WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Elkjøp Nordic A/S v. Svenska Dator AB
Case No. D2010-1018
1. The Parties
The Complainant is Elkjøp Nordic A/S of Lørenskog, Norway, represented by Cedel AB, Sweden.
The Respondent is Svenska Dator AB of Jönköping, Sweden.
2. The Domain Name and Registrar
The disputed domain name <elgiganten.com> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2010. On June 21, 2010, the Center transmitted by email to Network Solutions, LLC., a request for registrar verification in connection with the disputed domain name, and Network Solutions, LLC. On June 22, 2010, confirmed that the Respondent is listed as the registrant and provided the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 July 6, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 26, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default July 27, 2010.
The Center appointed George R. F. Souter as the sole panelist in this matter on August 12, 2010. 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. The Panel finds that it was properly constituted.
The Complainant requested that the language of proceedings should be Swedish. Paragraph 11 of the Rules states:
“(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
(b) The Panel may order that any documents submitted in languages other than the language of the administrative proceeding be accompanied by a translation in whole or in part into the language of the administrative proceeding.”
Rule 15(d) of the Rules require the Panel to provide the reasons on which the decision is based. The Panel understands this requirement to reflect the public interest that the reasons for decisions should have the widest possible currency amongst those interested in the operation of the Policy. The Center’s policy of publishing every decision clearly serves this public interest.
Rule 11(a) provides an appropriate mechanism as to the choice of language in the proceedings, namely that the decision should primarily be in the language of the registration agreement, unless the parties in the proceedings agree on another language or the panel determines otherwise. In the present case, there is no agreement between the parties as to language, as the Respondent declined to be involved in the proceedings. The Panel, therefore, decides that the language of proceedings in the present case should be English, which as confirmed by the registrar is the language of the registration agreement.
The Panel, however, is prepared to also consider the private interests of the parties, and is sympathetic to the Complainant’s request to keep its costs to a minimum by submitting its Complaint and accompanying documents in Swedish. This does not in the Panel’s view disadvantage the Respondent, which is a Swedish company. In this case, the Complainant, although a Norwegian company, has chosen a Swedish representative, and the Respondent is a Swedish company. Accordingly, in this case the Panel who is competent in both Swedish and English decides not to exercise his power under Rule 11(b) to order that documents submitted in Swedish be translated into English.
4. Factual Background
The Complainant’s Danish subsidiary company, Elgiganten A/S, is the proprietor of European Community Trade Mark Registration No. 005908678, dated May 30, 2010, of the trade mark ELGIGANTEN, in Classes 7, 8, 9, 11, 21, 35, 36 and 37. This registration claims a sole “seniority” claim, namely a Danish registration dating from 2005.
The Complainant has shown the Panel a copy of a licence agreement, between Elgiganten A/S and itself, which gives it the unlimited right to use the trade mark for any business purpose, and also authorizes it to be the owner of any domain name in this relation.
The disputed domain name <elgiganten.com> was registered on October 3, 1999.
5. Parties’ Contentions
The Complainant claims to be the biggest supplier of home electronic and electrical appliances and related services, with the most effective distribution channels, in the Nordic countries, with 251 stores and shops across Norway, Sweden, Denmark, Finland, Iceland and the Faroe Islands. In 2007/2008 its turnover was 17.6 milliards of Norwegian crowns (NOK).
In Sweden, its subsidiary, Elgiganten AB was established in 1994, and now has 61 stores and shops, and circa 1,600 employees across the country. Weekly, some 300,000 shoppers visit its stores, from Kiruna in the north to Ystad in the south, and there are some 1,300,000 visitors per month to its website at <elgiganten.se>.
The Complainant states that, in 1999, when the disputed domain name was registered, Elgiganten AB had already 17 stores throughout Sweden, and over 6 million customers.
The Complainant alleges that that the disputed domain name is identical or confusingly similar to the trade mark ELGIGANTEN.
The Complainant further alleges that neither it nor any company within its group has licensed or given permission to the Respondent to use the trade mark ELGIGANTEN, or any similar trademark, and that, so far as it is aware, the Respondent has not registered or adopted any trade mark identical or similar to the disputed domain name, and that the Respondent has no rights or legitimate interests in respect of the disputed domain name
The Complainant alleges that the domain name was registered and is being used in bad faith, and has drawn the Panel’s attention to the current operation of the website operated by the Respondent, which, the Complainant alleges, identifies the Respondent as a competitor, and has drawn the Panel’s attention to the decision in Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279 in this connection.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that a complainant must prove to merit a finding that the disputed domain name be transferred to the complainant or be cancelled:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant currently enjoys registered trade mark rights and well known status to the trade mark ELGIGANTEN in Sweden.
The disputed domain name differs only from the trade mark ELGIGANTEN by the addition of “.com”. It has been the common practice of Panels in proceedings under the Policy to regard the generic top level domain (gTLD) name “.com” as lacking legal significance when comparing a domain name with a trade mark. The Panel follows this practice, and, consequently finds that the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent did not take advantage of the opportunity presented in these proceedings to advance any justification of a claim to rights or legitimate interests in the disputed domain name in these proceedings, and the Panel draws the appropriate conclusion. There appear to be no circumstances attached to the Respondent’s name or address which might lead to a finding of legitimate interest. Taking into account the Panel’s satisfaction that the Complainant presented a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent has not rebutted this, the Panel decides that the Complainant has satisfied the requirements of Paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) requires the Complainant to satisfy the Panel that the disputed domain name has been registered in bad faith. The appropriate date for deciding this question is October 3, 1999, the date on which the disputed domain was registered, when the Complainant, so far as the Panel is aware, had no registered trade mark rights. The Complainant did, however, in 1999, operate seventeen ELGIGANTEN stores across Sweden, with circa 6 million customers. As Sweden currently has a population estimated at circa 9.4 million, and may well have had less in 1999, a figure of circa 6 million customers would, in the Panel’s opinion, have been sufficient to confer enforceable trade mark rights to ELGIGANTEN in Sweden through its use in connection with the operation of its stores in Sweden, and very few in Sweden would have been likely to have been unaware of the existence of ELGIGANTEN in commerce. Accordingly, the Panel decides that the Complainant has satisfied him that the disputed domain name has been registered in bad faith.
Paragraph 4(a)(iii) also requires the Complainant to satisfy the Panel that the disputed domain name is being used in bad faith. The appropriate date here is the present. In the Panel’s opinion, the content of the web site operated under the disputed domain name does identify the Respondent as a potential competitor of the Complainant’s, and, in the Panel’s view, the Respondent cannot credibly be assumed to be unaware of the Complainant’s ELGIGANTEN trade mark. This is sufficient, in the Panel’s view, for him to decide that the disputed domain name is being used in bad faith.
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 <elgiganten.com> be transferred to the Complainant.
George R. F. Souter
Dated: August 27, 2010