WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HemNet Sverige AB v. HEM, Davood Saeb
Case No. D2011-1911
1. The Parties
The Complainant is HemNet Sverige AB of Solna, Sweden, represented by Groth & Co KB, Sweden.
The Respondent is HEM, Davood Saeb of Gothenburg, Sweden.
2. The Domain Name and Registrar
The disputed domain name <hemnet.org> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2011. On the same date, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On the same date, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On November 8, 2011, the Center requested the Complainant to confirm that the Complaint and annexes had been submitted in the appropriate electronic format to the Respondent and Registrar, as required by Paragraph 3(b) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) and Annex E of the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). The Complainant submitted an electronic version (pdf format) of the Complaint and annexes to the Respondent and Registrar on the same date.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules, and the WIPO 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 November 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 29, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2011.
The Center appointed Petter Rindforth as the sole panelist in this matter on December 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 Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language.
4. Factual Background
The Complainant provides, since 1997, a Swedish online marketplace at the website ”www.hemnet.se” and registered the domain name <hemnet.se> on February 18, 1997 (Annex Q of the Complaint).
The Complainant is the owner of the following registered trademarks:
- Swedish trademark HEMNET (word) with registration No. 388655 for goods and services in classes 16, 35, 36 and 38 of the Nice Classification. The filing date is December 12, 2006 and the date of registration is April 27, 2007.
- Community Trademark HEMNET (figurative) with registration No. 009701228 for goods and services in classes 16, 35, 36 and 38 of the Nice classification. The filing date is February 1, 2011 and the date of registration is August 11, 2011.
(Annexes E and F of the Complaint showing copies of the official Trademark databases).
The disputed domain name <hemnet.org> was registered on April 15, 2009. No detailed information is provided about the Respondent’s activities, apart from what is mentioned below by the Complainant.
5. Parties’ Contentions
The Complainant informs that its website is one of the most popular sites for real-estate searching in Sweden, with over 1,4 million unique visitors each week and more than 1 million real-estate object views per day. During 2010, the Complainant's website had over 143 million visitors, an increase of 10 percent since 2009. The Complainant's revenue increased from SEK 22.2 million in 2009 to SEK 40.9 million in 2010.
The Complainant states that the disputed domain name is identical to the Complainant’s trademark.
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name <hemnet.org>. The Respondent is redirecting the disputed domain name to the Respondent's website at "www.gbg24.se". To the best of the Complainant's knowledge, the Respondent is not an owner of any trademark, service mark, company name, product or service with a name similar to the disputed domain name, and the Respondent is not commonly known by ”hemnet.org”.
The Respondent contacted the Complainant via e-mail on October 17, 2011, informing the Complainant about the large number of Internet visitors that the disputed domain name attracted. The Respondent stated that in his opinion, the Complainant ought to be the holder of <hemnet.org> (Annex G of the Complaint showing a copy of the e-mail with an English translation). The Respondent sent a second e-mail message to the Complainant on October 19, 2011, stating that the following Monday he would offer <hemnet.org> for sale to anyone interested (Annex H of the Complaint).
Furthermore, the Complainant states that the disputed domain name is registered and used in bad faith.
Apart from the disputed domain name, the Respondent has also registered the domain name <hemnet.us>, which is also redirected to the Respondent's website at "www.gbg24.se".
On October 25, 2011, the Complainant replied to the Respondent's e-mail, stating that since the Complainant owns the trademark HEMNET, the Complainant naturally has an interest of holding domain names that are important to the trademark. The Complainant therefore welcomed a transfer of the disputed domain name <hemnet.org> to the Complainant. On October 26, 2011, the Respondent replied and requested SEK 750 000 (about USD 113, 709) for transferring the disputed domain name to the Complainant. On October 27, 2011, the Complainant replied and clarified that the Complainant was of the opinion that a transfer of the disputed domain name should be made without costs for the Complainant. The Complainant asked if the Respondent's price for transferring the domain name to the Complainant was SEK 750,000. The Respondent replied the same day and stated that if one owns something, one wants to sell it. The Respondent emphasized that he was uncertain if anyone would give anything away for free. The Respondent concluded the e-mail message with the words: “this was only an offer”. (Copies of the communication provided as Annex J, K, M and N of the Complaint).
The Complainant concludes that the Respondent registered the disputed domain name <hemnet.org> in order to prevent the Complainant from reflecting the trademark in a corresponding domain name and in order to attract Internet users to the Respondent's own website. Furthermore, the Complainant believes that the disputed domain name was registered for the purpose of selling, or otherwise transferring the disputed domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name.
The Complainant further concludes that there are numerous indications that the Respondent had good knowledge of the Complainant's HEMNET trademark and registered the disputed domain name <hemnet.org> with the Complainant's trademark and business in mind, such as the fact that the Respondent contacted the Complainant and offered to sell the domain name for a large amount of money, and that the Respondent's website, to which the disputed domain name resolves, contains a hyperlink to the Complainant as well as to various direct competitors of the Complainant.
The Complainant requests that the Panel issue a decision that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is the owner of the HEMNET trademark, registered in Sweden and the European Union (EU).
The relevant part of the disputed domain name is “hemnet”, as it is well established in previous UDRP cases that the added top-level domain – being a required element of every domain name – is irrelevant when establishing whether or not a trademark is identical or confusingly similar.
Accordingly, the Panel concludes that the disputed domain name is identical to the Complainant’s trademark.
B. Rights or Legitimate Interests
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy, see Clerical Medical Investment Group Limited v. Clericalmedical.com (Clerical & Medical Services Agency), WIPO Case No. D2000-1228 (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of production to the respondent to demonstrate that such a right or legitimate interest does exist).
The Respondent is not an authorized agent or licensee of the Complainant’s products or services and has no other permission to apply for any domain name incorporating the trademark HEMNET. See Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020 (finding no rights or legitimate interest where the respondent was not commonly known by the trademark and never applied for a license or permission from the complainant to use the trademarked name).
The Respondent’s use of the disputed domain name for, what the Panel consider as a commercial web site with links to the Complainant’s web site as well as to competitors of the Complainant, and advertisements for a number of other companies that are presumably not related to the Complainant, cannot constitute a bona fide use of the domain name pursuant to paragraph 4(c) of the Policy. See Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809, “Bona fide use does not exist when the intended use is a deliberate infringement of another’s rights”; see also Legacy Health System v. Nijat Hassanov, WIPO Case No. D2008-1708.
By not submitting a Response, the Respondent has failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name, or to rebut the Complainant’s prima facie case under this paragraph of the Policy.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant is a Swedish company, and stated by the Complainant to be “one of the most popular sites for real-estate searching in Sweden”. The Respondent is domiciled in Sweden, and must have been aware of the Complainant’s trademark rights when registering the disputed domain name.
Paragraph 4b(i) of the Policy states that circumstances indicating that the Respondent has registered the domain name primarily for the purpose of selling or renting it to the Complainant for a monetary consideration in excess of the Respondent’s out-of-pocket expenses directly related to the domain name, shall be evidence of registration and use of a domain name in bad faith.
The Panel finds that these circumstances are present here, as the Respondent contacted the Complainant with an offer to sell the disputed domain name <hemnet.org> for SEK 750,000 and indicating that the disputed domain name would otherwise be sold to anyone interested. See World Wrestling Federation Entertainment., Inc. v. Michael Bosman, WIPO Case No. D1999-0001 (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs).
Further, it is clear from the provided copies of the Respondent’s corresponding website, that this also includes presumably sponsored links to shops and other companies with no relation to the Complainant. See AltaVista Co. v. Krotov, WIPO Case No. D2000-1091 (finding bad faith where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also EBAY, Inc. v. MEOdesigns, WIPO Case No. D2000-1368 (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
Thus, the Panel concludes that the disputed domain name was both registered and used in bad faith, and that the Complainant has succeeded in proving the three elements of paragraph 4(a) of the Policy.
For 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, <hemnet.org>, be transferred to the Complainant.
Dated: December 19, 2011