WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Folkia AS, reg. no. 990892 040 v. Namesale.com / Daniel Kline
Case No. D2011-0856
1. The Parties
The Complainant is Folkia AS of Oslo, Norway represented by Tobias Edvardsson, Sweden.
The Respondent is Namesale.com / Daniel Kline of Gothenburg, Sweden, represented by SNR Denton US LLP, France.
2. The Domain Name and Registrar
The disputed domain name <folkia.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2011. On May 18, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On May 18, 2011, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 23, 2011, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on May 24, 2011.
The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on June 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 27, 2011. The Response Due Date was extended to July 4, 2011. The Response was filed with the Center on July 4, 2011.
The Center appointed Adam Taylor as the sole panelist in this matter on July 6, 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.
The Complainant made an unsolicited supplemental filing on July 14, 2011. The Respondent responded with a supplemental filing on July 22, 2011. The Complainant filed an additional supplemental filing on July 22, 2011. On July 24, 2011, the Respondent replied to Complainant’s supplemental filing. On July 24, 2011, the Complainant made an additional supplemental filing.
Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of supplemental filings. Paragraph 10(d) states: “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence. Paragraph 12 states: “In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties.”
The principles which the Panel should apply in deciding whether or not to admit supplemental filings have been considered in many cases under the Policy. See, e.g., The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447. The principles include: that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimize prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.
The Complainant’s first supplemental filing sought to rectify allegedly incorrect translations of certain documents by the Respondent and to refute assertions by the Respondent as to earlier prior trade mark rights, the nature of the parties’ relationship and the extent of assignment of rights as between the parties. The Complainant also raised new arguments as to bad faith based on the Respondent’s use of a privacy service and the Respondent’s alleged efforts to sell the disputed domain name.
The Respondent’s first supplemental filing objected to admission of the Complainant’s filing and also made a number of observations in relation to the translation issue.
The other three filings simply amounted to a continuing debate between the parties, principally relating to the translation issue.
The Panel decided to admit the filings insofar as they relate to the translation issue because the Complainant could not reasonably have been expected to anticipate this matter when it filed its Complaint. Further, the Panel considered it important that it gains as complete an understanding as possible of important documents in the case.
The Panel has decided not to admit any other parts of the filings. While the Complainant may not have foreseen the exact nature of the Respondent’s argument, it cannot have come as a complete surprise that the Respondent might assert that the parties’ relationship had generated rights and legitimate interests in the disputed domain name. This matter could and should have been addressed in the Complaint. Yet the Complainant failed even to exhibit the relevant documents which explained the nature of that relationship. Similarly, there is no reason why the Complainant’s new arguments concerning bad faith could not have been addressed in the Complaint.
The Panel issued a Procedural Order No. 1 on July 27, 2011, in which it advised the parties of its decision as to admissibility of supplemental filing. The Panel stated that it believed that the Respondent had already had sufficient opportunity to respond in relation to the translation issue but that the Panel was nonetheless prepared to allow the Respondent to make a further final submission on the translation issue only by July 28, 2011. The Respondent duly made its submission. It went far beyond the translation issue. The Panel has admitted it only insofar as it relates to the translation issue.
In response to the Respondent’s submission, the Complainant filed yet another supplemental filing on July 28, 2011. The Panel has disregarded this submission in its entirety as it deals either with matters in the Respondent’s submission which the Panel has elected not to admit and otherwise simply repeats previous arguments by the Complainant.
In the view of the Panel it is unhelpful for parties to simply fire off supplemental submissions without any attempt to justify them – as both parties have done here. This practice can result in the addition of unnecessary complication and cost to what is intended to be a relatively quick and inexpensive procedure.
4. Factual Background
The Complainant is a limited liability company incorporated under the laws of Norway on January 2, 2007. The Complainant, and/or its subsidiaries provide financial services to the public under the mark Folkia in Sweden, Estonia, Finland and Denmark.
The Complainant owns two trade marks for the word FOLKIA in classes 35 and 36: Community Trade Mark No. 006050702 filed on June 19, 2007 and Norwegian trade mark 251297 filed on March 16, 2009.
The disputed domain name was registered on April 10, 2006 in the context of a relationship between the Complainant’s Swedish subsidiary, Folkia AB and a branding design and consultancy Faidon Design AB (“Faidon”).
5. Parties’ Contentions
Identical or Confusingly Similar
The disputed domain name is identical or confusingly similar to the Complainant’s trade mark.
Rights or Legitimate Interests
During 2006, Folkia AB orally commissioned Faidon to arrange for the registration of the disputed domain name in connection with the launch of the Complainant’s business on the Swedish market. The disputed domain name was therefore registered by Faidon on behalf of Folkia AB and with all rights relating to the disputed domain name vested in Folkia AB and ultimately in the Complainant, as its parent company.
Faidon is trying to shield itself against any claims in relation to the disputed domain name by using a privacy service.
Neither Faidon nor the Respondent run any business of any kind under the trade mark FOLKIA or any similar marks and consequently do not have any rights of ownership or other rights in such trade mark, nor in the disputed domain name.
Registered and Used in Bad Faith
Faidon registered the disputed domain name on the Complainant’s behalf as an interim solution until the Complainant could arrange to manage the domain name for itself. Faidon has invoiced the Complainant for costs relating to the registration of the disputed domain name and this has been paid by the Complainant.
Later, after the relationship between Faidon and Folkia AB and/or the Complainant had ceased, Faidon refused to transfer the disputed domain name to the Complainant, notwithstanding numerous requests to do so. Such refusal constitutes bad faith use of the disputed domain name by Faidon notwithstanding that Faidon has not taken active steps to link the disputed domain name to any webpage not owned or controlled by the Complainant.
The fact that the disputed domain name contains the key trade mark used in the Complainant’s business supports the fact that the Faidon has used the disputed domain name in an illegitimate manner.
Accordingly, the circumstances of the case meet the criteria for bad faith registration as established by case law: 1) Faidon has no rights or legitimate interests in the disputed domain name; 2) the former agency relationship demonstrates that Faidon was aware of the Complainant’s rights and legitimate interests in the disputed domain name; 3) Faidon should have registered the disputed domain name in the name of the Complainant when acting as the Complainant’s agent, which fact should lead to a finding of bad faith registration and 4) any issues relating to the previous cooperation between Faidon and Folkia AB and/or the Complainant are separate issues of contract law to be addressed separately by a competent court.
Identical or Confusingly Similar
Both of the Complainant’s trade marks were registered by the Complainant after the Respondent's predecessor created the name “Folkia” in April 2006 and registered the disputed domain name on April 10, 2006. The term “Folkia” is not a dictionary word and was created by Faidon.
It is not in dispute that the Complainant’s trade marks are identical to the disputed domain name.
However, the Respondent has senior rights in the term “Folkia”.
Rights or Legitimate Interests
Faidon, an advertising agency, was the Respondent’s predecessor in title to the disputed domain name. In response to a document entitled “Offer” dated April 5, 2006, Faidon created a list of potential names for Mr. H. Bender in connection with a start-up company in Sweden. The “offer” document provides for an assignment of copyright in one of the brand names. Faidon created a list of names including “Folkia”. Materials show that the intended use of the potential brand name was in Sweden only.
In an email of September 11, 2006, Mr. Hedborg, managing director of Faidon, stated:
“Please kindly note our terms of usage, as stated on the Offers. The principle is that the material can be used only for a specific production during a specific time. For website developments, the material can be used indefinitely in time, but only on the specific website” (emphasis added).
In accordance with the offer, the domain name <folkia.se> was registered by a company named Catalyt AB on May 8, 2006, and transferred to Folkia AB on May 22, 2006. The Complainant has not put into evidence any of the foregoing, and instead states that it “orally commissioned” Faidon during 2006.
The Complainant has not contested that the Respondent has earlier rights in the term “Folkia”. The Respondent, and not the Complainant, created the term “Folkia” and held the copyright to that term. The evidence shows that it did not expressly assign to the Complainant the right to file for the term “Folkia” as a trade mark. Instead, the assigned copyrights are limited to what is expressly granted under the contract.
The Complainant’s statement that the disputed domain name was registered by Faidon on behalf of Folkia AB, and ultimately the Complainant, is unsupported by the evidence.
The Complainant registered the domain name <folkia.se> in accordance with the terms of the written agreement between the parties. Faidon expressly stated in the email of September 11, 2006, that it did not assign unlimited rights in the term “Folkia” to Complainant. Among the rights not expressly granted by Faidon, which held the copyright in the term it created, were the right to domain names other than <folkia.se> or the right to file trade marks using the copyrighted term.
The question of the Respondent’s rights or legitimate interests in the disputed domain name cannot be separated from the question of whether or not the Respondent, which initially held all the rights to the term “Folkia”, had assigned to the Complainant the right to use that term in the disputed domain name.
Under copyright law, an author is considered to have withheld all rights in his or her work that have not been expressly assigned. None of the documents refer to an application of the work-made-for-hire doctrine by the parties or to an express unlimited assignment. Instead, Faidon noted that rights were only granted for a specific production, a specific time and for a specific website. The particularly low price for the work and assignment confirm that it was the parties’ intent that only rights for Sweden were granted by the Respondent.
There is no evidence supporting the Complainant’s assertion that it paid Faidon for the cost of registering the disputed domain name or that Faidon refused to comply with numerous requests to transfer it. Even if the Complainant were to offer evidence, this would not alter the fact that the rights in the term “Folkia” which were granted by Faidon do not expressly include the rights that the Complainant seeks to enforce against the Respondent. Without those rights, the Complainant cannot claim that the Respondent has no rights in the term “Folkia” and hence in the disputed domain name.
In addition, as an advertising and branding agency, Faidon has used the term “Folkia” and the disputed domain name in connection with a bona fide offering of its services. As such, it had a legitimate interest in retaining copyright in the names and domain names it created except where and to the extent it assigned those rights.
Registered and Used in Bad Faith
Faidon created the term “Folkia”. At the time it registered the disputed domain name, Faidon owned copyright in the term “Folkia” and could thus in good faith register this term as a domain name intended for sale, excluding <folkia.se>.
The Complainant’s general statement of a former agency relationship confirms that the Complainant had not received an express general assignment of all rights in the term “Folkia”. Instead, the Complainant relies on an implied assignment of all of the rights in the term “Folkia”. This implicit assignment is contrary to copyright law and is contradicted by the terms of the Offer and the Faidon email, which was not contested by the Complainant.
Unlike the UDRP cases relied on by the Complainant, the Complainant in the present matter did not have a right in the term “Folkia” which was senior to the Respondent’s copyright in that term.
The Complainant and the Respondent are not competitors and the disputed domain name was not registered by the Respondent primarily to disrupt the Complainant’s business, nor in an intentional attempt to attract for commercial gain Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark.
The Complainant has contractual remedies under applicable national law. Simply, a UDRP procedure should not lead to transfers of domain names where there exists a substantive factual and legal dispute between the parties with respect to intellectual property rights and the rights in a domain name that are outside the scope of the administrative procedure under the UDRP.
The cases cited by the Complainant can be distinguished from the facts of this case and, in fact, confirm the Respondent’s view.
C. Complainant’s Supplemental Filings (insofar as admitted by the Panel)
The Respondent’s translation “cession of copyrights” in the “offer” and also in the invoice of April 26, 2006, omitted a key term from the original Swedish, namely “fullständig” / “fullständiga”, meaning “complete” or “unrestricted”. The term should be translated as “complete transfer of rights”.
A translation by Google Translate showed that “fullständig” meant “complete”.
The Respondent has sought to deceive the Panel.
The term “fullständig” which is the basic form of “fullständiga” is never used in legal Swedish as the English term “perfect”, neither is “fullständiga”.
D. Respondent’s Supplemental Filings (insofar as admitted by the Panel)
The Complainant did not submit its own translations. The Respondent’s translations were sufficiently accurate to allow the Panel a correct understanding of the relationship between the parties. The alleged translation errors did not substantially modify the presentation of facts and their interpretation as set forth in the Response.
The Complainant’s further filing and evidence confirmed that there existed a legitimate dispute that required adjudication in court proceedings. By way of example, the Complainant’s translation included the term “perfect”, which was different from “total” or “complete” and carried a meaning in line with Respondent’s case as set out in the Response.
The Complainant argued, without submitting evidence, that the meaning “complete” should be preferred over the meaning “perfect” on the grounds that among Swedish lawyers this would be the preferred meaning. The relevant documents were not drafted by Swedish lawyers.
As a result of the linguistic ambiguity, the Panel should refuse to infer a complete or unlimited assignment of copyright in the term “Folkia” in the present matter.
In addition, even if the Panel were to follow the Complainant’s argument that the meaning “complete” should be used in determining the present matter, this would give the Complainant complete rights for Sweden only, not worldwide rights as all the evidence submitted by the Respondents shows that only Sweden was covered by the agreement.
The Complainant’s charges that the Respondent has attempted to confuse the issues without real proof or knowledge of any Swedish law, and that this borders on deceiving the Panel, are utterly unsupported.
The translation issue is part of a substantive factual and legal dispute between the parties with respect to the intellectual property rights in the term “Folkia” and its use in the disputed domain name.
6. Discussion and Findings
A. Identical or Confusingly Similar
It is not in dispute that the Complainant has rights in the term “Folkia” by virtue of its registered trade marks and that the disputed domain name is identical to the mark, disregarding the domain name suffix.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
As a preliminary matter, the Panel draws no distinction between Faidon and the Respondent Namesale.com / Daniel Kline for the purposes of this decision. The Respondent describes Faidon as its predecessor in title to the disputed domain name but the relationship is not explained in any further detail. The Panel infers that Daniel Kline is in some way connected with Faidon. The Respondent appears to have full knowledge of the relevant transactions and indeed both parties treat the Respondent and Faidon as if they were the same entity.
Similarly, the Panel sees no reason to distinguish between the Complainant and its subsidiaries, or their respective predecessors in title.
The Complainant argues that
“[d]uring 2006, Folkia AB orally commissioned the branding and design consultancy company Faidon Design AB (“Faidon”) … to arrange for the registration of the Disputed Domain Name as part of Folkia’s launch of business on the Swedish market. The Disputed Domain Name was thus registered by Faidon on Folkia AB’s behalf and with all rights relating to the Disputed Domain Name vested in Folkia AB and ultimately in the Complainant in its capacity as parent company of Folkia AB.”
The Complainant claims that the Respondent registered the disputed domain name on the Complainant’s behalf as an interim solution until the Complainant could arrange to manage the domain name for itself.
The Respondent accepts that it was commissioned to create a brand name for Folkia AB but says that, as the creator of the name “Folkia”, it acquired prior rights in that term. The Respondent does not dispute that it assigned certain rights in the name “Folkia” to the Complainant. The Respondent maintains, however, that this assignment was limited to use of the name in Sweden only and that the Respondent retained all rights to use the term “Folkia” outside Sweden. The Respondent says that these retained rights constitute rights or legitimate interests in the disputed domain name for the purpose of the Policy.
For the most part, both parties express the alleged prior rights of the Respondent as arising in copyright and both appear to assume, amongst other things, that the single word “Folkia” is capable of qualifying as a copyright work. Neither party clearly distinguishes between rights arising under the law of copyright and rights arising under the law of trade marks. However, as explained below, the Panel considers that there is clear evidence demonstrating that, if the Respondent had acquired any prior rights of any nature in the name, the parties intended that all those rights would be assigned to the Complainant. It is therefore unnecessary for the Panel to assess which rights, if any, the Respondent did in fact obtain, assuming that such an assessment would have been within the scope of this UDRP administrative proceeding.
It is common ground that there was no single signed document governing the parties’ relationship. The Respondent invokes a number of documents which it claims are supportive of its position. These are discussed below, in broadly chronological order.
1. The principal document is in the format of an invoice on Faidon letterhead. The document is in Swedish and is translated by the Respondent as follows:
April 5, 2006
Name and Design for a Startup Company
Creation of a list of brand name candidates (e.g. Arla and Volvo), and category names (e.g. Foods, Cars) ….
Design of corporate identity
Design of logotype, colors, typography, stationery and business cards …
Design of website interface
Design of website interface with content ….
Cession of copyrights to one of the brand names, one of the category names, as well as to the design of the corporate identity and of the website interface.
As discussed further below, the Complainant says that the Respondent has omitted to translate the Swedish term “fullständig”, meaning “complete” or “unrestricted”, in connection with “[c]ession of copyrights”.
2. A document in English consisting of three (undated) pages entitled: “Large potential market”, “Credit losses are low in Sweden” and “Sub prime segment is unserved in Sweden”. The Respondent does not explain the date or context but simply describes these as “materials showing that the intended use of the potential brand name was in Sweden only”. These all consist of graphs and charts which appear to relate to aspects of the financial services industry in Sweden and are presumably slides from a presentation by the Respondent to the Complainant.
3. An undated list of brand names including “Folkia”. The Respondent says that this is the list of potential brand names which the Respondent created for the Complainant to consider in accordance with the “offer”.
4. A WhoIs printout for the disputed domain name. This shows that it was registered on April 10, 2006.
5. An invoice from Faidon in Swedish dated April 26, 2006 for SEK 65,000 plus VAT, translated by the Respondent as follows:
Name and Design for a Startup Company
Name creation of a brand name and a category name for a startup company; design of corporate identity and website interface.
Cession of copyrights to the brand name Folkia and to the category name mikrolan but not to any other names. Cession of copyrights to the design of the corporate identify and of the website interface.”
This shows that at some point between April 10, 2006 and April 26, 2006, the Complainant had selected “Folkia” from the list of potential brand names supplied by the Respondent. No doubt this coincided with the Respondent’s registration of the disputed domain name on April 10, 2006.
The translation “cession of copyrights” in this document is in dispute also – see below.
1. An email from the Respondent dated September 11, 2006 with the subject line “Offer Folkia web campaign and minilån”. (The Panel understands that “minilån” means “mini-loans”). The full text of the email (which is in English) is as follows:
Please find enclosed our offers from the Folkia web campaign and minilån development. I have been in touch with all the parties you referred me to, and the offers are based on detailed discussions with those parties.
As for delivery times, we would request four weeks to complete both commissions, although this time can be shortened.
Please kindly note our terms of usage, as stated on the Offers. The principle is that the material can be used only for a specific production during a specific time. For website developments, the material can be used indefinitely in time, but only on the specific website. While it is difficult to specify beforehand the cost for any additional usage, we try to do so wherever possible, as seen on the web campaign offer.
As we much enjoyed working for Folkia, and believe we did a good foundation job, we would be glad to continue to develop Folkia in these and other ways.
I look forward to hearing from you on this.
With kind regards,
2. An invoice from Faidon in Swedish dated September 14, 2006 for SEK 35,000 plus VAT. This includes the following (again translated by the Respondent):
Fokia mikrolån advertising campaign in Metro
Concept, text, design and prepress work
Concept, text, design, photography and prepress work for and advertising campaign for Folkia mikrolån comprising a total of eight different ads … published in Metropol ...
Reproduction rights to the above material are valid only for the above publishing.”
3. A letter in Swedish (translated by the Respondent) stating that the domain name <folkia.se> was registered on May 8, 2006 by Catalyst AB and that it was transferred from Catalyst AT to Folkia AB on May 22, 2006. This was signed by an attorney for “The Foundation for Internet Infrastructure (.SE)”.
The Respondent says that <folkia.se> was registered and transferred to the Complainant “in accordance with the offer”.
Both the “offer” of April 5, 2006, and the subsequent invoice of April 26, 2006 (paragraphs 1 and 5 above) – key documents as they are the only ones which mention rights in a brand name – refer to “cession of copyrights” in the name as translated by the Respondent. As mentioned above, neither party draws a distinction between rights in copyright and rights arising under the trade mark law; both parties appear to treat “copyright” simply as shorthand for “all rights”. In these circumstances, for the purposes of the present UDRP dispute, the Panel considers it reasonably clear that the use of the term “cession of copyrights” in these two documents emanating from the Respondent was intended to mean that the Complainant should acquire all of the rights which the Respondent might hold in the name “Folkia”.
Even on the basis of the Respondent’s translation, therefore, the documents are unfavorable to the Respondent.
The Respondent’s position is even weaker if the Complainant is right to say that the Respondent’s translation omits the Swedish term “fullständig” / “fullständiga”, meaning “complete” or “unrestricted” in connection with the “[c]ession of copyrights”. To this, the Respondent initially retorted that “the alleged translation errors did not substantially modify the presentation of facts and their interpretation as set forth in the Response”. And, in reply to the Complainant’s production of a Google Translate screenshot indicating that “fullständig” meant “complete”, the Respondent merely drew attention to the fact that one of 19 other apparent synonyms shown in the screenshot was the word “perfect” which “carried a meaning in line with the Respondent’s case as set out in the Response”. The Respondent said that the Complainant had not submitted evidence that the meaning “complete” should be preferred over the meaning “perfect”. The Respondent further argued that if the meaning “complete” was accepted, this would simply mean that the Complainant was given complete rights for Sweden only.
The Respondent’s position is unsatisfactory. Not only does the Respondent fail to offer its own translation of the word, critically, the Respondent does not deny that its translation omitted the term. Nor does the Respondent seek to argue that the word was redundant. In the Panel’s view, it is telling that the Respondent has failed to translate a key word in the only phrase in all of the documents which expressly refers to rights in the brand name. In the absence of an explanation from the Respondent, the Panel can only presume that this was because the Respondent considered that the translation was harmful to its case. It is difficult to see this as anything other than an attempt to mislead the Panel. In these circumstances, and in the absence of any positive alternative from the Respondent, the Panel is inclined to accept the Complainant’s translation, namely “complete transfer”.
The Respondent nonetheless asserts that the above documents indicate that the rights assigned were limited to Sweden. The Respondent also argues that, even if the Complainant’s translation were accepted, this would merely indicate that the Complainant was given complete rights for Sweden.
Yet the Panel sees nothing in the “offer” document and related invoice, or in any of the other documents, which restricts the complete transfer of rights to the Complainant, whether expressly or otherwise.
The email of September 11, 2006, the main document which the Respondent relies upon as evidencing a limitation on the Respondent’s assignment, appears to relate only to website and marketing content, not to the brand name which was created and invoiced for some five months previously on the basis of a “complete transfer” of rights.
Even if it could be said that the documents envisaged that the name would be used only in Sweden (which is arguable), it is not clear from the Respondent’s case as to why this should be treated as limiting the assigned rights to Sweden.
The Respondent also relies in part on what is says was a particularly low price for the work quoted in the “offer”. Even if the price were low (which the Respondent has not established), there is nothing to show that this was attributable to a restriction of the assigned rights as opposed to some other factor.
Accordingly, the Panel is of the view that the documents produced by the Respondent’s do not support its case; rather, they contradict it. Indeed they reflect the Panel’s expectation that it would be a rather unusual if the consequence of an arrangement whereby a branding agency created a brand name for a client was that the agency acquired / retained some independent rights to use that brand name itself (whether as a domain name or otherwise).
The Respondent nonetheless argues that there exists a substantive factual and legal dispute between the parties with respect to intellectual property rights and the rights in a domain name that are outside the scope of the administrative procedure under the UDRP. The Respondent relies on the following cases in support: Direct Pointe, Inc. v. CentralPointe, NAF Claim No. 0905001263554; Summit Industries, Inc. v. Jardine Performance Exhaust, Inc. WIPO Case No. D2001-1001; Nintendo of America Inc. vs. Alex Jones, WIPO Case No. D2000-0998. Clearly, the fact of a disputed prior relationship between the parties does not of itself take the matter outside the scope of the UDRP. This is not an uncommon feature in UDRP cases. Whether or not the circumstances amount to a genuine substantive factual and/or legal dispute between the parties which is inappropriate for resolution under the UDRP must depend on the facts of each case.
The Panel notes that there are relatively few documents to consider and that the Response does not state that the record is incomplete, for example on the grounds that there are other relevant documents which the Panel has not seen or because there are relevant oral communications. Furthermore, as mentioned above, in the Panel’s view the documents clearly indicate that the parties intended an unrestricted assignment of rights to the Complainant. Yet the Panel might nonetheless have acceded to the Respondent’s argument as to the suitability for UDRP resolution were it not for the following matters, which are largely uncontested:
First, there is the undisputed omission of any translation of the critical terms “fullständig” / “fullständiga” from the Respondent’s translations. The Panel has concluded that this was an attempt to mislead the Panel.
Second, the Respondent asserts that amongst the rights not expressly granted by the Respondent was the right to file for trade marks using the term “Folkia”. Yet the Complainant owns both a Community trade mark and a Norwegian trade mark for the term – and indeed it trades in Estonia, Finland and Denmark as well as Sweden (not denied by the Respondent). The Respondent has not suggested that it was unaware of any of this. Yet there is no correspondence or other evidence indicating that the Respondent has at any stage raised any objection to the acquisition of these trade marks or to the Complainant’s activity outside Sweden. If the Respondent seriously considered that it retained rights to the name “Folkia”, it seems unlikely that it would have stood idly by in the face of these actions of the Complainant outside Sweden.
Third, in response to the Complainant’s assertion that the Respondent did not operate any business of any kind under the trade mark FOLKIA, the Respondent simply replied that, as an advertising and branding agency that created names, it made use of the term “Folkia”, and the disputed domain name, in connection with a bona fide offering of its services. The Panel infers from this lack of detail, including its failure to explain exactly how it has used the disputed domain name, that the Respondent has made no independent use of either “Folkia” or the disputed domain name over the five year period. The Panel has visited the website at the disputed domain name itself on July 29, 2011, (as it is entitled to do – see paragraph 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition “WIPO Overview, 2.0”) and ascertained that, on that date at least, it redirected to the Complainant’s website at “www.folkia.se”.
Accordingly, the record as presented to the Panel does not indicate that there is a real dispute here or even the basis for one. Rather, the Panel has the overwhelming impression that the Respondent is simply looking hard for reasons to keep the disputed domain name, which in reality it registered on behalf of the Complainant five years ago. In the Panel’s view, the matter is sufficiently clear and straightforward such that it is appropriate for resolution within the scope of an administrative procedure under the UDRP.
Of course, the Panel’s decision does not prevent the Respondent from taking its case to a national court if it wishes to do so.
The Complainant invokes a number of cases where the respondent (either employee or web developer) was found to have acted as the complainant’s agent in registering the disputed domain names and to have lacked rights or legitimate interests in the disputed domain name: Digga Australia PTY Ltd v. Digga Europe Limited, NAF Claim No. 0607000755181; Mobile Data Testing Services Inc. d/b/a HealthTrac v. Tim Synor, WIPO Case No. D2004-0889 and Truform Tool & Equipment Inc. et al. v. Sam Psaltakis et al., WIPO Case No. D2003-0139; Sonido, Inc. v. MU21C.com Inc., WIPO Case No. D2006-0685; Microsoft v. Unisoft, Inc., WIPO Case No. D2002-0886. The Panel agrees with the Respondent that the facts of those cases all differ from this case in important respects and that they are therefore of relatively limited assistance.
The Panel’s conclusion in this case, based on the matters outlined above, is that – irrespective of whether or not the Respondent initially acquired any independent rights of any nature in the name “Folkia” - the parties envisaged that all rights in the term “Folkia” would be assigned to the Complainant.
The disputed domain name was registered five days after the date of the “offer” document. While the Respondent of course argues that it was justified in registering the disputed domain name on the basis of its alleged rights in the term “Folkia”, it does not explain exactly why it chose to register the disputed domain name at that time or for what exact purpose. Whereas the Complainant says that the Respondent registered the disputed domain name on the Complainant’s behalf as an interim solution until the Complainant could arrange to manage the domain name for itself. Given registration of the disputed domain name against the background of the parties’ intention that all rights in the name “Folkia” be assigned to the Complainant (as the Panel has concluded), the Panel accepts the Complainant’s version and concludes that the Respondent acquired the disputed domain name purely as agent for the Complainant.
Accordingly the Panel finds that the Respondent lacks rights or legitimate interests under the Policy.
C. Registered and Used in Bad Faith
It is reasonably clear that, although it was acting as the Complainant’s agent (as the Panel has concluded), the Respondent did not register the disputed domain name in the Complainant’s own name. Instead, without the Complainant’s authority, it registered the disputed domain name in own name (or at least in the name of a privacy service used by the Respondent). It is also obvious that the Respondent is refusing to transfer the disputed domain name to the Complainant, despite having registered it as the Complainant’s agent and on the understanding that it would be held for the Complainant’s benefit.
In those particular circumstances, and also taking account of the Respondent’s attempt to mislead the Panel and the other matters mentioned in Section 6B above, the Panel concludes that the disputed domain name has been registered and used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <folkia.com> be transferred to the Complainant.
Dated: July 29, 2011