WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alfred Berg Holding Aktiebolag v. P D S
Case No. D2008-0566
1. The Parties
The Complainant is Alfred Berg Holding Aktiebolag, Box 893, 101 37 Stockholm, Sweden, represented by Setterwalls Advokatbyrå, Sweden.
The Respondent is P D S, Stockholm, Sweden.
2. The Domain Name and Registrar
The disputed domain name <alfredberg.com> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2008. On April 11, 2008, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On April 15, 2008, Network Solutions, LLC, transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 15, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 5, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 7, 2008.
The Center appointed Anders Janson as the sole panelist in this matter on May 9, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a member of international ABN AMRO-group which is an international bank with more than 4500 offices in 53 countries. According to a certificate of registration from the Swedish Companies Registration Office the Complainant has had “Alfred Berg” as a part of its business name since the Complainant was founded in 1917.
The Complainant is the holder of several trademarks registrations that consist of the trademark ALFRED BERG, such as;
- EC registration no 000527119, class 36, dated November 30, 1999;
- Swiss registration no 452726, class 36, dated July 8, 1998;
- Swedish registration no 335543, class 36, dated March 17, 2000; and
- Swedish registration no 375252, class 35 and 36, dated October 7, 2005.
Furthermore the Complainant is the holder of the domain names <alfredberg.se> and <alfredberg.net>. The Complainant also has stated that there are several other domain names registered for companies within the same group as the Complainant, such as <alfredberg.dk>, <alfredberg.no>, <alfred-berg.no>, <alfredberg.fi>, <alfred-berg.fi>.
The domain name <alfredberg.com> was first registered by the Respondent in 1996. A printout of the website “www.alfredberg.com” on April 8, 2008, which is included in the Complaint, shows that the website is “under construction”.
5. Parties’ Contentions
The Complainants maintains that the domain name is clearly identical to Complainant’s established and well-known trademark ALFRED BERG and confusingly similar to Complainant’s figurative trademarks consisting of ALFRED BERG.
The Complainant asserts that the Respondent has no authorization to use the name “Alfred Berg” or to apply for or use any domain name incorporating “Alfred Berg”. The Respondent has failed to make good faith use of the domain name for its business. Accordingly, the Respondent has no rights or legitimate interest in respect of the domain name.
The Complainant claims that the Respondent has a reputation as a Swedish so called “cybersquatter” who on July 15, 1996, i.e. the date of registration of <alfredberg.com> registered numbers of well known Swedish trademarks of Swedish companies as domain names. The domain name seems to have been registered by the Respondent with the purpose of selling, renting or otherwise transferring the domain name to Complainant or to a competitor of the Complainant to gain financial benefits. With regard to this the Complainant has referred to several previous cases involving the Respondent where the domain name was transferred to the complainant.
The Complainant asserts that the trademark ALFRED BERG has long before the registration of the domain name been established due to the extensive and persistent use for more than 100 years in connection with financial services and the trademark is considered to be well-known. The Complainant furthermore argues that the Swedish citizen Tony Lennartsson seems to be the individual behind the Respondent and that he was also the deputy board member of the Swedish company Control Alt Delete Stockholm AB which has a reputation as a cybersquatter as well as the Respondent. In support of this for the purpose of this proceeding the Complainant has referred to a number of cases where Control Alt Delete of Stockholm was the respondent and the domain name was transferred to the complainant. The above shows that the Respondent was clearly aware of the Complainant, the reputation and value of the trademark ALFRED BERG. There are, according to the Complainant, no doubts regarding the fact that the domain name was registered in bad faith.
With reference to the WIPO Case No. D2000-0003, Telstra Corporation Limited v. Nuclear Marshmallows and WIPO Case No. D2002-0131, Ladbroke Group Plc v. Sonoma International LDC, the Complainant upholds that Respondent’s passive holding of the domain name amounts to the domain name “being used in bad faith”.
Finally, the Complainant requests the Panel to issue a decision that the disputed domain name shall be transferred to the Complainant in accordance with Paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to Paragraph 15 (a) of the Rules the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
Since both parties are domiciled in Sweden this means that applicable Swedish law and principles would apply as well.
According to Paragraph 4 (a) of the Policy the Complainant must prove each of the following:
1. that the domain name registered by the Respondent is identical or confusingly similar to the trademark or service mark in which the Complainant has rights; and
2. that the Respondent has no rights or legitimate interests in respect of the domain name; and
3. that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The domain name is identical to the trademark and company name Alfred Berg except from the non-distinctive suffix “.com”.
B. Rights or Legitimate Interests
Complainant has made a prima facie case that the Respondent has no rights, nor legitimate interests in respect of the domain name. There has been no response and the Panel therefore finds that the Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
According to the facts put forward in the Complaint the trademark Alfred Berg was not registered at the time of the Respondent’s registration of the disputed domain name. With regard to that, the company name Alfred Berg evidentially was being used and registered by the Complainant as early as 1917 and from the undisputed facts upheld by the Complainant that the trademark long before the registration of the domain name has been established through extensive and persistent use in connection with financial services it is accepted as a fact by the Panel that the trademark was very well known in Sweden at the time of the registration of the domain name in 1996.
As the Respondent has chosen not to respond to the Complaint there is no objective reason shown for the registration or use of the domain name in favor of the Respondent. It seems that the Respondent has been a passive holder of the domain name since it was registered in 1996 and it is clear that the Respondent in several cases before the Panel has been found to be a so called “cybersquatter”.
In view of the above the Panel finds it highly improbable that the Respondent has selected the domain name not being aware of the Complainant’s trademark. Considering all circumstances in the case the Panel finds that the Complainant has shown that the Respondent has registered and is using the domain name in bad faith.
Consequently all the prerequisites for cancellation or transfer of the domain name according to Paragraph 4 (a) of the Policy are fulfilled.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <alfredberg.com> be transferred to the Complainant.
Dated: May 23, 2008