WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Atea Danmark A/S v. Christer Joensson

Case No. D2012-1272

1. The Parties

The Complainant is Atea Danmark A/S of Ballerup, Denmark, represented by Nielsen Nørager LLP, Denmark.

The Respondent is Christer Joensson of Stockholm, Sweden.

2. The Domain Names and Registrars

The disputed domain names <atea-tele.com> and <ateatele.com> are registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2012. On June 22, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 22, 2012, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 2, 2012.

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 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 23, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 24, 2012.

The Center appointed George R. F. Souter as the sole panelist in this matter on July 26, 2012. 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 distributes electronic hardware and software, primarily for the Scandinavian market. It is also involved in the telecommunications industry.

The Complainant has supplied details of two Danish trademark registrations in its name, for the trademark ATEA in classes 9, 35 and 42, both of which were registered on December 13, 2001.

The disputed domain names were both registered on October 21, 2011.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain names are confusingly similar to the trademark ATEA, in which it has rights. The Complainant also alleges that it has acquired trademark rights through use of the signs Atea Tele and Atea Telecom, under the Danish Trademark Act, Article 3, paragraph 1, sub-paragraph 2.

The Complainant alleges that that the Respondent has no rights or legitimate interests in respect of the disputed domain names. In particular, the Complainant points out that the disputed domain names are not being used actively by the Respondent, the web pages operated under the disputed domain names having no content, and there is no text or sign to indicate that ”the domains are under development or otherwise being used”. Further, the Complainant points out that there is no indication that the Respondent holds any legitimate interest to use the disputed domain names, or in any way has a legitimate interest in using the disputed domain names in a commercial or noncommercial way. The Complainant also alleges that the Respondent is not in the same business or industry as the Complainant, and the Respondent has not shown any right or legitimate interest in using the disputed domain names.

The Complainant contends that the disputed domain names were registered and are being used in bad faith. The Complainant published plans to start a telecommunications company on October 21, 2011, and details of these plans were published online in various news media, details of which have been supplied to the Panel. The disputed domain names were registered by the Respondent on the same day, October 21, 2011. The Complainant adds that, also on that day, October 21, 2011, the Respondent registered the domain names <ateatele.dk> and <atea-tele.dk>, and has drawn the Panel’s attention to a decision of the Danish Domain Name Dispute Resolution Centre, dated June 4, 2012, ordering the transfer of these domain name registrations to the Complainant on the grounds that the holder of these domain names, identical to the Respondent, had no rights or legitimate interests in these domain names, and that the registrations had been made in bad faith. The Complainant contends that the Respondent registered the disputed domain names in this case with the sole intention of selling them to the Complainant, at a price exceeding the cost of registration (so-called cybersquatting). Consequently the Respondent is acting in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain names of the Respondent be transferred to the Complainant or be cancelled:

(i) The disputed domain names are 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 names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

It is well-established in decisions under the UDRP that generic top-level domain (gTLD) indicators (i.e. “.com”, “.info”, “.net”, “.org”) may be considered irrelevant in assessing confusing similarity between a mark and a domain name. The Panel agrees with this view and considers these indicators to be irrelevant in the present case.

The Complainant did not provide any evidence to support its assertion in connection with the acquisition of trademark rights to the signs ATEA TELE and ATEA TELECOM, and the Panel finds that it would be unsafe to take this assertion into account in assessing confusing similarity. The Panel, therefore, feels that he has to only consider whether the terms “atea-tele” and “ateatele” in the disputed domain names are confusingly similar to the Complainant’s trademark ATEA.

It is well-established in previous decisions under the UDRP that the mere addition of generic or descriptive elements to a well-known or distinctive mark is not typically sufficient to evade a finding of confusing similarity. The Panel agrees with prior UDRP panels on this point.

The Panel finds that ATEA is a distinctive mark belonging to the Complainant. The Panel considers the

elements “-tele” and “tele” added to the trademark ATEA to be merely generic or descriptive in the circumstances of the present case and, accordingly, finds that the disputed domain names are confusingly similar to the Complainant’s ATEA mark, and that the Complainant has satisfied the test of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Where the respondent has failed to demonstrate rights or legitimate interests in a domain name, it is the predominant view of panels in previous UDRP decisions, with which the present Panel agrees, that a prima facie case advanced by the complainant will be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy.

In this case, 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 names, and the Panel can draw the appropriate conclusion under the Policy. The Panel accepts the Complainant’s contentions (above) under paragraph 4(a)(ii) of the Policy as establishing a prima facie case, and, accordingly, finds that the Respondent has no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

The Panel is of the view that, in the case of a distinctive mark, such as ATEA, the finding that the Respondent has no rights or legitimate interests in the disputed domain names, may lead, in appropriate circumstances, to a finding that the disputed domain names were registered in bad faith. The Panel finds such circumstances in the present case, namely the fact that the registrations of the disputed domain names took place on the same day that the Complainant’s intentions to set up a telecommunications company were publicized, and, accordingly, finds that the disputed domain names were registered in bad faith.

Paragraph 4(a)(iii) of the Policy, however, requires the Panel to be satisfied that the disputed domain names are also being used in bad faith. The Complainant has stated that there has been no use as such of the disputed domain names, in the sense that the websites operated under the disputed domain names have been left blank (or as generic parking pages). It is the Panel’s opinion that the registration of the disputed domain name names was opportunistic, with the intention of enabling the Respondent to benefit in some way from the act of registering the disputed domain names. The Complainant, therefore, in the Panel’s view, lies under the threat that the Respondent will, at some stage, take positive action to benefit from his opportunism. The Panel considers the Complainant’s position, if no remedy is available to it in these proceedings, to be intolerable. The Complainant, however, is not the first complainant to find itself in this position. Inaction in connection with a domain name is often called “passive holding”. The question of whether “passive holding” can be considered to be use of a domain name was considered by the panel in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In that case, the panel considered “what circumstances of inaction (passive holding) other than those identified in paragraphs 4(b)(i), (ii) and (iii) can constitute a domain name being used in bad faith?”, and concluded: “[t]his question cannot be answered in the abstract; the question can only be answered in respect of the particular facts of a specific case. That is to say, in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behaviour. A remedy can be obtained under the Uniform Policy only if those circumstances show that the Respondent’s passive holding amounts to acting in bad faith.” The panel listed circumstances which, in his view, could be considered to be use in bad faith. One of those circumstances was where it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law. The Panel in this case, considers that he cannot conceive of any plausible actual or contemplated active use of the disputed domain names by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law, and regards that as sufficient justification to find the second arm of the dual test of paragraph 4(a)(iii) of the Policy to have been satisfied. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <atea-tele.com> and <ateatele.com> be transferred to the Complainant.

George R. F. Souter
Sole Panelist
Dated: August 20, 2012