WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Svenska Resegruppen AB v. Patrik Larsson, Westcoast Digital AB
Case No. D2018-2892
1. The Parties
The Complainant is Svenska Resegruppen AB of Uppsala, Sweden, represented by Advokatfirman MarLaw AB, Sweden.
The Respondent is Patrik Larsson, Westcoast Digital AB of Trollhättan, Sweden, represented by Ports Group AB, Sweden.
2. The Domain Name and Registrar
The disputed domain name <flygresor.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 19, 2018. On December 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 19, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and contact information for the disputed domain name.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2019. Upon request by the Respondent, pursuant to paragraph 5(b) of the Rules, the Response due date was extended until January 14, 2019. The Response was filed with the Center on January 9, 2019.
The Center appointed Petter Rindforth as the sole panelist in this matter on January 17, 2019. 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 Complainant submitted a supplemental filing relating to the Respondent’s request for Reverse Domain Name Hijacking on January 29, 2019.
4. Factual Background
The Complainant is a Swedish e-commerce online travel service company, and the owner of the following trademarks:
Swedish national trademark registration No. 545138 FLYGRESOR.SE (fig), filed on December 29, 2017, and registered on April 11, 2018 for goods and services in classes 9, 35, 36, 38, 39, 41 and 43, and
Swedish national trademark registration No. 545139 FLYGRESOR.SE (fig), filed on December 29, 2017, and registered on April 11, 2018 for goods and services in classes 9, 35, 36, 38, 39, 41 and 43.
The Respondent is a Swedish Internet service company, offering (among other services) online price comparison for flight travels.
The disputed domain name <flygresor.com> was registered in the name of the Respondent on November 28, 2012 and resolves to a flight comparison website.
5. Parties’ Contentions
The Complainant is a subsidiary of Etraveli AB, a leading e-commerce online travel company in the Nordic region, operating in 50 countries on 5 continents, providing 12 million customers airline tickets and related services.
The Complainant is the controlling company of Flightmate AB, which operates websites under the domain names <flygresor.se˃, <flyreiser.no˃, <flyrejser.dk˃, <uberflieger.de˃, <vousvolez.fr˃, and <flightmate.ie˃. The website at <flygresor.se˃ is Sweden’s largest price comparison site for online travel.
The Complainant is the owner of the Swedish national registered figurative trademarks No. 545138 and No. 545139 FLYGRESOR.SE. The Complainant also claims exclusive rights to the trademark FLYGRESOR.SE through its consistent and continuous use since 2007. In addition, the Complainant has launched numerous commercials on Swedish television as well as on YouTube, one published in 2015 with 2.4 million views as per today, and one published in 2017 with now 5,5 million views as per today. The Complainant concludes that the trademark FLYGRESOR.SE has been advertised in a massive scale to Swedish speaking consumers, with a marketing cost of total SEK 578,616,556 during the time period 2007 – 2018.
In 2015, “flygresor.se” was named Sweden’s most prominent price comparison site for online travel by the Swedish newspaper Expressen, as well as names as one of the best comparison sites by IDG (International Data Group). The website was also awarded in 2018 by TravelNews for providing the most prominent Meta Search service.
The Complainant claims national Swedish trademark rights by registration as well as by use prior to the registration (“exclusive rights by establishment on the market”). The Complainant concludes that the disputed domain name incorporates the Complainant’s trademark in its entirety, thereby being identical to the trademark FLYGRESOR.SE.
The Complainant states that the Respondent has no rights or legitimate interests in respect of <flygresor.com>. At the date of registration of <flygresor.com> (identified by the Complainant as September 28, 2013) the Complainant’s trademark was already well known on the Swedish market.
The Respondent is using <flygresor.com> to point to a website with logos almost identical to the Complainant’s registered trademark, and is also referring to an affiliated partner, using a logo that is confusingly similar to the Complainant’s parent company.
Finally, the Complainant concludes that the disputed domain name <flygresor.com> was registered and is being used in bad faith, again referring to that the Complainant – at the time of the registration of <flygresor.com> in the name of the Respondent – had trademark rights by extensive use. By also designing and using logos that are confusingly similar to the Complainant’s trademark, it is clear that the Respondent has acted in bad faith. It is clear that the purpose of holding the disputed domain name is to profit from it, in direct competition with the Complainant.
The Complainant requests that the Panel issue a decision that the disputed domain name be transferred to the Complainant.
The Respondent points to the fact that the Complainant refers to registered trademarks consisting of a figure including an airplane in combination with the generic word “flygresor” (in English: “flights”), and concludes that the Complainant cannot claim any rights to the said descriptive word.
The Respondent states that “flygresor” is an obvious term for services related to flight travels and flights.
The Respondent questions the Complainant’s evidence of use of the domain name <flygresor.se˃, and argues that the use materials provided by the Complainant are basically from 2015 or later, while the Respondent started to use the disputed domain name in 2012.
The disputed domain name <flygresor.com˃, incorporates the generic word “flygresor” and is thereby used as a price comparison site for flight travels. The Complainant has no monopoly or exclusive rights to the wording “flygresor”.
In addition to the disputed domain name, the Respondent is also the holder of several other generic domain names related to travel, trips, flights and other, such as: <travelstatistics.net˃, <allacharterresor.com˃, and <sistaminutenresor.com˃. This means that the Respondent is the owner of several travel sites and other sites, all provided under generic wordings and used in connection/relating to the domain names with generic or descriptive meaning.
The site connected to <flygresor.com˃ has approximately 3000 new visitors each week.
The Complainant further states that the Respondent is using a similar figurative mark to their trademarks. This is incorrect since the Respondent has been using its orange logotype since 2017, and not the one the Complainant is referring to. The Respondent notes however that if any similarities between the logos occurred, it was during a time when the Complainant did not have any exclusive right to its figurative trademark.
In addition, the Respondent wishes to point out that the Complainant has advertised frequently on the disputed domain name <flygresor.com˃ with banner ads, meaning that the Complainant has been using the Respondent’s domain name to attract visitors to their own website <flygresor.se˃.
By the time the Respondent started to use the domain name, the Complainant had no rights to the generic wording “flygresor” nor to “flygresor.se”. Today the Complainant has limited rights to their trademarks through the figurative parts of their trademarks, but not to the generic word “flygresor” nor to “flygresor.se”. Neither has the Complainant provided any evidence that shows that they have rights to the generic word “flygresor” nor to “flygresor.se” through establishment.
The disputed domain name was acquired from Flygspecialisten in November 2012. Already in 2001, the previous owner had been using the generic domain name for services related to flight travels. By the time of acquisition, neither did the Complainant have any rights to the wording “flygresor” nor to “flygresor.se”. This proves that the Respondent did not register the domain name in bad faith since the registration/acquisition of the domain name could not have been in bad faith because the Respondent could not have contemplated the Complainant’s then non-existent rights.
The Respondent is using the disputed domain name for a fair and legitimate business under the generic word “flygresor” and not with the intention to disrupt the Complainant’s business.
The Respondent does not deny its knowledge about the Complainant’s site connected to <flygresor.se˃ and from now on, also their registered trademarks. By the time of the acquisition, the Complainant did not however have any rights to the generic word “flygresor” which means that the Respondent did not register the domain name in bad faith.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, a 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 is the owner of the Swedish national trademark registrations No. 545138 and No. 545139 FLYGRESOR.SE (fig), both filed on December 29, 2017 and registered on April 11, 2018. The Complainant has further claimed exclusive rights to the trademark FLYGRESOR.SE through use since 2007.
The relevant part of the disputed domain name is “flygresor”, as the added generic Top-Level Domain (“gTLD”) – being a required element of every domain name – is generally irrelevant when assessing whether or nota mark is identical or confusingly similar.
There is indeed a similarity between the trademark FLYGRESOR.SE and “flygresor”, as the disputed domain name consists of the main part of the verbal element of the Complainant’s trademarks.
The Panel therefore concludes that <flygresor.com> is confusingly similar to the Complainant’s trademark FLYGRESOR.SE.
The arguments of the Respondent that the Complainant’s trademark protection is weak, built on a trademark that is a combination of figurative parts and descriptive words will be further discussed below.
B. Rights or Legitimate Interests
Once a complainant establishes a prima facie case of the second element of the Policy, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
The Respondent has no rights to use the Complainant’s trademarks and is not an authorized agent or licensee of the Complainant’s products, services or trademarks. The question remains therefore whether the Respondent has legitimate interests.
As noted above, “Point 4, Factual Background”, the disputed domain name <flygresor.com> was registered in the name of the Respondent on November 28, 2012. The Respondent has provided evidence of active use of <flygresor.com> since March 2, 2013. The Respondent also has referred to a screenshot of November 29, 2012 only stating “Welcome to Flygresor.com! Here will soon open a service for you who are looking for good price on air travel” [“Välkommen till Flygresor.com! Här öppnar snart en tjänst för dig som söker bra pris på flygresor”].
The Respondent states that the word “flygresor” is descriptive, and the Complainant claims that FLYGRESOR.SE is a well-known and distinctive trademark in the name of the Complainant. The Panel notes that the Complainant filed Swedish national trademark applications for the figurative trademark FLYGRESOR.SE on December 29, 2017, and has provided evidence of use with its Complaint since at least 2015 when the Complainant’s trademark FLYGRESOR.SE was noted on YouTube, as well as being named Sweden’s most prominent price comparison site for online travel by the Swedish newspaper Expressen. The Complainant also refers to marketing costs for FLYGRESOR.SE during the year 2007 – 2018.
The Panel doubts that the Complainant’s trademark FLYGRESOR.SE may be considered distinctive or well-known at the time the Respondent registered the disputed domain name. This is relevant as it affects the Panel’s assessment as to whether the Respondent registered the disputed domain name in order to take advantage of the Complainant’s trademark, or for its dictionary meaning. The former does not convey any legitimate interests in a domain name. However, UDRP panels have found that a respondent may have legitimate interests in a domain name when it is genuinely used in connection with the relied-upon dictionary meaning. See WIPO Overview 3.0, section 2.1.
The panel is mindful of the Complainant’s argument that the Respondent had been using a confusingly similar logo to the Complainant on the Respondent’s website in the past, which raises some doubt in the Panel’s mind as to the intention of the Respondent in registering and using the disputed domain name. However, the Panel is not in a position to assess the Complainant’s potential claims of trademark infringement in this UDRP proceeding.
To this Panel the Complainant’s fame and the level of similarity between the Parties’ logo is not such that, on balance, the Panel considers that the Respondent was targeting the Complainant. It seems more likely than not on the evidence in front of the Panel that the Respondent may be seeking to use the disputed domain name in accordance with its plain dictionary meaning. Accordingly, the Panel finds that for purposes of the UDRP the Complainant has not demonstrated that the Respondent lacks rights or legitimate interests in the disputed domain name and thus the Complaint must fail.
However, the Panel notes that this case may be better suited to the courts, who would be able to offer a robust assessment of trademark infringement under relevant law.
C. Registered and Used in Bad Faith
In light of the findings above, the Panel does not come to a decision as to the third element.
The Panel notes however that the discussion relating to the Respondent’s intention in registering the dispute domain name and the similarity of logos gave it pause in considering whether the Respondent lacked legitimate interests and this also raises similar considerations as to possible bad faith.
D. Reverse Domain Name Hijacking
The Respondent suggests that the Complainant is guilty of Reverse Domain Name Hijacking, claiming that the Complainant, via a Cease and Desist letter of September 2018, tried to have the Respondent transfer the disputed domain name through threat, six years after the Respondent’s genuine, constant and legitimate use of <flygresor.com>.
Reverse Domain Name Hijacking is defined at paragraph paragraph 15(e) of the Rules as filing the complaint “in bad faith”, constituting an abuse of the administrative proceeding.
As noted above, the Complainant states the trademark FLYGRESOR.SE has been used since 2007, although registered as the combined word / figurative trademark since April 2018. The disputed domain name was registered in the name of the respondent five years after the Complainant’s initial use, namely in November 2012.
Although the Panel is not convinced for purposes of this proceeding that the Complainant’s trademark become distinctive until several years after the initial use, Parties have reasonable positions in the opinion of the Panel such that bad faith cannot be readily attributed to the Complainant.
For the foregoing reasons, the Complaint is denied.
Date: January 31, 2019