WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Kvällstidningen Expressen v. MegaWeb.com Inc. – Hostmaster Hostmaster
Case No. D2013-2151
1. The Parties
The Complainant is AB Kvällstidningen Expressen of Stockholm, Sweden, represented by Dipcon AB, Sweden.
The Respondent is MegaWeb.com Inc. – Hostmaster Hostmaster of Wilmington, Delaware, United States of America (“USA”).
2. The Domain Name and Registrar
The disputed domain name <expressen.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2013. On December 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 12, 2013, the Registrar transmitted by email to the Center its verification response confirming that:
(a) it is the Registrar for the disputed domain name;
(b) the disputed domain name is registered in the name of the Respondent and the contact details are correct;
(c) the Respondent registered the disputed domain name on September 30, 1998;
(d) the language of the registration agreement is English;
(e) the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain name.
The Center verified that the Complaint satisfied the formal requirements of 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 December 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 8, 2014.
On December 27, 2013, the Center received an email in reply to the couriered written notice sent to the Respondent’s address. According to the email, the recipient, Delaware Corporation Organizers Inc., had ceased to be the registered agent for the Respondent “for over 10 years”. The email suggested another address which Delaware Corporation Organizers Inc. records indicated as the agency address for the Respondent. The written notice couriered to the administrative address shown in the WhoIs record, confirmed as correct by the Registrar, was successfully delivered. The emails transmitting the Complaint and annexes to the contacts confirmed by the Registrar as correct for the Respondent were also successfully transmitted.
The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2014.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on January 17, 2014. 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 Swedish company that publishes the newspaper “Expressen. Expressen” is one of two evening newspapers published in Sweden on a national basis. Its average readership last year was 228,000 readers per day. The newspaper was first published under the title “Expressen” in 1944.
The Complainant has also been operating an online news site under the “Expressen” banner since about June 1997. This news site is operated from “expressen.se”. This website has an average of 2.3 million unique viewers each week.
The Complainant has two registered trade marks for EXPRESSEN. The first, Swedish National Trade Mark No. 0102953, was registered in February 1961 for newspapers in International Class 16, advertising in International Class 35 and commercial provision of news in International Class 42. The second, Swedish National Trade Mark No. 0321791, was registered in August 1993 and covers a very wide range of goods and services in International Classes 14, 16, 25, 28, 35, 38, 39, 41 and 42.
Before the commencement of the proceedings, the disputed domain name resolved to what appears to have been a fairly typical pay-per-click website with links to on-line dating and “Russian Bride” sites and other links to online newspapers which the Complainant says are its competitors. The links and hyperlinks on the website to which the disputed domain name resolves are in the Swedish language.
5. Discussion and Findings
A. Notification of the Proceedings to Respondent
No response has been filed. One of the addresses to which the Centre couriered the written notice generated the email communication from Delaware Corporation Organizers Inc. stating that it has not been the registered agent for the Respondent for more than 10 years and providing an address which it says is shown in official records as the registered agent for the Respondent. This raises the question whether the Complaint has been properly served on the Respondent.
Under paragraph 2(a) of the Rules, the Center has the obligation “to employ reasonably available means calculated to achieve actual notice to Respondent”.
The Panel first notes that, despite Delaware Corporation Organizers Inc.’s email, the Registrar has confirmed the address details for the Respondent which the Center used. Respondents have an obligation to keep their contact details current and correct. While it is possible that the Respondent has changed its address given the timeframe indicated by Delaware Corporation Organizers Inc., the Respondent has not seen fit to update or change the relevant details in the WhoIs record. Delaware Corporation Organizers Inc. did not provide an official document from the Delaware regulatory authorities confirming a different registered agent – for perfectly understandable reasons. If it is no longer acting for a client, why should it incur additional expense on that client’s behalf? Nonetheless, the Panel does not have a safe basis to proceed on the basis that the address identified by Delaware Corporation Organizers Inc. is in fact the correct address for the Respondent. Rather, consistently with usual practice, the Panel considers the preferable course is to proceed on the basis of the WhoIs records confirmed as correct by the Registrar.
Further, as already noted, in addition to couriering the written notice to the address of the Respondent provided by the Registrar, the Center also couriered the written notice to the address of the administrative contact confirmed by the Registrar and emailed a copy of the Complaint and annexes to the email addresses for the Respondent and the administrative contact also confirmed by the Registrar. Each of those communications was successfully delivered, but has not elicited any response. In light of the matters discussed below in sections 5C and 5D, that may well be readily understandable too. Nonetheless, given the steps taken by the Center, the Panel finds that the Center has taken the reasonably available means to achieve actual notice of the dispute to the Respondent.
Accordingly, the Panel finds that the Complaint has been properly served on the Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
B. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trade mark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the two registered trade marks in Sweden referred to in section 4 above for EXPRESSEN.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Bearing in mind that it is permissible to disregard the “.com” component of the disputed domain name as a functional aspect of the domain name system (Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046, Ticketmaster Corporation v. DiscoverNet Inc., WIPO Case No. D2001-0252.), the disputed domain name is identical to the Complainant’s registered trade marks.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
C. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
The Complainant has not given the Respondent any licence or permission to use the trade mark EXPRESSEN. The Respondent is not associated with the Complainant, or its business, in any way. So far as the Complainant is aware, the Respondent does not own any trade marks for EXPRESSEN.
The disputed domain name is not the Respondent’s name nor apparently derived from it. Accordingly, paragraph 4(c)(ii) of the Policy appears to be inapplicable.
As the Complainant points out, the website to which the disputed domain name resolved before the commencement of the proceedings appeared to be a fairly typical variety of pay-per-click advertising website. (For completeness, the Panel notes that this conclusion is reinforced by the website to which <megaweb.com> resolves.) Accordingly, paragraph 4(c)(iii) of the Policy would not be applicable.
The operation of a pay-per-click website is not in and of itself impermissible under the Policy. In this case, however, it appears that the Respondent’s website seeks to take advantage of the trade mark significance of the disputed domain name and consequently does not constitute a bona fide offering of goods or services for the purposes of paragraph 4(c)(i) of the Policy (see WIPO Overview 2.0, paragraph 2.6).
The factors that lead the Panel to that conclusion include that the Respondent’s website is written in Swedish and appears to be targeted at a Swedish audience. One significance of that is that Sweden is the Complainant’s home base, where it has the registered trade marks and a large customer base. Another aspect is that the Respondent appears to be based in the USA. In addition, to the extent that the Respondent’s services may be characterized as advertising services, they fall directly within the scope of the Complainant’s trade mark registrations. Further, the Respondent’s website includes links to newspaper sites which the Complainant states are competitive with it; the Respondent’s website also includes many links to online dating sites and “Russian Bride” sites.
In these circumstances, the Panel finds that the Complainant has established a clear prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name under the Policy.
D. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and is being used in bad faith by the Respondent.
The Respondent has held the disputed domain name for a long time, since 1998. However, the Complainant’s use of EXPRESSEN and its trade mark registrations long predate that. In addition, as the Complainant points out, the Complainant’s online presence through <expressen.se> anticipates the Respondent’s registration of the disputed domain name by about one year. It would appear that the Respondent was well aware of the trade mark significance of EXPRESSEN in Sweden when registering the disputed domain name as it has created a website in Swedish for the disputed domain name. The use of the disputed domain name for pay-per-click advertising through directing traffic to competitors of the Complainant and online dating sites and “Russian Bride” sites clearly satisfies the requirement for use in bad faith under the Policy.
Accordingly, the Panel finds that the disputed domain name has been both registered and used in bad faith by the Respondent.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <expressen.com> be transferred to the Complainant.
Warwick A. Rothnie
Date: January 31, 2014