WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Telenor Conax AS v. The Team
Case No. D2000-0933
1. The Parties
The Complainant in this administrative proceeding is Telenor Conax AS a company incorporated under the laws of Norway, with its registered office in Oslo, Norway. Hanne Sofie Bjelland of Telenor AS, Legal Department represents the Complainant.
The Respondent is The Team, Conax Lokala Nätverk Service EF, Trollhättan, Sweden.
2. The Domain Name and Registrar
The domain name at issue is conax.net.
The registrar with which the domain name is registered is Tucows.com, Inc.
3. Procedural History
A Complaint was submitted electronically and by fax to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on August 3, 2000. An amended complaint was submitted electronically on August 14 and, and the signed original together with four copies was received by WIPO Center on August 17. The WIPO Center sent an Acknowledgment of Receipt to the original Complaint, dated August 7, 2000,
On August 7, 2000, a Request for Registrar Verification was transmitted to the Registrar. The Registrar confirmed on August 10, 2000, the information in the request and forwarded the requested WHOIS details, and confirmed that the Uniform Domain Name Dispute Resolution Policy was in effect and stated that the domain name was put on hold status for the duration of the dispute.
The policy in effect at the time of the registration of the domain name at issue is the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN"). There is no evidence that the Respondent ever requested that the domain name at issue be deleted from the domain name database. Accordingly, the provisions of the Policy bind the Respondent.
The assigned WIPO Center Case Administrator completed a Formal Requirements Compliance Checklist on August 18, 2000.
The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Uniform Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "WIPO Supplemental Rules"). The required fee for a single-member Panel has been paid by the Complainant.
No formal deficiencies having been recorded, on August 21, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, the Registrar and ICANN), setting a deadline of September 9, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by the required means.
The Respondent filed a response on September 5, 2000.
On September 19, 2000, in view of the Complainant’s designation of a single panelist the WIPO Center invited Mr. Knud Wallberg to serve as a panelist in Case No. D2000-0933, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.
Having received, Mr. Knud Wallberg’s Statement of Acceptance and Declaration of Impartiality and Independence, on September 20, 2000, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Knud Wallberg was formally appointed as the Sole Panelist. The Projected Decision Date was October 8, 2000.
The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and WIPO Supplemental Rules.
The Administrative Panel shall issue its Decision based on the Complaint, the Response, the Policy, the Uniform Rules and the WIPO Supplemental Rules.
4. Factual Background
Telenor Conax AS, hereinafter Telenor Conax is a company registered in Norway. Telenor Conax is a provider of technology within conditional access systems for the whole broadcast arena, including Pay-TV systems for commercial and business opportunities net authentication and secure transactions utilizing the latest in encryption. Telenor Conax AS is the holder of trademark CONAX in Norway. The trademark was registered in 1994 for goods and services in class 9, 16, 38, 41 and 42 and is still valid.
Conax Lokala Nätverk Service EF, hereinafter CLNS, is a small local firm in Sweden that builds local area networks for PC in windows.
5. Parties’ Contentions
In support of its claim that the three conditions of the UDRP are fulfilled the Complainant states the following:
1. Identical or confusingly similar
"Conax.net" is confusingly similar to Telenor Conax´s registered trademark "conax".
2. No right or legitimate interest
The Team,N/a, N/a, CA N/a, which apparently is the same as CLNS has no rights or legitimate interests in respect of the domain name "conax.net".
D2mac.com originally registered Conax.net. In the beginning, when you accessed "conax.net" you entered a site called "The Conax Bulletin Board" where you among other things could ask questions about Telenor Conax`s smart cards, and whether it is possible to hack them yet. If you enter D2mac.com you will find a direct link to "conax.net"."D2mac.com" is a well-known pirate web site where the owners distribute pirate cards and Conax proprietary cryptographic keys for Conax pay-TV cards. This enables "customers" to get illegal access to encrypted material.
In June this year there was no content on the site "conax.net". There was only a direct link to "D2mac.com". The sites are obviously under construction as they change them all the time.
There is no legitimate reason for The Team/CLNS to use the domain name "conax.net", as long as the only aim obviously is to inform about hacking Telenor Conax´s smart cards.
There was also a direct link from "D2mac.com" to "viaccess.org". Viaccess is a competitor of Telenor Conax. This illustrates the business of 2mac.com, as they try to hack their smart cards as well. The Team/CLNS are not commonly known for "conax.net" nor are they making any fair non-commercial use of the domain name.
On basis of the foregoing, the domain-holder has no right or legitimate interest to "conax.net".
3. Bad faith
The domain name "conax.net" has been registered and is being used in bad faith.
As stated above, Telenor Conax´s business is mainly to sell smart cards and provide conditional access technology.
As stated in the Uniform Domain Name Dispute Resolution Policy, article 4b, it shall be evidence of the registration and use of a domain name in bad faith if the domain-holder:
"by using the domain name, […] has 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".
From the way the site looked in June, it is obvious that D2mac.com used the link to confuse customers and potential customers of Telenor Conax, and tried to make them believe that they where dealing with Telenor Conax. Even if the customers did not believe that they where dealing with Telenor Conax they may have been tempted to sign up as a customer to piracy smart cards instead of buying them from Telenor Conax. D2mac.com thus attempted to attract, for commercial gain, Internet users to their web site, by creating a likelihood of confusion with Telenor Conax´s trademark.
Further it is said in the same article 4b that it shall be evidence of the registration and use of a domain name in bad faith if the proprietor:
"has registered the domain name primarily for the purpose of disrupting the business of a competitor."
Complainant tried to make a phone call to the administrative contact under the domain name D2mac.com. They were referred to Echo Industries AB in Sweden. They are as far as Complainant is aware now dealing within the telecom business and therefore also a competitor of Telenor Conax.
By informing the customers whether it is possible to hack Telenor Conax´s smart cards on the site "conax.net", how to do it and the price for this information, it is obvious that they are disrupting the business of Telenor Conax.
Furthermore they tarnish the trademark of Telenor Conax by using it in this way.
It is expected that the site will be changed also in the future, but as we can see from the site in June and now, it is always in a way used in connection with hacking the smart cards of Telenor Conax.
The above said show that The Team/ CNLS have registered and are using "conax.net" in bad faith.
Respondent has stated the following points in their response:
1. Identical or confusingly similar
The Respondent acknowledges that the domain name is identical to the Complainant’s trademark.
2. No right or legitimate interest
The Respondent denies that it has anything to do with the old owner of the domain name d2mac.com or that they will have in the future.
The domain name conax.net was first registered by another person "d2mac.com" on 4 April, 2000, but after some emails and phone calls Respondent was able to buy the domain name on July 29, 2000.
CLNS has nothing to do with "d2mac" except that they host their pop email address until CLNS get their own ISP to host the domain name and website. It will be done when the "on hold" from the Registrar is removed.
3. Bad faith
Concerning this issue Telenor Conax AS is referring to the old owner d2mac.com.
In the deal with d2mac the Respondent asked them to upload a messageboard on the domain where Respondent’s customers could talk about its local network service.
To prove that the Respondent had no intention using the domain it in bad faith it took some action actions such as to add the line: "Please understand that this website has nothing to do with the company’s listed below. Conax Buffalo Technologies,Telenor Conax AS, CONAX Florida Corporation", and to remove all old links to conax.net.
Conax Lokala Nätverk Service will not try to confuse internet surfers that is looking for Conax Buffalo Technologies, Telenor Conax AS, CONAX Florida Corporation or any other firm that use Conax in their firm name or last name. It will kindly point them in the right direction by having the same info on its permanent website as it has on the temporary website.
CLNS is not trying to sell the domain name to the trade mark owner CONAX BUFFALO CORPORATION and earn big money, they are commercial firm and are in the .com TLD with the domain name www.conaxbuffalo.com and are not dealing with small local area network support.
6. Discussion and Findings
According to Paragraph 15(a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
ii) that the Respondent has no legitimate interests in respects of the domain name; and
iii) that the domain name has been registered and used in bad faith.
i) Similarity with Complainant’s rights
It is undisputed that the distinctive part of the domain name is identical to the Complainant’s trademark CONAX.
ii) Respondent’s legitimate interests
The Complainant has not licensed or otherwise permitted Respondent to use its trademark or to apply for any domain name incorporating the mark.
The Respondent calls itself Conax Lokala Nätverk Service EF. It has, however, not furnished any evidence to show that they are a registered company under that name, nor have they furnished any evidence that shows that they are actually running an existing business.
Conax has to the knowledge of the Panel no commonly known secondary meaning and must thus be considered to be an inherently distinctive mark.
On this background the Panel finds that the Respondent has not proven that he has any prior rights or legitimate interests in the domain name
The preconditions in the Policy, Paragraph 4(a)(i) and (ii), cf. 4(c) are therefore fulfilled.
iii) Bad faith
Paragraph 4(a)(iii) cf. 4(b) of the Policy further requires registration and use in bad faith.
D2mac.com a company situated in the same town as the present owner (the Respondent) initially registered the domain name. The Respondent claims that they have no connection to the previous registrant and that those activities that may have been performed under the domain name before have nothing to do with them. The Panel has taken due note of this claim, although the particulars of the case do not convince the Panel that the two parties are not inter-related. The Panel thus notes that the URL for the website www.conax.net is actually http://conax.d2m.ac.
For the purpose of deciding the dispute the important factor is however that Respondent is the actual holder of the domain name.
The Panel finds that it is unlikely that the Respondent has acquired the domain name without having knowledge of the Complainants mark CONAX. The Panel also finds that Respondent must have been aware of the deception and confusion that would inevitably follow if it used the domain name to which he has not demonstrated to have any rights or legitimate interests.
By holding the domain name the Respondent has effectively prevented the Complainant from reflecting their distinctive mark, in the corresponding domain name, cf. Article 4(b)(ii). The Panel notes in this context that in many jurisdictions the mere registration or holding of a domain name that encompasses the trademark of others is considered a trademark infringement or an act of unfair competition and thus is believed to be use in the course of trade.
The Panel also finds that the possible use of the domain name by the Respondent inevitably (and to the Respondent’s knowledge) will lead people to believe that the Respondent and the Respondent’s site is in some way associated with the Complainant. For this purpose potential use is equivalent to actual use.
On this background also the elements in Article 4(a)(iii) are present in this case.
Consequently, all the preconditions for cancellation or transfer of the domain name according to Paragraph 4(a) of the Policy are fulfilled.
The Complainant has requested transfer of the domain name.
In view of the above circumstances and facts the Panel decides, that the domain name registered by Respondent is confusingly similar to the trademark in which the Complainant has rights, and that the Respondent has no rights or legitimate interests in respect of the domain name, and that the Respondent’s domain name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy and 15 of the Rules, the Panel requires that the registration of the domain name conax.net be transferred to the Complainant.
Dated: October 6, 2000