WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Telia Company AB v. Martin Wiss
Case No. D2016-1274
1. The Parties
The Complainant is Telia Company AB of Stockholm, Sweden, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Martin Wiss of Jönköping, Sweden.
2. The Domain Names and Registrars
The disputed domain name <telia.company> is registered with Marcaria.com International, Inc. The disputed domain name <teliasonera.company> is registered with 101domain, Inc. (the “Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2016. On June 23, 2016, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On June 23, 2016 and June 24, 2016, the Registrars transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details. On June 27, 2016, the Complainant submitted an amended Complaint.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 18, 2016. The Response was filed with the Center on June 28, 2016. A first Supplemental Filing from the Respondent was filed with the Center on July 5, 2016. A second Supplemental Filing was submitted by the Respondent on July 15, 2016.
The Center appointed Petter Rindforth as the sole panelist in this matter on July 1, 2016. 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.
The Panel shall issue its Decision based on the Complaint, the Response, the Supplemental Filings from the Respondent, the Policy, the Rules, and the Supplemental Rules. The case before the Panel was conducted in the English language.
4. Factual Background
The Complainant is a Swedish based telephone company and mobile network operator, and the owner of a number of trademark registrations for TELIA and TELIA SONERA, including:
- IR Registration No. 1274465 TELIA (word), registered on May 8, 2015 for goods and services in classes 9, 35, 36, 37, 38, 41, 42 and 45; covering 16 countries/regions, including the European Union;
- EUTM No. 003112034 TELIASONERA (word), filed on March 27, 2003, and registered on March 2, 2005 for goods and services in classes 9, 16, 35, 36, 37, 38, 41, 42, 43, and 44;
- Swedish National trademark registration No. 241455 TELIA (word), filed on January 30, 1991, and registered on October 16, 1992 for goods and services in classes 9, 38 and 42;
- Swedish National trademark registration No. 363058 TELIASONERA (word) filed on October 8, 2002, and registered on September 26, 2003 for goods and services in classes 9, 16 and 35.
The disputed domain name <telia.company> was registered on August 28, 2015, and the disputed domain name <teliasonera.company> was registered September 2, 2015.
The Respondent describes himself as a hobby web site developer.
5. Parties’ Contentions
The Complainant describes itself as a prominent telephone company and mobile network operator with its roots in Sweden and Finland, and also operating in other countries in Northern Europe, Eastern Europe, Central Asia, South Asia and Spain, with a total of 21,000 employees and around 515,000 shareholders. As of year-end 2015, the Complainant had net sales of SEK 86,569 million and 27 million customer subscriptions.
The Complainant is highly active on the Swedish market, where the Respondent is based, trading under trademarks such as TELIA and HALEBOP, with a market share of 37% for mobile phone related services and 39% regarding broadband related services.
The Complainant previously traded under the name “TeliaSonera AB”, but changed its main corporate name to Telia Company AB on April 13, 2016.
The Complainant often figures in the media, and in 2015, the Complainant won the prize as the Swedish mobile operator of the year at the Swedish “Telekomgalan”.
The Complainant is the owner of trademark registrations for TELIA and TELIASONERA, as well as variants of these trademarks.
Only approved and licensed partners are authorized to make use of the TELIA and TELIASONERA trademarks. The Respondent is not such an authorized partner. The Complainant has also registered the trademarks TELIA and TELIASONERA in several generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”), such as <telia.com>, <teliasonera.com>, <teliacompany.com> and <telia.se>.
The trademarks TELIA and TELIASONERA have, due to extensive and long-term use on goods and services offered by the Complainant, acquired the status of well-established trademarks, especially within the telecommunications industry. The trademarks are particularly well-known on the Swedish market where the Respondent is located.
The Complainant states that the disputed domain names are identical to the Complainant’s registered trademarks TELIA and TELIASONERA. Anyone who sees the disputed domain names could easily mistake them for names related to the Complainant. When performing a search of “Telia” on search engines, all top results are related to the Complainant and its services, strongly indicating a likelihood of Internet user confusion.
The Complainant further states that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to <telia.company> or <teliasonera.company>. There is no evidence showing that the Respondent might be commonly known by the disputed domain names or by any names corresponding to them.
It is highly unlikely that the Respondent would have been unaware of the Complainant’s legal rights in the trademarks TELIA and TELIASONERA at the time of registration. It is rather obvious that it is the fame of the trademarks that has motivated the Respondent to register the disputed domain names in the first place. This proves that the Respondent’s interests cannot have been legitimate.
The disputed domain names were registered long after the TELIA and TELIASONERA trademarks were registered in Sweden and in the rest of the European Union. <telia.company> and <teliasonera.company> were previously connected to inactive sites. After the Complainant had sent a cease and desist notice, the Respondent connected the disputed domain names to a website that displays some sort of blog, one of which contains two short posts, posted in October 2015 and in March 2016. The posts merely contain two short texts, with links to the Complainant’s own website and to another third-party website. The website also contains a disclaimer when entering the site.
Using <telia.company> and <teliasonera.company> in this way cannot create a right or legitimate interest under the Policy as most Internet users would be highly likely to be confused into believing that they are visiting the Complainant’s own website simply by viewing the disputed domain names.
The Complainant would like to stress that it has no issues with the Respondent providing information about the Complainant. The issue is the use of its two identical trademarks under a highly relevant gTLD. The Complainant also remains highly skeptical about the Respondent’s true intentions regarding the disputed domain names, given that they have soon been registered for almost one year, and merely two short posts have been posted on one of the websites connected to the disputed domain names. The Complainant would also like to point out that the Respondent offered to transfer <telia.company> and <teliasonera.company> to the Complainant if he was appropriately compensated.
Finally, the Complainant states that the disputed domain names were registered and are being used in bad faith.
The trademarks TELIA and TELIASONERA belonging to the Complainant have the status of well-established trademarks on the Swedish market. The considerable value and goodwill of said trademarks are, most likely, a large contribution to this and also what made the Respondent register <telia.company> and <teliasonera.company>.
The Complainant first became aware of <telia.company>. The Complainant therefore sent a cease and desist letter to the Respondent. In the letter the Complainant advised the Respondent that the unauthorized use of its trademarks was a concern for the Complainant and the Complainant asked for a voluntary transfer of the disputed domain name and offered compensation for the expenses of registration and transfer fees (not exceeding out-of-pocket expenses). The Respondent replied, and stated that although he did not intend to use the disputed domain name for a commercial purpose, he understood the Complainant’s concerns and would agree to transfer the disputed domain name if the Complainant could prove that the domain name registration was in breach of the Swedish Trademark Act. The Respondent stated that he was familiar with the Policy, and that he intended to create an independent website displaying news about the activities of the Complainant, or possibly by setting up a site where people could discuss various topics, such as in a forum. The Complainant at that time decided to hold off any further action to see how the disputed domain name would be used going forward, but the Complainant also stated that it was still concerned by the Respondent’s disputed domain name and would continue to monitor the website closely. The Respondent then indicated that he would agree to transfer the disputed domain name once the domain name registry lock had been released. A few months later, and once the Complainant had revealed that it was to change its name from “TeliaSonera AB” to “Telia Company AB”, the Respondent reached out to the Complainant and offered to transfer the disputed <telia.company>.
Once the Complainant’s representative asked for the disputed domain name to be transferred, the Respondent asked the Complainant to “return the favor” before he would transfer the disputed domain name. The Respondent made a few suggestions, which included, for example, for the Complainant to provide mobile coverage which would cover the Respondent’s family cabin. Another alternative was for the Complainant to give the Respondent a free mobile subscription.
The Complainant explained that it would only reimburse the Respondent’s out-of-pocket expenses, such as the domain name registration fee. The Complainant also pointed out that it had been made aware that the Respondent had also registered the disputed domain name <teliasonera.company>. The Respondent did not agree to transfer the disputed domain names based on these terms, but stated that it would agree to transfer the disputed domain name <teliasonera.company> but keep the disputed domain name <telia.company> for a “non-commercial purpose”.
Since the parties were not able to reach a settlement, the Complainant decided to continue with filing a UDRP complaint.
Considering the lack of any substantial content on the website connected to the disputed domain name <telia.company> and its simple layout, the Respondent’s explanation about “fair use” appears rather fictitious. Considering that there has been very limited activity at the websites connected to the disputed domain names, despite the fact that they have been registered for around 10 months, the Complainant argues that this is a type of passive holding, which can still constitute an act of bad faith.
In this case, claims the Complainant, there are a number of surrounding circumstances indicating bad faith use. The Respondent has registered two domain names that are identical to two of the Complainant’s trademarks, and also under a gTLD that is highly relevant to the Complainant. The Respondent has offered no explanation as to why it needed to register two domain names in order to promote its website. It should also be noted that the Respondent registered the disputed domain name <teliasonera.company> after, or on the same day, that the parties had initiated discussions regarding the disputed domain name <telia.company>.
In addition to the above, the Complainant notes that the Respondent has registered several other domain names incorporating other third party trademarks, such as <astrazeneca.company>, <baesystems.company>, <continental.company>, <heineken.company>, <onex.company> and <peab.company>. The Complainant argues that this shows a bad faith pattern of conduct.
The Complainant requests that the Panel issue a decision that the disputed domain names be transferred to the Complainant.
The Respondent agrees with the Complainant’s statement that <telia.company> and <teliasonera.company> contain trademarks registered by the Complainant. The Respondent states that he is willing to enter into an agreement with the Complainant to use the disputed domain names only with the addition of a subdomain, such as “about” and “com” before “telia.company” and “teliasonera.company”.
According to the Respondent, there was always a pop-up window on the connected website that clearly informed every visitor that the website was neither owned by nor affiliated with the Complainant. The pop-up window had to be closed by a visitor before giving access to the rest of the content on the website.
The Respondent refers to the Swedish Trademarks Act, concluding that it is only applicable to business related activities in Sweden, and therefore no special rights are necessary to use a trademark for any non-business related activities in Sweden.
The Respondent did not contact the Complainant to ask for any monetary or economic compensation, it was the Complainant who made the initial contact, asking for transfer.
If a domain name holder wants to use a domain name for a specific purpose, then it cannot be considered to be without any economic value for the domain holder. In this case, the Respondent states that the disputed domain names have a purpose and an economic value for the Respondent, and he is therefore not willing to transfer <telia.company> or <teliasonera.company> to the Complainant under the conditions proposed by the Complainant. The Respondent is still willing to give the disputed domain names for free to the Complainant if the Complainant can prove a legal right to gain possession of the two disputed domain names.
The Respondent agrees with the Complainant that the Respondent was aware of the rights that the Complainant has in the trademarks.
However, the Respondent does not believe that the disputed domain names could have any significant value for the Complainant – <telia.company> started to have economic value for the Complainant only after April 12, 2016 when the Complainant decided to change its name.
The Respondent, referring to all the already registered domain names in the name of the Complainant, questions if there is a need for the Complainant to also own the disputed domain names. The Respondent further refers to the fact that the Complainant is a Swedish company and questions whether the Complainant has a need for using a gTLD that is a word in English.
The Respondent states that the disputed domain names have not been registered, and are not being used in bad faith.
The Respondent is a hobby website developer, who has been designing and developing a number of websites for various purposes. The Respondent was hired by the Umeå University in 2006 to develop a website, but since then the Respondent has had full-time work and only creates websites as a hobby. The Respondent describes some examples of noncommercial websites created by the Respondent.
The Respondent also sometimes registers domain names that the Respondent believes can be useful in the future. Of the more than 1,000 domain names registered by the Respondent, it is only a few that contain trademarks. Such domain names can be used for neutral information which could be interesting for investors.
When the Respondent was initially contacted by the Complaint’s representative, the Respondent replied that he was willing to transfer the disputed domain name <telia.company> to the Complainant without any costs, if the Complainant could prove legal rights to the disputed domain name. The Respondent also referred to the Swedish Trademarks Act, stating that it is only applicable to business-related activities in Sweden and that the disputed domain name was not used for any business-related activities.
Thereafter, the Respondent decided to develop a website about the Complainant, gathering investor related information about the Complainant. According to the Respondent, the search regarding the Complainant’s business revealed negative press (“scandals”) related to the Complainant, and the Respondent therefore decided to also register <teliasonera.company>, and started to contact sources which could provide the Respondent with more information about the Complainant’s international business.
When the Respondent was contacted by the Complainant’s representative on April 15, 2015 with a request to transfer the two disputed domain names, the Respondent asked if the Complainant would like to do him a favor in return, and gave some examples of such favors to be considered by the Complainant.
In 2014 the Complainant disconnected the Respondent’s grandmother’s summer house from the telephone network because the telephone was not used frequently enough. One suggested favor was therefore to reconnect the Respondent’s grandmother’s summer house to the telephone network. The Respondent also mentioned other examples in case the main suggestion would not be possible. The Complainant was free to accept or reject.
The Respondent does not consent to the transfer requested by the Complainant, but is willing to enter into an agreement with the Complainant which prohibits any sale or transfer of the two disputed domain names to the Complainant or to a competitor of the Complainant.
Respondent’s Supplemental Filings
In the Respondent’s first Supplemental Filing, the Respondent states that during the fall of 2015, he offered to give (for free) the disputed domain name <teliasonera.company>, to a person in Asia, working in the field of journalism. This person was neither a competitor of the Complainant nor an affiliate. The person answered that this would not be possible, because trademark rules would apply in his country (also for journalistic activities).
Besides the two examples (of “services in return”) suggested by the Respondent, and mentioned by the Complainant’s representative, the Respondent also gave a third example in a separate mail, asking if the Complainant would be able to host the Respondent’s hobby websites, on a server, in one of the Complainant’s collocation sites (as a “service in return”).
In a second Supplemental Filing, the Respondent briefly elaborated on one of his suggested “services in return”.
6. Discussion and Findings
6.1. Admissibility of the Respondent’s Supplemental Filings
It is within the Panel’s discretion to determine whether additional submissions by either party are admissible, bearing in mind the need for fairness and procedural efficiency (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.2). Given that the Response was submitted well before the due date and the consideration of the Respondent’s Supplemental Filings causes no undue delay to the proceeding, the Panel decides to consider said Filings, which, in the Panel’s opinion, do however not change the outcome of the Panel’s decision below.
6.2. Substantive Issues
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed 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 disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has obtained multiple trademark registrations for TELIA and TELIASONERA (e.g. Swedish National trademark registration No 241455 TELIA, registered on October 16, 1992, and Swedish National trademark registration No 363058 TELIASONERA, registered on September 26, 2003), several of those covering Sweden, the home country of the Respondent.
The dominant elements of the disputed domain names are “telia” and “teliasonera”, as the added gTLD – being a required element of every domain name – is generally irrelevant when assessing whether or nota domain name is identical or confusingly similar to a mark. In this case the, the gTLD “.company” does nothing to distinguish the disputed domain names from the Complainant’s trademarks – on the contrary, if considered, the gTLD in combination with “telia” and “teliasonera” in fact strongly indicates that the disputed domain names are affiliated with a company (such as the Complainant), and not a private person (such as the Respondent).
The Panel therefore concludes that <telia.company> and <teliasonera.company> are identical to the Complainant’s trademarks TELIA and TELIASONERA.
B. Rights or Legitimate Interests
Once a complainant establishes a prima facie case under the second element of the Policy, the burden of production shifts to the respondent to come forward with credible submissions or evidence demonstrating that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy. See WIPO Overview 2.0, paragraph 2.1.
It is clear from both the Complainant’s and the Respondent’s contentions that the Respondent had no rights provided from the Complainant to register and use either of the disputed domain names.
The question remains if the Respondent has legitimate interests on some other basis.
In this respect, the Respondent claims that both <telia.company> and <teliasonera.company> “have a purpose and an economical value for the Respondent”. The Respondent states that the purpose of registering the disputed domain names was to develop a noncommercial website about the Complainant hosting investor related information about the Complainant.
While use of a domain name for criticism and free speech purposes may under certain circumstances generate rights and legitimate interests, the right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to a complainant’s trademark. That is especially the case if the respondent is using the trademark alone as the domain name (i.e., <trademark.tld>), see WIPO Overview 2.0, and paragraph 2.4. In this case, the Respondent has registered two separate domain names based directly of the Complainant’s two well-known (at least in Sweden) trademarks TELIA and TELIASONERA.
In addition to that, the Panel is in fact not convinced that the Respondent even had an initial plan to use either of the two disputed domain names for a clear noncommercial use. Having directed both disputed domain names to a kind of blog, one of them containing two links to articles regarding the Complainant, only after being contacted by the Complainant, the Panel finds that the Respondent likely never really intended the disputed domain names for criticism or free speech purposes but that said use was a mere pretext for commercial advantage. The communication between the Respondent and the Complainant, that is confirmed with even additional information by the Respondent, shows that the Respondent has asked the Complainant for “services in return” of transferring <telia.company> and <teliasonera.company>. Even if these “services” did not consist of a traditional sum of money to be paid for the transfer, the Panel presumes that the Complainant normally charges a fee for both reconnecting/setting up a telephone network, as well as to host someone’s websites.
Such use does not establish rights or legitimate interests.
Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
The Respondent has confirmed that both <telia.company> and <teliasonera.company> were registered with full knowledge of the Complainant’s prior rights to the trademarks TELIA and TELIASONERA.
Regarding use in bad faith, the disputed domain names have both directed to a sort of blog, the one in connection with <telia.company> having no content and the one linked to <teliasonera.company> containing merely two links to information about the Complainant. The Panel will consider also facts about the Respondent’s further activities, that the Complainant has referred to and the Respondent confirmed, namely:
- The Respondent is the holder of a great number of domain names, some of them directly related to widely known trademarks;
- The Respondent has refused to transfer the disputed domain names to the Complainant in return for the costs for registration, and instead asked for services provided by the Complainant, that are presumed to be of a higher value than the plain domain registration fee.
This indicates to the Panel that the Respondent has registered the disputed domain names for the purpose of transferring the disputed domain names to the Complainant for valuable consideration in excess of his documented out-of-pocket costs directly related to the disputed domain names in accordance to the Policy, paragraph 4(b)(i).
As to the disclaimer at one of the web sites related to the disputed domain names:
The existence of a disclaimer cannot by itself cure bad faith, when bad faith has been established by other factors. This is typically explained by UDRP panels with reference to the probability of Internet user “initial interest confusion” – by the time such user reaches and reads any disclaimer under the domain name, any registrant objective of attracting visitors for financial advantage to its website through use of the trademark in the domain name will generally have been achieved. See AARC Inc. v. Jayashankar Balaraman, WIPO Case No. D2007-0578, (“The Panel notes that the likelihood of such confusion is not removed by the disclaimers that appeared, at least at one point, on the Respondent’s website”).
The Panel cannot draw any other conclusion based on the comments from both the Complainant and the Respondent, than that the Respondent registered and used both disputed domain names in order to take economic advantage of the Complainant.
Thus, the Panel concludes that the disputed domain names were registered and are used in bad faith, and that the Complainant has succeeded in proving the three elements within paragraph 4(a) of the Policy.
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 names <telia.company> and <teliasonera.company> be transferred to the Complainant.
Date: July 15, 2016