WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aktiebolaget Pripps Bryggerier v. ProDive
Case No. D2000-1175
1. The Parties
The Complainant is Aktiebolaget Pripps Bryggerier, a company incorporated under the laws of Sweden, having its registered office at Bryggerivägen 10, SE-161 86 Bromma, Sweden.
The Respondent is ProDive, the legal status which is not clear. The address of the Respondent as contained in the domain name registration is Rådmansgatan 7, Stockholm, Sweden.
2. The Domain Name and Registrar
The domain name at issue is "pripps.com", which is registered with Network Solutions, Inc., ("the Registrar"), 505 Huntmar Park Drive, Herndon, Virginia 20170, United States.
3. Procedural History
A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on September 6, 2000, and in hardcopy on September 8, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated September 8, 2000.
On September 12, 2000, a Request for Registrar Verification was transmitted to the Registrar.
On September 14, 2000, the Registrar confirmed that it was in receipt of the Complaint sent to the Registrar by the Complainant, the domain name at issue, was registered with the Registrar and that the Respondent was the current registrant of the name. The Registrar also forwarded the requested WHOIS details, confirmed that the Uniform Domain Name Dispute Resolution Policy was in effect and stated that the domain name was in "Active" status.
Effective January 1, 2000, the Registrar adopted the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, (the "Policy"). There is no evidence that the Respondent ever requested that the domain name at issue be deleted from the domain name database. Accordingly, the Respondent is bound by the provisions of Policy.
A Formal Requirements Compliance Checklist was completed by the assigned WIPO Center Case Administrator on September 15, 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 fees for a single-member Panel were paid on time and in the required amount by the Complainant.
No formal deficiencies having been recorded, on September 15, 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 October 4, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by post/courier, facsimile and e-mail to the addresses indicated in the Complaint.
On October 5, 2000, having received no Response from the Respondent the WIPO Center transmitted to the parties a Notification of Respondent Default. On October 11, 2000, the WIPO Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date. This Notification informed the parties that the Administrative Panel would be comprised of a single Panelist, Mr. Jonas Gulliksson.
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 Policy, the Uniform Rules, the WIPO Supplemental Rules, and without the benefit of any Response from the Respondent.
4. Factual Background
The Complainant and its Registered Trademarks
The Complainant is a company incorporated under the laws of Sweden.
The Complainant has based its complaint on registrations in Sweden and other countries regarding the wordmark "PRIPPS", see Annex D to the Complaint.
5. Parties’ Contentions
The domain name "pripps.com", registered by the Respondent, is identical with the trademark registration of the word "PRIPPS" held by the Complainant.
The respondent has no rights or legitimate interests in respect of the domain name "pripps.com". To the best of the Complainant’s knowledge, the Respondent has no trademark, service mark, company name or any other right or legitimate interest to any name similar to that of the domain name "pripps.com". The Respondent has never indicated that it intends to make use of the name in any way. Therefore, the Respondent is not only lacking rights or legitimate interests in the domain name, but has also failed to make good faith use of the domain name for its business for a substantial period of time.
As far as the Complainant can tell, ProDive consists of Mr. Tony Lennartsson and Mr. Robert Boström. They have made a reputation in Sweden for being notorious cybersquatters using the name "Control Alt Delete". To further illustrate the fact that the persons behind Control Alt Delete, are the same persons behind ProDive, the Complainant hereby refers to communications made between "Control Alt Delete" and WIPO in Case No 2000-0609 (europolitan.com). In that case, "Control Alt Delete" themselves added "ProDive Domain Administration" to their contact details, see Annex L to the Complaint.
Mr. Tony Lennartsson and Mr. Robert Boström have registered numerous well-known trademarks as domain names in order to make profit by renting them to the trademark owners or demanding ransom in order to transfer them. The domain name "pripps.com" is only one of the many hijacked domain names. See Annex M to the Complaint for two non-exhaustive lists of domain names belonging to Mr. Tony Lennartsson and Mr. Robert Boström.
According to the Complainant, such clear patterns of registering numerous domain names indicate that the domain name "pripps.com" has been registered and used in bad faith. The domain name was registered in order to prevent the complainant, a large Swedish company, from reflecting its trademark in a corresponding domain name. The Complainant is of the opinion that the domain name was registered primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of the trademark (or to a competitor of the complainant) in order to attract financial gain or alternatively disrupting the business of the complainant. The registration of the domain name was thus made in bad faith.
A representative for the Complainant, Mr. Anders Gunnér, did have a telephone conversation with Mr. Tony Lennartsson (+46-736 391401) on April 4, 2000, at 10:30 AM. The representative asked the Respondent if he was interested in selling the domain name "pripps.com" to the Complainant. Mr. Tony Lennartsson answered that he was not interested in discussing any such sale or transfer until after the Complainant had sent him a written binding financial offer for the domain name. The Complainant believes that this further indicates that the respondent is using the domain name registration in order to attract financial gain.
The complainant is of the opinion that the Respondent was well aware of the value of the Complainant’s trademark "PRIPPS" at the time of the domain name registration and that the primary purpose was to sell, rent or otherwise transfer the domain name to the Complainant or to a competitor of the complainant for valuable consideration in excess of out-of-pocket costs directly related to the domain name. Even if the Respondent has not directly offered to sell, rent or transfer the domain name to the complainant, all the circumstances, such as bulk domain name registrations and the refusal to discuss any potential sale of the domain name without first signing a binding written financial offer, suggest that the respondent is acting in bad faith. As case law suggests, using a domain name in bad faith is not limited solely to positive actions, as inaction is regarded as being within the concept of use. This according to the Telstra case D2000-0003 at 7.8-7.9: ("The significance of the distinction is that the concept of a domain name "being used in bad faith" is not limited to positive action; inaction is within the concept."); see Annex N to the Complaint for the complete case. Another case supporting this is the Stralfors case D2000-0112 at 5: ("Inaction is clearly within the concept of "being used in bad faith" and it is possible for inactivity by the Respondent to amount to the domain name being used in bad faith."); see Annex O to the Complaint for the complete case.
Having all of the above in mind, the Complainant believes that all the necessary requirements for a transfer of the domain name from the Respondent to the Complainant have been met. The domain name is identical to the trademark in which the Complainant has rights. The Respondent has no legitimate rights or interests regarding the name PRIPPS. The Respondent has registered and used the domain name in bad faith. Therefore, the Complainant respectfully asks the deciding Administrative Panel to transfer the domain name "pripps.com" from the Respondent to the Complainant.
Respondent has not contested the allegations of the Complaint.
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.
Both parties are domiciled in Sweden. This means that in addition to the Policy, the Rules and the Supplemental Rules, applicable Swedish principles of law would apply as well.
Paragraph 4 (a) of the Policy directs that the Complainant must prove each of the following:
1) 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,
2) that the Respondent has no legitimate interests in respects of the domain name; and
3) the domain name has been registered and is being used in bad faith.
The domain name "pripps.com" is identical with the trademark PRIPPS except for the addition .com.
The Respondent has not proven that he has any prior rights or legitimate interests in the domain name.
The word Pripps is considered distinctive and registrable as a trademark and the word is not a generic or descriptive word which can be used by anyone.
The prerequisites in the Policy, Paragraph 4 (a) (i) and (ii) are therefore fulfilled.
Paragraph 4 (a) (iii) of the Policy further provides registration and use in bad faith.
Paragraph 4 (b) regulates which kind of evidence that is required in order to prove that a domain name has been registered and used in bad faith. The interpretation of Paragraph 4 (a) (iii) has been the subject of previous considerations in Case Law (i.e. the Telstra Case D2000-003 at 7.3-7.6 and the Stralfors Case D2000-0112 at 6). Based on the established practice, the Complainant has to prove that the registration was undertaken in bad faith and that the circumstances of the case are such that Respondent is continuing to act in bad faith. Such evidence may be that it is shown that the Respondent has been previously engaged in registration of trademarks belonging to others as domain names, and that it is clear that the purpose of the registration has been to sell or transfer the domain name to the rightful proprietor.
It is obvious from the facts in the case, i.e. the prior ownership by Complainant of identical trademark registrations, the fact that the word PRIPPS has a high degree of individuality and distinctiveness, the fact that it is highly improbable that the Respondent has selected the name without first having noticed the Complainants´s rights to the trademark, the previous engagement in registration of famous trademarks or company names, as can bee seen from Annex M to the Complaint, and the contents of the Policy Paragraphs 4 (a) (i-iii) and 4 (b) (i) that the domain name has been registered and used in bad faith. Cf. Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003.
Consequently, all the prerequisites for cancellation or transfer of the domain name according to Paragraph 4 (i) of the Rules are fulfilled.
In view of the above circumstances and facts the Panel decides, that the domain name "pripps.com" registered by the Respondent is identical to the trademark and service marks in which the Complainant has rights, and that the Respondent has no rights or legitimate interests in respect of the domain name "pripps.com", 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, the Panel requires that the registration of the domain name "pripps.com" be transferred to the Complainant.
Dated: October 25, 2000