Complainant is Aktiebolaget TeliaSonera (“TeliaSonera AB”), Stockholm, Sweden, represented by Melbourne IT Digital Brand Services AB, Stockholm, Sweden.
Respondent is Cenal.com Ltd., Hong Kong SAR, People's Republic of China. No appearance has been entered on behalf of Respondent.
The disputed domain names <teliawebmail.com> and <webmailtelia.com> are registered with Enom Inc., Bellevue, WA, United States of America (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2009. The Center acknowledged receipt of the Compliant on March 21, 2009.
On March 18, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 18, 2009, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 March 23, 2009. The notifications were addressed to Respondent by email, facsimile, and courier addressed to the addresses specified in the registration records of Respondent and provided in the Complaint.
In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2009. Respondent did not submit any Response. Accordingly, the Center notified Respondent's default on April 14, 2009.
The Center invited Richard Allan Horning to serve as the sole Panelist in WIPO Case No. D2009-0356, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence on April 23, 2009.
On April 26, 2009, the Center received the email from Respondent, in which Respondent stated its willingness to transfer the disputed domain names to Complainant. On April 30, 2009, the proceeding was suspended upon Complainant's request to allow for the transfer. On May 12, 2009, the Center received the request from Complainant concerning the reinstitution of the proceeding. The Center confirmed the re-institution of the proceeding on the same day.
The Center appointed Richard Allan Horning as the sole Panelist in this matter on May 14, 2009. The projected decision due date was May 28, 2009. The Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Policy, Rules and WIPO Supplemental Rules.
The Panelist shall issue his Decision based on the Complaint, the Policy, the Rules, the WIPO Supplemental Rules, and without the benefit of any Response from Respondent.
Complainant, TeliaSonera AB is a leading provider of mobile and advanced telecommunication services on a worldwide basis. TeliaSonera provides services for transferring and packing of voice, data, information, transactions and entertainment. The share is listed on the NASDAQ QMX Stockholm and NASDAQ QMX Helsinki Stock Exchange.
Complainant has registered the trademark TELIA, a phrase common to the domain names at issue, for data and telecommunication products and services in more than 30 countries worldwide, covering goods and services in the International Classes 9, 38 and 42, including Hong Kong SAR, People's Republic of China (Complaint, Annex 5).
Complainant has also used the trademark TELIA, incorporated in about 250 gTLD and ccTLD domain names worldwide, among these: <telia.com>, <telia.com.hk> and <webtelia.com> (Complaint, Annex 7).
The Panelist finds that in accordance with the provisions of Article 6bis of the Paris Convention for protection of Industrial Property (“PC”) as confirmed and extended by Article 16.2 and Article 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”), the mark TELIA has acquired the status of a well-known trademark, providing the owner with the right to prevent any use of this well-known trademark or a confusingly similar denomination in connection with any products or services.
Respondent registered the domain names <teliawebmail.com> and <webmailtelia.com> on September 18, 2004 (Complaint, Annex 2).
At the time of the submission of the dispute to the Panelist the <teliawebmail.com> website registered by Respondent resolved to a site “teliawebmail.com/handcrafted2.asp”, which presents a website appearing to host email services. The <webmailtelia.com> domain resolves to a similar website suggestive of a variety of email services.
Complainant contends that Respondent has registered domain names which are nearly identical to and confusingly similar to the service marks and trademarks registered and used by Complainant, that Respondent has no rights or legitimate interests in respect to the domain names at issue, and that Respondent has registered and is using the domain names at issue in bad faith.
Respondent has not contested the allegations of the Complaint.
Paragraph 15(a) of the Rules instructs the Panelist as to the principles the Panelist is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
(i) that the domain names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and,
(ii) that Respondent has no rights or legitimate interests in respect of the domain names; and,
(iii) that the domain names have been registered and used in bad faith.
The Panelist finds that domain names at issue are either identical (Hewlett Packard v. Cupcake City, NAF Claim No. FA93562; America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., NAF Claim No. FA93679) or confusingly similar (Marriott International, Inc. v. John Marriot, NAF Claim No. FA94737; Identigene, Inc. v. Genetest Laboratories, WIPO Case No. D2000-1100; Seiko Epson Corporation & Epson America, Inc v. Distribution Purchasing & Logistics Corp, NAF Claim No. FA94219) to Complainant's marks.
The addition of the different suffix and prefix to the trademark TELIA diminishes the overall impression of the dominant part of the name, TELIA, recognizable as a “famous” trademark. Dr. Ing, h.c.F.Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488 holds that confusing similarity is recognized when well-known trademarks are paired up with different prefixes and suffixes with the intent or the effect of creating public confusion.
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the domain names at issue. Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011. Respondent is not commonly known by the domain names at issue, and has not acquired trademark or service mark rights in the domain names. The Panelist finds that Respondent has no rights or legitimate interest in the domain names.
The question thus arises whether the domain names at issue has been registered and is being used in bad faith. Paragraph 4(b) of the Policy sets forth “in particular but without limitation” circumstances which “shall be evidence of registration and use of a domain name in bad faith.” Those circumstances are:
(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 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 your web site or location or of a product or service on your web site or location.
Complainant has alleged and the Panelist finds that Respondent's use of the domain names at issue constitutes bad faith registration and use under the Policy under the circumstances of this particular dispute.
Respondent's registration of the domain names prevents Complainant from fully controlling the commercial use of its trademarks and more particularly the domain names which is identical or substantially similar to Complainant's registered trademarks. Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314, established that any use of a famous trademark in a domain name will violate the rights of the trademark owners. This ruling applies here.
The Panelist further notes that Respondent agreed in its email to the Center dated April 26, 2009 to the transfer of the domain names to Complainant. “Please transfer the domains to the Complainant.” The subsequent refusal of Respondent to complete the transfer is evidence of bad faith under these circumstances.
Respondent's use of the domain names at issue to promote email and other services similar to those offered by Complainant is evidence of bad faith. Policy paragraph 4(b)(iv).
For all of the foregoing reasons, the Panelist decides that the domain names registered by Respondent are identical or confusingly similar to the trademarks and service marks in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain names, and that Respondent's domain names have been registered and are being used in bad faith.
Accordingly, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <teliawebmain.com> and <webmailtelia.com> be transferred to Complainant.
Richard Allan Horning
Dated: June 5, 2009