WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ellos AB v. Control Alt Delete AB
Case No. D2001-0815
1. The Parties
The Complainant is Ellos AB, 501 86 Borås, Sweden, represented by Ms. Helena Rosenberg of Domain Network Stockholm AB, Stockholm, Sweden ("Complainant").
The Respondent is Control Alt Delete AB, Rådmansgatan 7, 114 25 Stockholm, Sweden ("Respondent").
2. The Domain Name and Registrar
The dispute concerns the domain name <ellos.com>.
The Registrar is Network Solutions, Inc., Herndon, VA, USA.
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received the Complainantís Complaint in hard copy on June 20, 2001, and in electronic form on June 25, 2001.
The Center verified that the complaint was filed in accordance with the requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for the Policy ("the Rules"), and the Supplemental Rules for the Policy ("the Supplemental Rules").
Complainant made the required payment to the Center.
On June 25, 2001, the Center transmitted via e-mail to the Registrar a request for registrar verification in connection with this case, and received on June 26, 2001, the Registrarís Verification Response, confirming that (1) Network Solutions is the Registrar of the Domain Name, (2) the Registrant is Control Alt Delete (3) Domain, Administration (TL796) is the Administrative and Billing Contact, and Hostmaster, Verio (TH941) is the Technical Contact, (4) Network Solutionís Service Agreement Version 5 is in effect, and (5) the Domain Name is in "Active" status.
On June 27, 2001, the Center transmitted the Notification of Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint, to the Respondent via e-mail and via post/courier to the address identified in the Registrar verification response. The Center advised that (1) the Respondentís Response was due by July 7, 2001, (2) in the event of default the Center would still appoint a Panel to review the facts of the dispute and to decide the case, (3) the Panel may draw such inferences from the Respondentís default as it considers appropriate, (4) the Complainant had elected for the matter to be decided by a single panelist.
The Respondent did not submit a timely Response. Accordingly, the Center sent to the Respondent a Notification of Respondent Default on July 9, 2001.
On July 20, 2001, in view of the Complainantís designation of a single panelist the Center invited Mr. P-E H Petter Rindforth to serve as a panelist.
Having received Mr. Rindforthís Statement of Acceptance and Declaration of Impartiality and Independence, the Center, on July 24, 2001, transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Rindforth was formally appointed as the sole Panelist. The Projected Decision Date was August 7, 2001. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
The Administrative Panel shall issue its Decision based on the Complaint, the Policy, the Rules, and the Supplemental Rules. The case before the Panel was conducted in the English language.
4. Factual Background
The Complainant states that Ellos AB - established in Sweden in 1947 - is the largest mail order company for clothes in Scandinavia, with more than 4 million clients and with subsidiaries in Finland and Norway. Ellos AB is now part of the French company Redacts of PPR (Pinault-Printemps-Redoute) group. Redacts is the worldís third largest mail order company for clothes.
The ELLOS trademark is registered in a numerous classes in Benelux, Denmark, Estonia, UK, Iceland, Lithuania, Latvia, Russia, Sweden, Finland, Norway and Germany. There are also pending applications for ELLOS in Poland as well as the European Union. Copies of the relevant Certificates of Registration, most of them not translated into English, are submitted as Annex 3 of the Complaint.
The Respondent registered the Domain Name on July 4, 1996 (Annex 1 of the Complaint), however the Respondent has not provided any information on its business activities.
5. Partiesí Contentions
The dominant part of the Domain Name comprises the word "ellos" which is identical to the registered trademark ELLOS. The Complainantís name is a well-known trademark associated with high quality and security and the usage of the mark is strictly regulated. The Respondent is not a licensee, nor in any way authorized by the Complainant to use the name ELLOS or to apply for or use any domain name incorporating any of the trademarks held by the Complainant.
The Respondent is a company incorporated in Sweden, with a business concept to register well-known terms and trademarks as domain names. Respondent currently holds more than 200 domain names reflecting well-known Swedish trademarks (some of the names are listed as Annex 4 of the Complaint).
On April 4, 2001, the Complainant sent a warning letter to the Respondent (Annex 5 of the Complaint), stating that the mere registration of the Domain Name was considered as trademark infringement, and the Respondent was demanded to stop using the Domain Name and to cancel the same.
The Respondent called the Complainant with an offer to sell the Domain Name for an amount to be suggested by the Complainant. The Complainant offered SEK 500, but the Respondent demanded additional compensation for "all expenses" related to the Domain Name since its registration in 1996. The Complainant accepted these conditions, but never heard from the Respondent again.
An e-mail was sent from Respondent to the Complainant on April 12, 2001 (Annex 6 of the Complaint), confirming that the Domain Name was for sale. The said e-mail also stated that if the parties could not make a deal, the Respondent would give the Domain Name to a third party, namely the small city of Ellös in Sweden.
It is therefore concluded by the Complainant that the Respondent has no legitimate interest in respect of the Domain Name and that the same is registered primarily in order to prevent the owner of the trademark to reflect the mark in a corresponding domain name and/or with the purpose of selling, renting or otherwise transferring the domain name to the Complainant. The Domain Name is therefore registered in bad faith.
The domain name <ellos.com> does not resolve to a website or other on line presence. The Respondent has not promoted or tried to market the domain name. However, as determined in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, inaction is clearly within the concept of "being used in bad faith".
The Complainantís trademark has strong name recognition and is widely known as result of its substantial use in Sweden and in the rest of Scandinavia.
The Respondentís practice is to trade on the value of the trademarks that he has registered as domain names by way of storing and selling the domain names to the owners of the trademarks. The Respondent has engaged in a pattern of such conduct. Earlier WIPO-cases and articles, which prove such a conduct of the Respondent are provided as Annex 8 of the Complaint.
The Respondent was well aware of the value of the Complainantís trademark when making the registration and the Respondent has not made any good faith use of the domain name.
In light of these circumstances the Respondentís holding of the domain name must amount to acting in bad faith and the criteria of being used in bad faith must be fulfilled.
The Respondent has not contested the allegations of the Complaint.
6. Discussion and Findings
According to Paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the Respondentís 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 Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
1. Identical or Confusing Similarity
The Complainant is the owner of the Swedish trademark registration No 47 393, registered on January 14, 1970 (Annex 3 of the Complaint). The ELLOS trademark is also registered in a number of other countries. The relevant part of the Domain Name is <ellos.com>.
Accordingly, the Panel finds that the Domain Name is identical to the Complainantís registered and well-known trademark ELLOS.
2. No Rights or Legitimate Interest
ELLOS is a distinctive and established trademark and is also the significant part of the Complainantís company name Ellos AB.
The Respondent has not filed any evidence to prove any rights to use the Complainantís trademark and has not contested the Complainantís statement that Respondent is not an authorized agent or licensee of the Complainantís products or services.
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
3. Registered and Used in Bad Faith
As stated above, both the Complainant and the Respondent are domiciled in Sweden, Complainantís original and most important market. The trademark ELLOS is registered since over 30 years and the Panel therefore concludes that the Respondent registered the Domain Name specifically with the Complainant in mind.
The Respondentís domain names have been the issue in a number of other UDRP proceedings, such as Sydkraft AB v. Control Alt Delete (WIPO Case No. D2000-0381), Europolitan AB v. Control Alt Delete (WIPO Case No. D2000-0609), Mandarin Oriental Services B.V. v. Control Alt Delete (WIPO Case No. D2000-1671) and Bonnier AB v. Control alt Delete (WIPO Case No. D2001-0402). It is, from these prior cases as well as from the circumstances in the present case, obvious that the Respondent is not only a trader in domain names (which is not of itself unlawful) but also a so-called cybersquatter.
According to a news article of September 28, 1999, cited in WIPO Case No. D2000-1671 and not contested by the Respondent, domain names consisting of otherís trademarks are regarded by the Respondent as passive assets that can be sold back to the trademark owners upon their approach.
From the earlier cases as well as from news articles (some of them attached as Annex 8 of the Complaint), the Panel concludes that the Respondent is registering domain names in order to prevent the owners of the corresponding trademarks from reflecting the marks in corresponding domain names, and that the Respondent is clearly engaged in a pattern of such conduct.
From the correspondence between the Complainant and the Respondent in this particular case (Annex 6 of the Complaint), the Panel notes that the Respondent (by not replying) rejected an offer from Complainant to buy the Domain Name for a nominal amount of money. It is therefore concluded that the Respondent aimed to transfer the Domain Name to the Complainant only for a valuable consideration in excess of Respondentís out-of-pocket costs directly related to the Domain Name.
As noted by the Complainant and established in the Telstra case (WIPO Case No. D2000-0003) the requirement of the Policy of a domain name "being used in bad faith" is not limited to positive action. The circumstances of this case indicating that the Domain Name is registered and is being used in bad faith are:
(i) the Complainantís trademark is well known in Sweden, the domiciled country of the Respondent
(ii) the Respondent has provided no evidence of any actual or planned good faith use of the Domain Name
(iii) the Respondent is a trader in domain names and is known in Sweden as owners of a great number of trademark related domain names
(iv) the Respondent has previously officially stated that it sees the domain names reflecting other companies protected trademarks as a passive asset of the Respondent
(v) when being approached by the Complainant, the Respondent rejected the offer to transfer the Domain Name to the Complainant for an amount related to Respondentís out-of-pocket costs for the same and instead threatened to transfer the Domain Name to a third party.
Given the above circumstances, the Panel concludes that the Respondent registered and is using the Domain Name in bad faith.
The Panel concludes that the Complainant has succeeded in proving the three elements within paragraph 4(a) of the Policy.
The Complainant has requested transfer of the Domain Name.
The Panel concludes (a) that the Domain Name <ellos.com> is identical to the Complainantís trademark ELLOS, (b) that the Respondent has no rights or legitimate interest in the Domain Name, and (c) that the Respondent has registered and used the Domain Name in bad faith.
Therefore, pursuant to paragraphs 4 (i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <ellos.com> be transferred to the Complainant Ellos AB.
P-E Petter Rindforth
Dated: August 7, 2001