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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Europolitan AB. v. Control Alt Delete AB
Case No. D2000-0609
1. The Parties
The Complainant is Europolitan AB, a company incorporated under the laws of Sweden, having its registered office at SE-371 80 Karlskrona, Sweden.
The Complainant is represented by Mr Johan Sjöbeck, L.A. Groth & Co. KB,
Box 6107, 102 32 Stockholm, Sweden.
The Respondent is Control Alt Delete AB, a company incorporated under the laws of Sweden, Rådmansgatan 7, SE-114 25 Stockholm, Sweden.
2. The Domain Name and Registrar
The domain name at issue is <europolitan.com>, which domain name is registered with the Registrar., 505 Huntmar Park Drive, Herndon, Virginia 20170, United States. ("the Registrar").
3. Procedural History
A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on June 15, 2000 and in hardcopy on June 20, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated June 23, 2000.
On June 23, 2000 a Request for Registrar Verification was transmitted to the Registrar.
On July 3, 2000 the Registrar confirmed by e-mail to the WIPO Center that it had received the the Complaint from the Complainant, the the Registrar is the registrar of the domain name <europolitan.com>, that the Respondent is the current registrant of the said domain name, thet the Network Solutions 4.0 Service Agreement is in effect, and that the said domain name is in "Hold" status.
A Formal Requirements Compliance Checklist was completed by the assigned WIPO Center Case Administrator on July 5, 2000. The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Uniform Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "WIPO Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.
No formal deficiencies having been recorded, on July 6, 2000 a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, the Registrar and ICANN), setting a deadline of July 25, 2000 by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by post/courier, facsimile and e-mail to the addresses indicated in the Complaint including the domain name registrant, administrative contact, technical contact, zone contact and billing contact.
On July 26, 2000 having received no Response from the designated Respondent the WIPO Center transmitted to the parties a Notification of Respondent Default. On August 3, 2000 the WIPO Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date. This Notification informed the parties that the Administrative Panel would be comprised of a single Panelist, Mr Jonas Gulliksson.
The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and WIPO Supplemental Rules.
The Administrative Panel shall issue its Decision based on the Complaint, the Policy, the Uniform Rules, the WIPO Supplemental Rules, and without the benefit of any Response from the Respondent.
4. Factual Background
The Complainant and its Registered Trademarks and Domain Names
The Complainant, Europolitan AB, is a company incorporated under the laws of Sweden.
The Complainant has based its complaint on registrations in Sweden and the United States of the wordmark <EUROPOLITAN>:
(i) The Swedish registration No. 241 503 for <EUROPOLITAN> was granted on October 16, 1992 based on an application filed on March 20, 1992. The trademark is registered for a term of 10 years from October 16, 1992. Copy of the registration certificate is enclosed, Annex D. The registration covers telephones and other telecommunication equipment and thereby related services.
(ii) The US registration No. 1,886,958 for <EUROPOLITAN> was granted on November 21, 1996 based on an application filed on April 4, 1995. The trademark is registered for a term of 10 years from April 4, 1995. Copy of the registration certificate is enclosed, Annex E. The registration covers telephones, telephone equipment, subscriber identity modular cards (SIM-cards), telephone communication services and computer terminal communication services.
5. Parties’ Contentions
The Complainant has requested the Administrative Panel appointed in this administrative proceeding to issue a decision that the domain name <europolitan.com> be transferred to the Complainant.
The domain name <europolitan.com>, registered by the Respondent, is identical with the trademark registration of the word <EUROPOLITAN> held by the Complainant.
The Respondent has no rights or legitimate interests in respect of the domain name <europolitan.com>. The Respondent is not an owner of any trademark, service mark, company name, product or service with a name similar to that of the domain name in question. Nor has the Respondent ever indicated that it intends to make use of the name in any way. Therefore, the Respondent is not only lacking rights or legitimate interests in the domain name, but has also failed to make good faith use of the domain name for its business for a substantial period of time.
The complainant succumbs to the opinion that the domain name has been registered and used in bad faith. The domain name was registered in order to prevent the complainant, a large company incorporated in Sweden, from reflecting its trademark in a corresponding domain name. As evidence shows, the Respondent has engaged in a pattern of registering numerous famous trademarks, see Annex E. This pattern suggests that the domain name was registered primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of the trademark (or to a competitor of the complainant) in order to attract financial gain or alternatively disrupting the business of the complainant. Registration of the domain name was thus made in bad faith.
In October 1996, the complainant sent a warning letter to the Respondent asking for withdrawal of the domain name. As the Respondent failed to do so, Network Solutions placed the domain name <europolitan.com> on hold in early 1997. In June 1997, the complainant requested to have the domain name transferred. In August 1997, the Respondent replied to the complainant by letter saying any contacts in person, by phone, by e-mail or mail would be charged $185 USD + VAT per started hour. This indicates that the Respondent used the domain name registration in order to attract financial gain. When the rightful owner of the trademark would try to communicate with the Respondent concerning the domain name, it would be charged an unreasonable sum of money.
The Respondent is a Swedish company incorporated in Sweden, which has registered as domain names a large number of names and trademarks owned by large well-known companies. The Respondent is commonly known in Swedish media as a notorious "cybersquatter". Various articles have been published in Swedish newspapers, where the complainant has been named a victim of the respondent’s foul play. According to an article in Resumй No 35, 1996, page 14, the Respondent admits in an interview, that the purpose of registering famous trademarks in bulk is to rent the domain names back to the owners.
The complainant is of the opinion that the Respondent was well aware of the value of the complainant’s trademark at the time of the domain name registration and that the primary purpose was to sell, rent or otherwise transfer the domain name to the complainant or to a competitor of the complainant for valuable consideration in excess of out-of-pocket costs directly related to the domain name. Even if the Respondent has not directly offered to sell, rent or transfer the domain name to the complainant, all the circumstances suggest that the Respondent is acting in bad faith.
As case law suggests, using a domain name in bad faith is not limited solely to positive actions, as inaction is regarded as being within the concept of use. This according to the Telstra case D00-0003 at 7.8-7.9: ("The significance of the distinction is that the concept of a domain name "being used in bad faith" is not limited to positive action; inaction is within the concept."). Another case supporting this is the Stralfors case D2000-0112 at 5: ("Inaction is clearly within the concept of "being used in bad faith" and it is possible for inactivity by the Respondent to amount to the domain name being used in bad faith.").
Respondent has not contested the allegations of the Complaint.
6. Discussion and Findings
According to Paragraph 15 (a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Both parties are domiciled in Sweden. This means that in addition to the Policy, the Rules and the Supplemental Rules, applicable Swedish principles of law would apply as well.
Paragraph 4 (a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
2) that the Respondent has no legitimate interests in respects of the domain name; and
3) the domain name has been registered and is being used in bad faith.
The Respondent registered the domain name <europolitan.com> on June 30, 1996. At this time the Complainant had pending trademark applications for <EUROPOLITAN>, which were filed on March 20, 1992 in Sweden and on April 4, 1995 in the United States. Registrations were granted in both countries in October 1996. The Complainant has thus a sole right to the trademark <EUROPOLITAN> from the said filing dates. The Complainant’s exclusive right was therefore acquired prior to the Respondent’s domain name registration.
The domain name <europolitan.com> is identical with the trademark <EUROPOLITAN> except for the addition of ".com".
The Respondent has not proven that it has any prior rights or legitimate interests in the domain name. The word EUROPOLITAN is considered distinctive and registrable as a trademark and the word is not a generic or descriptive word that can be used by anyone. The prerequisites in the Policy, Paragraph 4 (a) (i) and (ii) are therefore fulfilled.
Paragraph 4 (a) (iii) of the Policy further provides registration and use in bad faith. Paragraph 4 (b) regulates which kind of evidence that is required in order to prove that a domain name has been registered and used in bad faith. The interpretation of Paragraph 4 (a) (iii) has been the subject of previous considerations in Case Law (i.e. the Telstra Case D2000-003 at 7.3-7.6 and the Stralfors Case D2000-0112 at 6). Based on the established practice, the Complainant has to prove that the registration was undertaken in bad faith and that the circumstances of the case are such that Respondent is continuing to act in bad faith. Such evidence may be that it is shown that the Respondent has been previously engaged in registration of trademarks belonging to others as domain names, and that it is clear that the purpose of the registration has been to sell or transfer the domain name to the rightful proprietor.
It is obvious from the facts in the case, i.e. the prior ownership by Complainant of identical trademark registrations, the fact that the word EUROPOLITAN has a high degree of individuality and distinctiveness, the threat by the Respondent to charge USD 185 per stated hour in order to respond, the previous engagement in registration of famous trademarks or company names, as can be seen from Annex E, and the non-contested statement that the Respondent has admitted in an interview that the purpose of it’s action is to rent back the domain names to the rightful proprietors.
Consequently, all the prerequisites for cancellation or transfer of the domain name according to Paragraph 4 (i) of the Rules are fulfilled.
In view of the above circumstances and facts the Panel decides, that the domain name <europolitan.com> registered by the Respondent is identical to the trademark and service marks in which the Complainant has rights, and that the Respondent has no rights or legitimate interests in respect of the domain name <europolitan.com>, and that the Respondent’s domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4 (i) of the Policy, the Panel requires that the registration of the domain name <europolitan.com> be transferred to the Complainant.
Dated: August 16, 2000