WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Skattedirektoratet v. Eivind Nag
Case No. D2000-1314
1. The Parties
The Complainant is Skattedirektoratet, P.B. 6300, Etterstad, 0603 Oslo, Norway
represented by Deloitte & Touche, P.B.347, Skoyen, 0213 Oslo, Norway.
The Respondent is Eivind Nag, resident in Kisteberglia 5a, 4032 Stavanger, Norway
2. The Domain Name and Registrar
The Domain Name at issue is "skatteetaten.com". The Registrar is Register.com, 575, 8th Avenue - 11th floor, New York NY 10018, USA.
3. Procedural History
The Complaint was received by the WIPO Arbitration and Mediation Center (the Center) by e-mail on October 9, 2000, and by hard copy on October 11, 2000. The Center acknowledged the receipt of the Complaint on October 9, 2000.
WIPO verified that the Complaint satisfies the Rules and the Supplemental Rules and that payment was properly made. The Panel is satisfied this is the case.
On October 12, 2000, the Complaint was properly notified in accordance with the Rules, paragraph 2(a), and the administrative proceedings commenced.
On October 26, 2000, a Response was timely filed by the Respondent by e-mail, and on November 6, 2000 the Response was received by hardcopy.
On November 2, 2000, the Center received comments of the Complainant to the Response. The Said comments were forwarded to the Respondent by the Center. The Panel, in its discretion, has decided to admit these comments to the proceedings.
The Complainant elected to have the dispute decided by a three-member Administrative Panel and on December 5, 2000, the Center notified the Parties that an Administrative Panel composed of three members had been appointed, consisting of Dr. Gerd F. Kunze as the Presiding Panelist, Mr. Jonas Gullikson and Mr. George Robert Fraser Souter. The appointment is made by the Center according to section 6(e) of the Rules.
No further submissions were received by the Center or the Panel, the date scheduled for issuance of the Panel’s decision was therefore December 18, 2000.
4. Factual Background
Since 1893 Norway has had a central tax administration, headed by the Skattedirektorat (Directorate of Taxes), the Complainant, placed under the Royal Ministry of Finance and Customs.
The Complainant, its 19 county tax offices, 18 tax collectors offices, and 435 local tax offices, with in total more than 6000 employees, operates under different names, but also use the sign "Skatteetaten" as an identifier, under which the whole tax administration is commonly known to Norwegian tax payers. There are more than 3,400,000 taxpayers in Norway.
Amongst other (typical) tasks of a tax administration the Complainant also provides news and information on tax-related topics, including auditors, tax forms and tax computer programs, which in particular can be found at the Complainant's website "skatteetaten.no". The Complainant also provides other services, such as publications of manuals, booklets and forms to tax payers and other interested persons in Norway.
The Complainant does not own a trademark registration of the sign "Skatteetaten".
However, it is the owner of the domain names "skatteetaten.no", "Skatteetaten.net" and "skatteetaten.org". and administers under the domain name "skatteetaten.no" web pages on which it amongst others provides the above mentioned information. The website is most informative, containing over 300 pages with numerous links.
The Complainant, together with the Norwegian Agency for Development Cooperation and The Norwegian Medical Association, sent a letter to the Respondent dated July 28, 2000, asking him to close down some Internet sites, amongst them the site he was running under the "skatteeteten.com" domain name.
The Respondent registered on April 23, 2000, the domain name "skatteetaten.com".
The Respondent operated under the domain name "skatteetaten.com" a website in Norwegian language, which looked very similar to the Complainant's website, including the Claimant's sign "Skatteetaten" left on the top of the website and including a number of references and partially using text blocks from the Complainant's website and even citing on the bottom the people responsible for the making and updating of the Complainant's website. However, the main purpose of the Respondent's website was to provide the reader with text considered by the Complainant to be discriminating, offending and incorrect information, whilst the Respondent considers the text to be satiric and covered by the right of freedom of speech.
By letter dated August 9, 2000, the Respondent replied to the Complainant’s letter dated July 28, 2000, stating that he would remove the site(s) from the Internet and that he was planning to sell the domain name(s) "to market price". He also offered a priority to the Complainant to buy the domain name "skatteetaten".
5. Parties’ Contentions
Complainant submits that (1) the domain name "skatteetaten.com" is identical to the Complainant’s mark in which Complainant has rights; (2) Respondent has no rights or legitimate interests in respect of the domain name; (3) the domain name was registered and is being used in bad faith.
The Complainant relies on Sections 1 and 2 of the Norwegian Trademark Law according to which it is possible to obtain exclusive rights to a trademark either through registration or through use and recognition over time. It refers to approximately 10 million letters yearly being sent to Norwegian citizens in connection with tax related information, where the mark "Skatteetaten" is present on the envelope and to income tax return forms, being sent to about 3.400.000 tax payers, where the mark is on the envelope and on the form. In a further statement to the response the Complainant submits as Annex 1 copies of documents received by taxpayers, including the Respondent, displaying prominently the term "Skatteetaten". It also refers to its use of the mark as domain name for the website "skatteetaten.no" and to the use of the mark on this website in connection with the services provided on this website.
The Complainant contends that the Respondent received a lot of publicity in the media, where he inter alia stated: "I have done this to create political winds….It is my aim to harass the established parties."
According to the Complainant the letter of the Respondent dated August 9, 2000 was followed up by a telephone conversation with a representative of the Complainant, in which the Respondent said that he would give the involved parties (the Complainant and the other two associations, whose domain names he had registered in the ".com." gtl-domain) one week to decide if they would like to buy the domain names back. After that period he said, according to the Complainant, he would sell the domain names to the highest bidder. He also said that he would take the pages down, which he did.
After one week of no content on the web pages of the Respondent he filled the pages of "Skatteetaten.com" for some time with material relating to US-tax questions (in English) which he apparently found on the website "theonion.com". In the meantime the website is only giving a reference to a website ("nagboy.com"), operated by the Respondent.
Respondent asserts that (1) the domain name is not identical to a trademark in which Complainant has rights; (2) he has rights and/or legitimate interests in respect of the domain name; (3) the domain name has been registered and is being used in good faith.
Respondent believes that "skatteetaten" is a generic term, such as petrol station or bookstore, which everybody is free to use ("skatt" standing for taxes and "etat" standing for authority). There are hundreds of tax authorities in the world and "skatteetaten" "(the tax authorities") is for him a term that in the right context is applicable to all of them.
In Respondent's opinion the text which he had put on the website cannot be misleading and confusing the public because in an interview in the Stavanger Aftenblad of July 26, 2000 a representative of the Complainant had said: "This is very inconvenient, but the content has so little credibility that it is unlikely that anybody will believe it".
The Respondent furthermore contents that the correct translation of the Norwegian word "herse" in the Stavanger Aftenblad of June 26, 2000 in English was not "harass" but "satire". Therefore the correct quote of what he had said would be: "I have done this to create political winds…. It is my aim to satire the established parties and there is no economic motivation whatsoever".
As concerns the telephone conversation following the August 9, 2000 letter, the Respondent remembers the correct conversation to be as follows:
"I don't want to have this domain any longer.
You are hereby offered to buy the domain (which you judge as yours) back for the sum of $ 750, this sum is only to cover the registration fee, url-forwarding fee, hosting fee, fee to transfer the domain to you, etc. and is of a purely symbolic nature.
You have a week from now to decide if you want to buy it back, after which I will sell it for "market price" to the highest bidder."
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that Complainant must prove to merit a finding that the domain name of Respondent be transferred to the Complainant or be cancelled:
(i) the domain name is identical or confusingly similar to a trademark or service mark ("mark") in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
(i) Confusing similarity with a mark in which the Complainant has rights
The Complainant has used, since many years, the term "Skatteetaten" as a business identifier and the Panel is satisfied that the Complainant has rights in that business identifier. However, under the Policy, the Complainant must have rights in a mark (trademark or service mark). The Complainant has no registration of the word "Skatteetaten" as a mark. However, Norwegian Trademark Law also recognizes rights on unregistered marks on the condition that they have acquired distinctiveness through use.
First of all there is no doubt, in the Panel’s opinion, that "Skatteetaten" is not a generic term such as "petrol station" or "bookshop". Generic terms are terms that are needed by the public to designate a type of goods or services and which can never serve to distinguish goods or services. This is not the case for the term "Skatteetaten".
The term "Skatteetaten" is not capable of designating the many tax services that exist all over the world, since nobody in the respective states (except some singular persons who may be knowledgeable in the Norwegian language) would understand that term, which in reality outside Norway is a fantasy word without any meaning. In Norway, however, the - originally descriptive - term "Skatteetaten" is being used exclusively by the Tax Authorities. As a consequence of longstanding and extensive use the term "Skatteetaten" is now understood by the more than 3 millions tax payers and by the public at large as a sign (identifier) referring to Claimant. In the context of the information services rendered by the Claimant (see above "4, Factual background"), which are offered to everybody interested in information or documentation relating to tax issues, "Skatteetaten" is clearly used as a service mark.
The Panel therefore accepts that Complainant has rights in the (unregistered) word mark "Skatteetaten" and that the domain name "skatteetaten.com" of the Respondent must be considered to be identical. Applying the similarity test, the suffix ".com", which indicates the gTLD in which the domain name is registered cannot be taken into consideration since otherwise a domain name would practically never be identical to a protected trademark. Anyhow, beyond any doubt, the domain name " skatteetaten.com" is confusingly similar to the term "Skatteetaten ", in which the Panel is satisfied that the Complainant has rights.
(ii) Rights or legitimate interests in respect of the domain name
The term "Skatteetaten" is a mark in which the Claimant has protected rights in Norway, and no doubt the Claimant has not authorized the Respondent to use it. Even if the Claimant uses his mark for a restricted number of goods and, in particular, services, all in connection with tax-related issues, it is in view of the high degree of recognition of the term "Skatteetaten" as identifier of the Claimant, difficult to imagine any use of that term which would not automatically be associated, in the mind of Norwegian tax payers, with the Claimant. Therefore an assumption speaks in the Claimant's favor that the Respondent infringes its rights by using a domain name identical to his protected mark, and it must be seen whether the Respondent has put forward arguments to prove his rights or legitimate interests in the domain name "skatteetaten.com".
The Respondent claims that he intended to use the domain name in issue to satirize the Complainant. The Panel accepts that it is, in principle, legitimate to operate a domain name for the purposes of lawful criticism of a trademark owner. The Panel does not, however, believe that this right extends to occupying a domain name identical to a sign identifying a trademark owner. In particular, the Panel believes that anyone wishing to contact a trademark owner, has the right to contact the owner by addressing himself to the owner’s exact identifier, followed by the top level suffix, in this case .com, and to thereby reach the trademark owner, and not a third party, which itself does not have rights in that mark.
The Panel, accordingly, finds that it is satisfied that the test of paragraph 4a(ii) has been met, and that the Respondent had no rights or legitimate interests in respect of the domain name at issue.
(iii) Registration and use in bad faith.
For a Complainant to succeed, not only must the Panel be satisfied that a domain name has been registered in bad faith, but must also be used in bad faith. As an example, the Policy section 4(b) (i) mentions registration or acquisition of the "domain name primarily for the purpose of selling….".
The general test is therefore whether a Respondent has attempted to sell the domain name for a sum in excess of the Respondent’s out of pocket expenses in registering the domain name.
In this case, the Respondent wrote to the Complainant on August 9, 2000:
"The domain names have been an expense for us, and we will rather not keep the domain names. To cover our expenses and work we are planning to sell the domain names to market price. If you are interested, we will give you priority to buy them".
There is some follow up of oral conversations and apparently the Respondent had offered to sell the domain name "skatteetaten.com" for US $ 750. The Respondent contends that for this price he intended to sell the three domain names back which were in discussion. This is in contradiction to the text of the conversation as cited by the Respondent himself, where he only talks about "this domain". Even if the Panel accepts the Respondent's contention, and makes an apportionment by simple division, the Panel finds that the sum is in excess of the Respondent’s out of pocket costs in registering the domain name, and constitutes use in bad faith.
Furthermore, the Respondent, in his subsequent telephone conversation with the Complainant, according to his own statement in the Response, went on to say: "You have a week from now to decide if you want to buy it back, after which I will sell it for "market price" to the highest bidder".
This, in the Panel’s opinion, is a strong evidence of bad faith.
Furthermore, the panel notes that the Respondent occupied a domain name identical to a sign identifying a trademark owner, and he also was setting up a website under the domain name "skatteetaten.com" which in its format, graphical presentation and a large part of the text represented was identical with the website "skatteetaten.no" of the Complainant. In particular, the trademark "Skatteetaten" together with the graphical element used by the Claimant as its main identifier, was also prominently represented on the top of the website (at the same place as on the Claimant's website). The Respondent detracted Norwegian citizens seeking information on tax-related issues to his website. Persons who attempted to access Claimant's website either trying the "skatteetaten.com" domain name or coming to this website by using a search machine, were likely to be confused with respect to the context of the website or may have become discouraged and may not have searched any further, to the Complainant's and their own detriment.
The Panel, accordingly, finds that it is satisfied that the test of paragraph 4a(iii) has been met.
The Panel, accordingly, decides that the Complainant has proven each of the three elements of paragraph 4a of the Policy, and requires that the registration of the domain name "skatteetaten.com" be transferred to the Complainant.
Dr. Gerd F. Kunze
Jonas Gulliksson George R.F.Souter
Dated: December 18, 2000