WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vattenfall AB v. John Madison
Case No. D2011-0443
1. The Parties
Complainant is Vattenfall AB of Stockholm, Sweden, represented by Nihlmark & Zacharoff Advokatbyra AB, Sweden.
Respondent is John Madison of Worchester, Massachusetts, United States of America.
2. The Domain Name and Registrar
The disputed domain name <wattenfall.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2011. On March 8, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On March 16, 2011, GoDaddy.com, Inc. 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 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 5, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 6, 2011.
The Center appointed Nasser A. Khasawneh as sole panelist in this matter on April 21, 2011. 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
Complainant owns Community Trademark registration number 000740282, registered in 2001 for classes 4, 6, 7, 9, 11, 16, 19, 35, 36, 37, 38, 39, 40, 41 and 42 for the figurative mark including a logo and the word “VATTENFALL.” Complainant owns other Community Trademark registrations for the word trademark VATTENFALL including Community Trademark number 005376876, registered in 2008 in classes 4, 6, 7, 9, 11, 12, 16, 19, 35, 36, 37, 38, 39, 40, 41, 42, 44, and 45. Complainant also owns International trademark registration number 756155, registered in 2000 for classes 9, 35, 36, 37, 38, 39, 40, 41 and 42 for the trademark VATTENFALL.
The disputed domain name was registered July 22, 2005. The disputed domain name routes to a parking page displaying sponsored links, including links to commercial enterprises in the energy sector.1
5. Parties’ Contentions
Complainant avers that it is wholly owned by the Swedish government, that it has used its VATTENFALL trademark continuously since it began business in 1909, and that for the past fifteen years it has done business broadly beyond Sweden, throughout Europe. In its 2009 Annual Report, Complainant represents that it is Europe’s fifth largest supplier of energy.
In its legal allegations, Complainant contends that (1) the disputed domain name is confusingly similar to Complainant’s well-known VATTENFALL trademark, particularly because the disputed domain name is aurally indistinguishable from the trademark in Swedish; (2) Respondent has no rights or legitimate interests in the disputed domain name, since Respondent uses it only to route to a website displaying sponsored advertising links for businesses, including those in the energy field, and (3) Respondent, an English speaker, knowingly adopted the disputed domain name in bad faith to attract consumers to its website by using a confusingly similar domain name, since the disputed domain name has no meaning in English.
Complainant adds to its bad faith allegations that the disputed domain name is used to display links to the energy sector in which Complainant is active, which constitutes a form of typo-squatting found by prior UDRP panels to establish bad faith, citing Georgia Power Company, the Southern Company v. Wang Congming, WIPO Case No. D2008-0234.
Complainant avers that it sent cease and desist letters to Respondent at the address appearing in the WhoIs record, all of which have been undeliverable, but that in emails, Respondent has declined to agree to transfer the disputed domain name to Complainant.
On the basis of the foregoing allegations, Complainant seeks transfer of the disputed domain name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish with respect to the disputed domain name the elements of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Complainant must establish these elements even if Respondent does not submit a response. See, e.g., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a Response, the Panel may also accept as true the reasonable factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
A. Identical or Confusingly Similar
Although the disputed domain name is not identical to Complainant’s VATTENFALL trademark, the Panel agrees with Complainant that the disputed domain name is confusingly similar.
Panels disregard the domain name suffix in determining whether a disputed domain name is identical or similar to a complainant’s marks. See e.g., HUK-COBURG haftpflicht-Unterstützungs-Kasse kraftfahrender Beamter Deutschlands A.G. v. DOMIBOT (HUK-COBURG-COM-DOM), WIPO Case No. D2006-0439; VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315.
Removing the suffix from the disputed domain name, the term “wattenfall,” the Panel finds, is, as alleged by Complainant, phonetically and visually similar in Swedish to Complainant’s VATTENFALL trademark. The Panel concludes, therefore, that the disputed domain name is confusingly similar to Complainant’s mark. See, e.g., PartyGaming Plc. , PartyGaming IA Limited v. Harry Thomas, WIPO Case No. D2008-1275 (disputed domain name <gamebukers.com> confusingly similar to GAMEBOOKERS mark for phonetic reasons (transfer denied on other grounds) citing Medtronic, Inc. v. gotdomains4sale.com, WIPO Case No. D2001-1033; Microsoft Corporation v. Mike Rushton, WIPO Case No. D2004-0123).
The fact that a screenshot of Respondent’s website from 2006 in the annexes to the Complaint contains a link entitled “Vattenfall” is further support for the Panel’s finding of confusing similarity. That link also suggests that Respondent was aware of Complainant’s trademark, which is relevant to the Panel’s finding of bad faith, below.
The requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i)-(iii).
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests. E.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).
Complainant avers that Respondent is not commonly known by the disputed domain name, and that Respondent’s use of the name is not bona fide, but instead limited to display of a commercial website containing sponsored link advertising. In the absence of a response, the Panel accepts as true these undisputed factual averments by Complainant.
As shown in exhibits to the Complaint, Respondent’s website displays “sponsored listings” which link to third-party websites. The diversion of traffic to third parties and their products demonstrates that Respondent is using the disputed domain name for commercial purposes. See, e.g., The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit . . . in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)). See also Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya ILtd, WIPO Case No. D2006-1079.
In short, the Panel agrees with Complainant that Respondent is seeking to attract Internet users through Complainant’s mark for Respondent’s own commercial purposes. The Panel therefore finds that Respondent’s use of the disputed domain name demonstrates Respondent’s lack of a legitimate noncommercial interest in, or fair use of, the disputed domain name. See e.g., Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784. The Panel also finds that the Complaint makes out a prima facie case.
Filing no response, Respondent has not rebutted Complainant’s prima facie case or invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in use of the disputed domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established, as elaborated below.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, including the failure to reply to a complaint. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
As in the circumstances in the typosquatting case cited by Complainant, Respondent’s choice of a domain name so phonetically similar to Complainant’s trademark is strong evidence of bad faith. The Panel finds that Respondent was undoubtedly aware of Complainant’s VATTENFALL mark, which Respondent deliberately mimicked in its <wattenfall.com> domain name to create confusion and attract Internet users to its website for commercial gain. Therefore, the Panel concludes that Respondent registered the disputed domain name in bad faith. See, e.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co, WIPO Case No. D2000-0163.
Respondent’s website shows that the disputed domain name is used to promote the offerings of Complainant’s competitors in the energy field. The Panel concludes that this activity evidences bad faith use by Respondent. mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 (citing Google, Inc. v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO Case No. D2000-1240; Casio Keisanki Kabushiki (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400; Downstream Technologies, LLC v. Bartels System GmbH, WIPO Case No. D2003-0088); DaimlerChrysler Corporation and DaimlerChrysler Service North America LLC v. LaPorte Holdings, Inc., WIPO Case No. D2005-0070, (citing Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031).
Respondent’s absence of a response to the Complaint provides further support for the Panel’s finding of bad faith.2
The Panel concludes therefore that, in addition to having registered the disputed domain name in bad faith, Respondent is also using the domain name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <wattenfall.com> be transferred to Complainant.
Nasser A. Khasawneh
Dated: May 5, 2011
1 The Panel has undertaken limited research by visiting the website to which the disputed domain name routes. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 4.5. The appearance of the website on line is consistent with its appearance in annexes to the Complaint.
2 Complainant provides scant detail about alleged communications between Complainant and Respondent. Consequently, the Panel is not in a position to rule whether Respondent’s alleged failure to cease using or transfer to Complainant the disputed domain name following the alleged communications is evidence of Respondent’s bad faith.