WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ONOFF AB v.Tobias Karlsson
Case No. D2002-0925
1. The Parties
The Complainant is ONOFF AB being a company incorporated under Swedish law. Its address is P. O. Box 710, SE- 194 27 Upplands Väsby, Sweden.
The Respondent is, according to contact details from Registrarís Whois database (VeriSign Inc.), Tobias Karlsson, RDA Interactive AB, Sankt Eriksgatan 33, 112 39 Stockholm, Sweden.
2. The Domain Names
The domain name at issue is <onoff.com>, registered with Network Solutions, Inc. Registrar, Legal Department, 21355 Ridgetop Circle, Dulles, VA 20160, U. S. A., on September 25, 1998.
3. Procedural History
A complaint was submitted electronically to the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center (the "Center") on October 7, 2002, and Ė upon a request by the Center on October 10, 2002, to which a reply was registered that same day Ė in hard copy form on October 11, 2002. The Complainant chose to have the dispute decided by a single-member Administrative Panel. Receipt of the complaint was acknowledged to the Complainant by the Center on October 8, 2002. The next day, the Center requested and, on October 9, 2002, in due form received Registrar Verification. Payment of the administration fee was duly received. After Formal Compliance Review, verifying that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), the formal date of the commencement of the administrative proceeding was set to be October 15, 2002. On October 29, 2002, the Center received an e-mail letter from Michael Racz of <firstname.lastname@example.org>, to which reference will be made again in this decision under 4. A Notification of Complaint and Commencement of Administrative Proceeding to the parties and the Registrar was issued on that same day, followed by a Response Default Notification on November 5, 2002.
The Panel was properly constituted on November 8, 2002. A Notification of Appointment of Administrative Panel and Projected Decision Date was properly issued that day, indicating as single panelist Professor Gunnar Karnell. It was founded on a Statement of Acceptance and Declaration of Impartiality and Independence dated that same day. Latest date for a decision was set to be November 22, 2002.
4. Factual Background
In compliance with Paragraph 3 (b) (xiii) of the Rules, the Complainant has agreed to submit, only with respect to any challenge that may be made by the Respondent to a decision by the Administrative Panel to transfer or cancel the domain name that is the subject of its complaint, to the jurisdiction of the courts where the Respondent is located, as shown by the address given for the domain name holder in the concerned registrarís Whois database at the time of the submission of the complaint to the Center; as well as to the courts at the location of the principal office of the concerned Registrar (see above under 2.).
Due care has been given to contacting the Respondent. In this connection deserves to be quoted the e-mail letter, already mentioned here above under 3., which the Center, on October 29, 2002, received from Michael Racz as representative of RDA International, Inc., 100 Vandam Street, New York, N. Y. 10013 U. S. A.: "We are in receipt of your correspondence regarding the disputed use of <onoff.com>. The application for this domain was performed by people not connected at present with our firm, RDA, and not for any purpose ever contemplated for use by our firm. For your additional information, RDA Interactive AB, Sweden, does not exist as of this time. At RDA in NYC, we have no interest in any use or ownership of this domain. Please contact me personally regarding whatever steps/procedures are necessary to assist you in your interests. We have no interest in contesting your claim."
5. Partiesí Contentions
A. Complainant (summary; and request for remedy)
The Complainant suffers damages from not being able to use the domain name in its own, legitimate business operation.
The domain name <onoff.com> is identical in many cases and similar in a number of other cases to trademarks owned by ONOFF AB and its fully-owned subsidiary ONOFF Sverige AB, so as to mislead the Internet public about the origin of the domain name <onoff.com> registered by the Respondent.
b) The Respondent has no rights or legitimate interests in respect of the domain name.
The Respondent has no rights in any trademark containing the word ONOFF. The Respondent has not Ė to the Complainantís knowledge Ė made any use of the domain name in question but for offering it for sale (see below), and The Respondent is not known by the name of ONOFF.
c) The domain name has been registered and is used in bad faith.
The Respondent has known that its registration would infringe upon the rights of ONOFF AB, being the largest retail chain in consumer electronics in Sweden with 83 retail stores (all displaying the ONOFF name) with an aggregate ONOFF group turnover of SEK 3.300 million in 2001. Since the domain name registration, the Respondent has repeatedly offered to sell the domain name <onoff.com> to the Complainant for excessive sums. The offers have been declined by the Complainant. On March 27, 2002, having been offered by a representative for the Complainant USD 1.500 (i. e. equal to the cost of an administrative proceeding). The Respondent rejected this offer, answering with an unreasonable counter-offer of SEK 60,000 (about USD 6,500). This implies that the Respondent does not have any legitimate interests in respect of the domain names.
The Respondent has registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name and he is engaged in a pattern of such conduct.
d) The Complainant has requested, in accordance with Paragraph 4 i. of the Policy, that the domain name <onoff.com> be transferred to the Complainant.
There has been no response from the Respondent.
6. Discussion and Finding
A. The domain name at issue is confusingly similar to trademarks to which by registration the Complainant has acquired rights prior to the Respondentís registrations of the domain name. The Panel chooses to base its decision about similarity on the Complainantís adduced prior registrations and applications for registrations of trademarks, leaving in this respect aside any possible rights based upon the use of marks as unnecessary for reaching the Panelís conclusions.
B. Regarding rights and legitimate interests relating to the domain name, the Respondent has failed to show evidence of any such right or interest. His domain name registration has been made after the coming into existence of relevant trademark rights of the Complainant. Also, the arguments provided by the Complainant convincingly establish the absence of any relevant right or interest attributable to the Respondent. The Panel concludes, from how the domain name has been used, together with Respondentís failure to respond to the complaint, that there are no rights or interests worthy of legal recognition on the part of the Respondent.
C. The Panel does not believe that the Respondent has chosen and registered its domain name without knowledge of pre-existing trademarks owned and used by the Complainant. ONOFF is not a word that anyone located in Sweden and legally unrelated to the Complainant would legitimately have chosen at the time of registration as a basic element for his domain name. The Panel does not believe that the Respondent, a person located in Sweden, can have been unaware of the Complainantís trademarks.
The only use of the domain name that is evidenced in the case at hand is its use for sale to the Complainant. The Panel finds no indication that such use is not currently envisaged by the Respondent. His latest offer has been turned down, but he has earlier repeatedly made offers to the Complainant and only a decision in the Complainantís favor in the present administrative proceeding will put that to an end. Consequently, the Panel finds that the Respondent is using the domain name. This has been shown to take the form of intentional attempts to sell the domain name registration to the Complainant/trademark owner for valuable compensation in excess of documented out-of-pocket costs directly related to the domain name. At that the Respondent engages in a pattern of conduct of preventing the Complainant from reflecting its marks in a corresponding domain name.
The Panel finds that the domain name has been registered and is being used in bad faith.
D. The Panel concludes that all elements mentioned in the Policy under article 4 a. (i)-(iii) are present in the case. The Complainant has chosen to require that the domain name be transferred to the Complainant and so it shall be.
The Administrative Panel requires that the registration of the domain name <onoff.com> be transferred to the Complainant.
Dated: November 11, 2002