansegrau, Incline Village, Nevada, United States of America.
2. The Domain Name and Registrar
The disputed domain name <netclean.com> is registered with Register.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2007. On September 3, 2007, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On September 4, 2007, Register.com transmitted by email to the Center its verification response confirming that:
(a) it is the registrar for the disputed domain name;
(b) the Respondent is listed as the registrant of the disputed domain name;
(c) the contact details for the administrative, billing, and technical contacts provided in the Complaint are correct;
(d) English is the designated language under the Registration Agreement for the disputed domain name; and
(e) he registration of the disputed domain name is subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy”).
The Center verified that the Complaint satisfied the formal requirements of 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 11, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 1, 2007. An email communication from the Respondent was received on September 11, 2007. No further, formal Response has been received subsequently.
The Center appointed Mr. Warwick A. Rothnie, as the sole panelist in this matter on October 16, 2007. 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 and Parties Contentions
According to the Complaint, the Complainant’s business and trade name, NetClean Technologies Sweden AB, was registered on September 3, 2003 and it has been carrying on a business of developing computer technology software since then.
Annex 4 to the Complaint which is tendered in support of this claim appears to be the Certificate of Registration of the Complainant as a company and gives the date of registration as October 22, 2003. The Certificate itself is dated August 1, 2007 and, under the heading “Date of Registration of Current and Previous Company Names” lists the following:
2004-07-30 NetClean Technologies Sweden AB
2003-10-22 Larix Software AB.
Again, according to the Complaint, the Complainant has been using the name “NetClean” since September 3, 2003 as a brand and trademark not only for the whole company, but also for its products. The products are stated to be high technology IT-products operating to block the flow of child pornography material on the Internet.
The Complaint states that the Complainant is currently operating in Sweden, Norway, Denmark, Switzerland and the Netherlands and is expanding to New Zealand and Australia. It is involved in the World Childhood Foundation which is supported by Her Majesty the Queen of Sweden. The Complainant claims customers among national police forces, foundations as well as commercial enterprises and private persons. The Complainant owns the domain name <netclean.se>.
It states that in 2006 its turnover was approximately Euros 270,000.
The Respondent is an individual located in the United States of America. He claims that he registered the disputed domain name in August 2001. The details provided by Register.com in response to the Center’s request for registrar verification confirm that the domain name was first registered with it on August 6, 2001.
It would appear that for much of the time since then, the domain name has lain dormant. There has been a period in March 2007, however, when the domain name resolved to a website that looked much like the Complainant’s website at “netclean.se”. The Complainant contends that this was a counterfeit site with links to third party sites and advertisers. The Respondent’s email correspondence with the Complainant suggests that the site was some sort of mirror site of the Complainant’s site. At the time of preparing this decision, the disputed domain name resolved to a generic search portal which has links to sites such as Toilet Pump Out & Clean, Help the Earth, Carpet Cleaning Melbourne etc.
On October 1, 2006, the Complainant approached the Respondent by email seeking to buy the domain name. The Complainant eventually offered $300 while the Respondent, having indicated that both parties were in business to make money, had in mind $150,000.
The correspondence languished until April 2007 when the Respondent, this time, sought to revive the negotiations. Before the Complainant carried out its threat to turn matters over to its lawyers, it raised its bid eventually to $4,000, while the Respondent came down to $75,000, suggested the possibility of leasing the domain name and even payment by installments of $1,000 per month over three years. There was also some discussion about participation in stock options.
5. Discussion and Findings
Strictly speaking, the email from the Respondent does not comply with the formal requirements under paragraph 5 of the Rules. It is obvious, however, that the Respondent has been properly notified of the Complaint and has had an opportunity to state his defense.
Accordingly, under paragraph 4(a) of the Policy the Complainant has the burden of proof in respect of the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
The Panel deals with each of these elements in turn.
A. Identical or Confusingly Similar
There are two parts to this inquiry: does the Complainant have trademark rights and, if so, is the disputed domain name identical or confusingly similar to it?
At this stage of the inquiry, Panels have usually been prepared to disregard when the Complainant’s trademark rights accrued, confining consideration to the comparison of the signs and leaving questions of competing priorities to be addressed under the other limbs of the Policy. See e.g. Digital Vision, Ltd v. Advanced Chemill Systems, WIPO Case No. D2001-0827.
The Complainant does not claim any registered trademark rights. Rather, it states that its established trademark right is obvious through the recognition it has achieved.
The details provided to support this claim are slender. As noted above, however, the Complainant does use the domain name <netclean.se>. The website includes a banner stylized form of NETCLEAN which is marked ™. It has also provided evidence of press releases and testimonials and states that its turnover in 2006 was Euros 270,000.
The Complaint does not indicate whether or not Swedish law recognizes protection for unregistered trademarks. The Panel notes, however, that the Complainant states its business is operating in Norway and an earlier Panel has found that Norwegian trademark law does recognize rights in unregistered trademarks: Skattedirektoratet v. Eivind Nag WIPO Case No. D2000-1314.
Accordingly, the Panel is prepared to proceed on the basis that the Complainant has trademark rights in “NetClean” for purposes of the proceedings.
The Respondent’s domain name differs from these trademark rights only by the addition of the gTLD “.com”. These differences can be disregarded.
Accordingly, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark rights in NETCLEAN and/or <netclean.se>.
B. Rights or Legitimate Interests
The second factor that the Complainant is required to establish is that the Respondent has no rights or legitimate interests in respect of the domain name.
Paragraph 4(c) sets out three examples of rights or legitimate interests for the purposes of the Policy. They are:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial 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.”
These are not an exhaustive enumeration of rights or legitimate interests, they are examples only.
It is now very well established that, in view of the difficulty in disproving a negative, the Complainant must adduce sufficient material to raise a prima facie case under this factor and then an evidential burden shifts to the Respondent to rebut that prima facie case. An early example in which this proposition was established is Sony Kabushiki Kaisha v Sony.net WIPO Case No. D2000-1074.
The Complainant states that it has not authorized the Respondent to use the domain name. The domain name is not derived from the Respondent’s own name.
The Complainant relies on the inactive or passive nature of the use of the domain name and the Respondent’s claim in the email communications between the parties that the only reason for his ownership of the domain name was so that he could sell it for a profit.
These considerations are usually sufficient to trigger a prima facie case of lack of rights or legitimate interests.
The Respondent contends that the domain name was originally registered for his wife’s cleaning business, but became dormant after the birth of their child. He makes no bones about having retained the domain name because it is relatively inexpensive to do so in the hope of turning it to a profit in the future.
No evidence has been provided in support of the claim that the domain name was originally used in connection with the house cleaning business previously operated by the Respondent’s wife. In the absence of some supporting evidence of this claim, the Panel is not prepared to act on the basis of that claim.
It is not in dispute between the parties, however, that the Respondent registered the domain name in August 2001, at least two years before the Complainant claims to have started using the term “NetClean”.
The expression “net clean” is not very, if at all, distinctive and borders on the descriptive.
In these circumstances, it is difficult to see a basis on which the Complainant could legitimately have objected to the registration of the domain name when the Respondent registered it. It is possible, however, that the use the Respondent has subsequently made of the domain name could be the subject of legitimate complaint by the Complainant. Whether such use would go so far as to disentitle the Respondent to the domain name entirely, rather than interdiction of the particular misleading or infringing use, is another matter.
It is not necessary to resolve this inquiry finally, however, as for the reasons the Panel discusses below, the Complainant fails on the third limb.
C. Registered and Used in Bad Faith
The third requirement that the Complainant must demonstrate to succeed is that the disputed domain name has been registered and used in bad faith. In connection with this factor, paragraph 4(b) of the Policy provides:
“(b) Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location.”
The Complainant relies heavily on the Respondent’s purpose of turning the domain name to a profit and, first, the framing of the Complainant’s website at the website to which the domain name resolved for a short period and, secondly, the use of the domain name for a generic search portal.
Whatever may be said of the Respondent’s use of the domain name in 2007, it is not feasible that the Respondent registered the domain name in bad faith in 2001. As noted above, that was at least two years before the Complainant claims to have come into existence and started using its trademark. There is no suggestion here of any special circumstances such as the Respondent having some prior knowledge of the Complainant’s plans before the Complainant could launch its business. In such circumstances, the Complainant must fail: See e.g. John Ode d/ba ODE and ODE - Optimum Digital Enterprises v. Intership Limited WIPO Case No. D2001-0074 and Digital Vision, Ltd. v. Advanced Chemill Systems WIPO Case No. D2001-0087 and Proto Software, Inc. v. Vertical Axis, Inc/PROTO.COM WIPO Case No. D2006-0905.
Accordingly, the Panel finds that the domain name was not registered in bad faith. As it is clear beyond dispute under the Policy that both the registration of the domain name and its manner of use must be in bad faith, therefore, the Complainant has failed to establish this requirement under the Policy.
For all the foregoing reasons, the Complaint is denied.
Warwick A Rothnie
Dated: October 29, 2007