WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Humana AB v. Habip Seffo
Case No. DNU2013-0004
1. The Parties
The Complainant is Humana AB of Stockholm, Sweden, internally represented.
The Respondent is Habip Seffo of Västra Frölunda, Sweden, represented by Sanaz Tarlani, Sweden.
2. The Domain Name and Registrar
The disputed domain name <assistansia.nu> was initially registered with .NU Domain Ltd., and currently with .SE Registry.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 22, 2013. On August 23, 2013, the Center transmitted by email to .NU Domain Ltd. a request for registrar verification in connection with the disputed domain name. On August 23, 2013, .NU Domain Ltd. 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” 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 August 30, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 19, 2013. On September 3, 2013, the Center received a request for extension of the Response due date from the Respondent. On September 6, 2013, the Center declined the request for extension. The Response was filed with the Center on September 18, 2013.
On September 24, 2013, the Complainant submitted a supplemental filing.
The Center appointed Gunnar Karnell as the sole panelist in this matter on September 26, 2013. 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 disputed domain name <assistansia.nu> was created on September 10, 2012. The Complainant’s trade mark ASSISTANSIA was registered as a Community Trade Mark on January 3, 2012, No. 010258028.
The Complainant is the owner and active user of a number of domain names comprising “assistansia” (.com, .org, .se etc.), all directed to the Complainant’s website “www.humana.se”. It is also the sole owner of a Swedish subsidiary company, registered on January 30, 2001, under the name of ASSISTANSIA AB. Since October 17, 2011, this company is named HUMANA ASSISTANS AB. From that date ASSISTANSIA AB has been kept by the Complainant as its registered second name.
The Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent has submitted its Response “for decision in accordance with the Policy and these Rules”.
5. Parties’ Contentions
In February 2013 the Complainant learned that the disputed domain name directed Internet users to a website of a competitor to the Complainant. Having contacted the competitor the Complainant was informed that the disputed domain name was owned by the Respondent with no connection to the competitor. The Complainant now requested that the Respondent should stop its “illegal automatic direction of the domain name <assistansia.nu>” to the competitor’s website. In a letter dated May 27, 2013, the Respondent maintained that it was in its rights using the disputed domain name and offered it for sale to the Complainant for the amount of SEK 130.000. If unaccepted, the Respondent would continue its business and “sell links to other assistance companies”. The Respondent later confirmed his intention to continue its use of the disputed domain name and on June 25, 2013, the Complainant learned that the Respondent had activated it by directing it, and it still directs, to another website, owned by a Swedish trading company, providing services to estates, including evaluation of and trading with estates, cleaning, emptying etc.
The Complainant bases its Complaint on its Community Trade Mark ASSISTANSIA. Estates are included in the target group in the market place for the rendering of services covered by its registration. However, presently this creates only a potential conflict. Since 2005 the Complainant has owned five domain names comprising “assistansia”; another two since August 22, 2013, showing the Complainant’s interest in protecting its interest related to its market position, which should have been known to the Respondent, who would also easily have been able to gain knowledge of the Complainant’s subsidiary company and its name.
The disputed domain name is identical with the Complainant’s trade mark ASSISTANSIA.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. Neither as an individual person nor as a business has the Respondent been known by the disputed domain name or as owner of any trade mark similar to the disputed domain name. The Respondent is currently using it in such manner that consumers are diverted and the Complainant’s trade mark is tarnished. At least at the time of registration in September 2012 the Respondent must have noticed that the Complainant is the owner of several domain names comprising “assistansia”, all more or less automatically leading to the Complainant’s website “www.humana.se”, and that there was one such domain name (the disputed domain name in the “.nu” name space) that was not registered. The Respondent acquired it and followed up by offering it to the Complainant, initially for SEK 250.000 and later for SEK 130.000 as already mentioned. The offers were declined, whereupon the Respondent declared that he had decided to use the disputed domain name “for the present”. The Complainant offered the “symbolic sum” of SEK 2.000.
The disputed domain name has been registered and it is used by the Respondent in bad faith. It was registered solely and primarily for the purpose of selling it at a large profit and for transferring its registration to the Complainant for valuable consideration in excess of the Respondent’s out of pocket costs directly related to the disputed domain name. The Respondent has by intent created a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
When acquiring the disputed domain name, the Respondent did not know that the Complainant owned its registered Community Trade Mark. There is presently no activity with the disputed domain name that conflicts with areas covered by the trade mark. Already before addressing the Complainant regarding the direction of the disputed domain name to the Complainant’s competitor in May 2013 the Respondent, contacted by the Complainant’s competitor, had stopped direction of the disputed domain name to the competitor. The Respondent had then already owned the disputed domain name during several months without use and was not paid for its use by the competitor. The Respondent acquired the disputed domain name in order to create an information website directed to “assistants” for people with disabilities. The Respondent claims it chose the disputed domain name because “assistansia” is almost the same as “assistans”, the Swedish word for “assistance”. The Respondent had no reason to know about the Complainant’s subsidiary company and its domain name registrations. The offer to sell the disputed domain name to the Complainant must be considered to conform with good business practice. However, the purpose behind the acquisition of the disputed domain name was not to sell it but to start an information website, such as just mentioned. The Respondent states that a big company like the Complainant should have registered the disputed domain name a long time ago if the domain name was so important to the Complainant and its interests.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is identical with the Community Trade Mark ASSISTANSIA in which the Complainant has rights and which was registered more than half a year before the registration of the disputed domain name. The Panel finds that the Complainant has made out the first limb of the Policy, finding that the disputed domain name is identical to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Contrary to what has been argued by the Respondent, the Complainant’s interest with regard to the disputed domain name is not an issue here. What has been adduced by the Respondent about preparations for a legitimate use of the disputed domain name in connection with prospective offerings of goods or services does not gain credence with the Panel. The Respondent has not shown to have been commonly known by the disputed domain name or to have acquired any trade mark or service mark rights that might support a finding of relevant rights or legitimate interests in the disputed domain name. Presently the Respondent lets the disputed domain name direct to a website owned by a company that provides services to estates, considered by the Complainant to be a possible competitor in the Complainant’s market. This fails to tally with the Respondent’s expressed reason for acquiring the disputed domain name, i.e. to create an information website for “assistants” for “people with disabilities”. Nothing has been mentioned to have come out of this, not even in terms of planning, and the Respondent has not provided any evidence of its contemplated use of the disputed domain name. The Respondent has not given to understand that it is likely to engage in a legitimate or fair use of the disputed domain name.
The Panel finds that the Complainant has made out the second limb of the Policy and that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Nothing in the case file gives the Panel reason to believe that the Respondent made any effort to find out if his registration of the disputed domain name would infringe upon or otherwise violate the rights of any third party. The Respondent was obliged under paragraph 2 of the Policy and agreement with his registrar to warrant that to his knowledge the registration of the disputed domain name would not have any such consequences. The Respondent has not mentioned any effort to gain knowledge about possible conflicts with rights already established by others before the registration of the dispute domain name. The Panel finds the Respondent’s denial of knowledge of the Complainant’s business and trade mark highly improbable. It shall be understood that even a most perfunctory, easily undertaken and habitually performed search or an open minded look around in the “assistance” or even “assistants” market would have led the Respondent to learn about the Complainant’s rights and possible interests, noting also that both the Respondent and the Complainant are from Sweden. Looking at the matter in this light, and since the Panel finds no support in the case file that would warrant a conclusion about lack of bad faith at the registration, the Panel believes that the disputed domain name was registered in bad faith.
The Panel is not convinced that the Respondent contemplated to sell the disputed domain name, in the manner it was later offered to the Complainant, already at registration, but the Panel finds that the disputed domain name was registered in bad faith.
A couple of months after acquiring the disputed domain name, the Respondent offered it to the Complainant for what the Panel considers to be clearly exorbitant prices, obviously with intent for commercial gain. The Respondent’s use, mentioned initially as intended for a website with the disputed domain name, would presumably mislead consumers or tarnish the Complainant’s trade mark, as will its present use. The Respondent’s professed opinion that its offers to sell the disputed domain name to the Complainant conforms with good business practices is inconsistent with the fact that circumstances clearly indicate that the Respondent’s use of the disputed domain name, since the first contact with the Complainant’s interest in the disputed domain name, has served the purpose of selling it to the Complainant only for sums widely in excess of any out-of-pocket costs related to the domain name.
The Panel concludes that the Complainant has made out the third limb of the Policy and that the Respondent has registered and used the disputed domain name in bad faith.
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 <assistansia.nu> be transferred to the Complainant.
Date: October 9, 2013