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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Den Norske Lægeforeningen v. Eivind Nag

Case No. D2000-1267

 

1. The Parties

The Complainant is Den Norske Lægeforeningen, a society in Norway, P.B. 1152 Sentrum, 0107 Oslo, Norway. The Respondent is Eivind Nag, an individual resident at the address of Kisteberglia 5 a, 4032 Stavanger, Norway.

 

2. The Domain Name and Registrar

The domain name at issue is "legeforeningen.com", which is registered with Register.com ("the Registrar"), 575 8th Avenue – 11th floor, New York NY 10018, United States of America.

 

3. Procedural History

A Complaint was submitted electronically to the World Intellectual Property Organization, Arbitration and Mediation Center, on September 26, 2000, and in hardcopy on September 27, 2000.

On October 2, 2000, a Request for Registrar Verification was transmitted to the Registrar requesting it to:

(1) confirm that a copy of the Complaint was sent to the Registrar by the Complainant, as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy, Paragraph 4(b);

(2) confirm that the domain name at issue is registered with the Registrar;

(3) confirm that the Respondent is the current registrant of the domain name(s);

(4) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the Registrar’s WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact;

(5) confirm that the Uniform Domain Name Dispute Resolution Policy applies to the domain name(s);

(6) indicate the current status of the domain name(s).

On October 3, 2000, the Registrar confirmed that a copy of the Complaint was sent to the Registrar by the Complainant, the domain name "legeforeningen.com" was registered with the Registrar and that the Respondent was the current registrant of the name. The Registrar also forwarded the requested WHOIS details, confirmed that the Uniform Domain Name Dispute Resolution Policy was in effect and stated that the domain name was in "Active" status.

Effective December 1, 1999, the Registrar implemented the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, (the "Policy"). There is no evidence that the Respondent ever requested that the domain name at issue be deleted from the domain name database. Accordingly, the Respondent is bound by the provisions of the Policy.

The Panel has determined 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 "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.

No formal deficiencies having been recorded, on October 4, 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 October 23, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by facsimile and by e-mail to the e-mail addresses indicated in the Complaint and specified in the Registrar’s WHOIS confirmation. In addition, the Complaint was sent by express courier.

On October 16, 2000, the Respondent submitted its Response to the WIPO Center and on October 23, 2000 the WIPO Center received an amended Response.

On October 26, 2000, the Complainant submitted comments to the Respondentґs Response to the WIPO Center. On October 30, 2000, the Respondent submitted comments to the Complainantґs comments to the WIPO Center.

On November 2, 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 Mr. Jonas Gulliksson.

The Panel 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 Response, the Policy, the Uniform Rules and the WIPO Supplemental Rules.

 

4. Factual Background

Den Norske Lægeforening (The Norwegian Medical Association), below mentioned as "LEGEFORENINGEN", was founded on July 6, 1886, it has over 18 000 members, and represent more than 96 % of all medical practitioners in Norway.

Among other activities, the aims and objectives of the association are as follows:

- To work for a high professional and ethical standard among the Associationґs members.

- To protect doctorsґsocial, professional and economic interests.

- To promote the teaching of medicine, and medical science.

- To encourage efforts to improve public health.

Complainant is the owner of Norwegian Trademark Registration No. (11) 152977 for the "Den Norske Lægeforening" mark covering goods in the following Classes:

Class 14: (precious metals and goods made hereby etc.);

Class 16: (paper, cardboard, printed matter and goods made hereby etc.);

Class 25: (clothing etc.);

Class 42: (different kind of services etc.).

LEGEFORENINGEN also publishes a Journal called The Journal of the Norwegian Medical Association.

The Journal of the Norwegian Medical Journal (The Journal) [Tidsskrift for Den norske lægeforening] is a traditional, well-respected medical journal read by almost every physician in Norway. It was founded in 1881 as The Journal of Practical Medicine [Tidsskrift for Praktisk Medicin]. Since 1888 it has been a membership journal owned by the Norwegian Medical Association (appr. 18 000 members). The Journal publishes 30 issues per year, approximately 150 pages per issue, which adds to 4 500 pages per year, and the circulation is 21 200. It has a coverage among Norwegian physicians of more than 96% and it is on of the most important single source of information in Norwegian medicine. The language of publication is Norwegian, and it is the only medical journal in this language with a high impact in general news media in Norway.

The Journal has an editorial staff of 20 people, a yearly budget of 40 mill. NOK and its offices in located in downtown Oslo. Editor in chief (since 1987): Magne Nylenna, MD, PhD.

In addition, LEGEFORENINGEN administrates web-pages under the domain’s

www.legeforeningen.no, www.legeforeningen.net and www.legeforeningen.org.

 

5. Parties’ Contentions

A. Complainant

The Complaint is based on the following grounds:

(a) That the Respondent has registered as a domain name a mark which is identical to Complainant’s LEGEFORENINGEN mark, which he knew in advance.

(b) That the Respondent has no rights or legitimate interests in respect of the domain name.

(c) That the Respondents abuse of the trademark and organization name, mislead and confuse the public who seek health information through Internet.

(d) That the Respondent has registered and is using that domain name in bad faith.

(e) That the Respondent acted in bad faith by breaching its registration contract with Register.com because it falsely represented that its registration of the domain name "legeforeningen.com" did not infringe the rights of any third party.

(f) That the Respondent tried to make money by selling the domain name back to LEGEFORENINGEN.

(g) That the Respondent systematically has registered other domain names relating directly to other well known Norwegian organizations, governmental institutions and even a financial news paper, for the same purpose as towards the Complainant.

Short summary of the background

During the spring of 2000, the Respondent started a harassment campaign against well-known organizations and governmental institutions. At first he made web pages almost identical to LEGEFORENINGEN, The Norwegian Agency for Development Cooperation and the Norwegian Tax authorities. On these pages the Respondent had discriminating, offending and incorrect information. (As an example see the print of the web-site in Annex 3a to the Complaint). He got a lot of publicity in the Media, were he among other stated;

" I have done this to create political winds……..It is my aim to harass the established parties". When asked by the newspaper he finds no harm in placing incorrect information on the Internet about the parties. Furthermore he is quoted: "The Norwegian Medical Association and the Tax authority have no high star with me….". (For example see the copies of some of the news stories in Annex 4 to the Complaint).

He also said that there should be "more to come", and announced that he had managed to register several other well known Norwegian trademarks such as The Consumer Council of Norway, The Norwegian Board of Health, and Finansavisen (a well known Norwegian financial paper) (Se printout of the Whois database in Annex 5 to the Complaint).

The Complainant, The Norwegian Agency for Development Cooperation and the Norwegian Tax authorities sent a letter to the Respondent dated 28th of july 2000, where they asked the Respondent to close his Internet sites. (See Annex 6 to the Complaint).

The same parties also sent a letter dated 4th of August 2000 to Register.com, which is the registrar service for the Respondent. (See Annex 7 to the Complaint).

The Respondent sent a letter back dated 9th of August, where he offered the parties to buy the domain names back, for the "market price", as he called it. (See Annex 8 to the Complaint). The Respondent expanded his offer later on the phone, with a representative for the Norwegian Tax authorities, where he says that he will give them (referring to all the involved parties, including LEGEFORENINGEN) one week to decide if they would like to buy the domain names back. After that period, he said, he would sell the domain names to the highest bidder. And according to the Respondent, he has had several offers already. In this one-week period, he said that he would take the pages down, which he also did.

The Complainant refused to respond to this sort of "blackmailing".

After one week of nothing on the affected web pages, he filled the pages on www.legeforeningen.com with material which it seems that he had found on the web-site www.theonion.com. (See Annex 9 and 10 to the Complaint). According to the theonion web-site, the material on this site is copyright protected.

The Respondent has no intention to freely give the domain names back, so he is blocking the names, and still have material on the sites which is likely to confuse, mistake or deception as to the affiliation, connection or association of Respondent and Complainant, and the origin, sponsorship, or approval of Complainant and its services.

Comments to section a) and b) above

According to the Norwegian Trademark Act section 1 and 2, you obtain exclusive rights to a trademark either through registration or through work ins by use and recognition over time. The Complainant has registered the mark "Den Norske Lægeforening", and have obtained by that and through use and recognition also protection for the short version LEGEFORENINGEN which is the name the association is known by in the public.

There is no doubt that the Respondent knew about the trademark in advance, since on his original web-pages under the domain name www.legeforeningen.com, there was a copy of the trademark, and pages with almost identical layout of the pages owned by LEGEFORENINGEN, and all the material was related to harassment information about doctors and their profession. See a printout of both sites in Annex 3a (Respondent) and 3b (Complainant).

Comments to section c) above

The web-sites administrated by LEGEFORENINGEN, and located at www.legeforeningen.no, www.legeforeningen.net, and www.legeforeningen.org, contain, among other things, medical information intended for the public as an important information channel concerning health-related topics. It is therefore important that this information is easily accessible for the public, and that they can trust the information at the sites.

But if you only write "legeforeningen" in the address area in the browser, you are sent directly to the Respondents site at www.legeforeningen.com. This is very confusing, and misleading,especially for new users. The same can happen if you are searching for "legeforeningen" at various search engines.

Comments to section d), e), f) and g) above

Through media, in writing and on the phone, the Respondent has explained that he is doing this because he wants to smear the Complainant and the other organizations and governmental institutions, get a lot of publicity, and make some money out of it by ransoming them back to their rightful owners.

The Respondent has also breached the Registration Agreement with Register.com, and their implemented Uniform Domain Name Dispute Resolution Policy on several sections.

Especially section 11 in the Registration Agreement which says in its first three sentence " You represent that, to the best knowledge and belief, neither the registration of the domain name nor the manner in which it is directly or indirectly used infringes the legal rights of a third party".

The respondent registered the domain name with the purpose to make such web-pages as he did, and hereby knew that he would infringe the legal rights of a third party.

He also breached section 4. b. in the implemented Uniform Domain Name Dispute Resolution Policy, which concern bad faith.

By the Respondent actions, he has managed to probably breach several Norwegian laws concerning trademark and copyright, confuse the users of the sites, smear the Complainant, their sponsors and their reputation, generate publicity through media and to the Respondents own web-sites, and then trying to make money by ransoming the domain names back to its rightful owners.

Finally, Complainant has requested the Administrative Panel to issue a decision by which the contested domain name "legeforeningen.com" is transferred to Complainant.

B. Respondent

In his response, the Respondent has stated the following:

1. The domain name is not "confusingly similar to a trademark or service mark".

LEGEFORENINGEN is not a registered trademark or service mark, but is in fact a generic word which falls into the same category as "petrolstation" or "bookstore". It is unreasonable to claim a domain-name which is made up from two generic words. Barnes & Noble or Amazon.com cannot claim "bookstore.com" just because they are stores that sell books, and the Shell cannot claim "petrolstation.com" since petrolstation is a generic term which applies to all petrolstations regardless whether they are Shell’s, BP’s or Exxon’s. In the same manner The Norwegian Medical association cannot claim "legeforeningen.com", just because it contains the Norwegian words for doctor (lege) and association (forening).

As an addition to this line of reasoning the Respondent would like to point out that all of the Scandinavian countries have a medical association. Furthermore, the word "lege", which in Norwegian means doctor, means "toy" or "game" in Danish. Thus in Denmark, "legeforeningen" would literally be translated to "The Game Association." Indeed, in Danish the word for doctor is "læge," which is identical to the word used in the official name of the Norwegian Medical Association (Den Norske Lægeforening).

As a side note it is worth mentioning that the words IRS and White House are, much like legeforeningen, not trademarked expressions, yet strongly associated to existing entities (Internal Revenue Services and The White House in Washington). Nevertheless, both irs.com and whitehouse.com are owned by others than the IRS and The White House. There is strong reason to believe that these entities have tried to acquire these domain names and failed, precisely because both "irs" and "whitehouse" are generic in nature, just like "legeforeningen".

2. "The domain name was registered and is being used in bad faith"

The domain was not registered in bad faith. The domain is not used in bad faith, as soon as the Respondent received a letter from the Complainant, where the Complainant described that the material found on the pages where considered offensive, the Respondent complied to the Complainant's every demand, within the given timeframe. The Respondent also assured them that these pages would never come online again.

3. Policy, Paragraph 4(b) section 1

The mentioned Paragraph clearly states that: "Circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name"

The Respondent's actions in regard to this paragraph clearly demonstrates that the Respondent has no economic motivation. In fact, the Respondent has declined substantial offers made by third parties in good faith regarding the Complainant's will to find a feasible solution acceptable to both parties.

Norway has a long tradition of political satire in the media. The most well known satirists are called Kirkvaag, Lystad and Mjøen (KLM for short) and have for a generation amused people with their witty satires while at the same time making a political point. Never in their 30 yearlong careers on public television have they ever been sued or in any other way prosecuted by the satired parties. And why should they? Norway has a proud and well-established tradition of freedom of speech. Anyone is by law free to satire any party they may desire. It was in this tradition that the Respondent during Spring 2000 satired the Complainant on the website legeforeningen.com. In order to be absolutely sure that the satire did not in infringe Norwegian law the Respondent went to great length to design the satire in such a way that it did not in any way violate any trademarks or could be mistaken for the Complainant.

Since political satire is so established as an acceptable execution of political freedom of speech in Norway, the Respondent was surprised to learn that the Complainant demanded the satire to cease and that the domain name be transferred to the Complainant at no cost. The Respondent agreed to closing down the website, but found the demand of transfer at no cost to be unreasonable. The Respondent demanded a fee corresponding to the expenses associated with designing and hosting the website, which the Complainant declined.

The Complainant quotes the Respondent from a Norwegian newspaper article:

"I have done this to create political winds... it is my aim to harass the established parties."

The correct quote from Stavanger Aftenblad June 26 2000 should read as follows:

"I have done this to create political winds. It is my aim to satire the established parties, and there is no economic motivation whatsoever."

This is the complete and unabridged sentence from the article. It is apparent that the Complainant was using liberal translations and editing down the sentence leaving out a key part of the quote describing the Respondent's economic motivation. Also the Norwegian word "herse" has been falsely translated by the Complainant as "harass" whereas it is an abverse of the Norwegian word "harselere" which naturally translates to "satire", not "harass."

The Complainant writes:

"The Respondent sent a letter back dated 9th of August, where he offered the parties to buy the domain names back, for the "market price", as he called it. (See Annex 8). The Respondent expanded his offer later on the phone, with a representative for the Norwegian Tax authorities, where he says that he will give them (referring to all the involved parties, including LEGEFORENINGEN) one week to decide if they would like to buy the domain names back. After that period, he said, he would sell the domain names to the highest bidder. And according to the Respondent, he has had several offers already. In this one-week period, he said that he would take the pages down, which he also did."

1. All requests made by the Complainant in a letter dated 9th of August was accepted and executed by the Respondent.

2. The offer made by the Respondent in a phone conversation was as follows:

- I don't want to have this domain any longer.

- You are hereby offered to buy the domain (which you judge as yours) back for the sum of $750, this sum is only to cover the registration fee, url-forwarding fee, hosting fee etc. and is of a purely symbolic nature.

- You have a week from now to decide if you want to buy it back, after which I will sell it for "market price" to the highest bidder.

- The pages in question will never go online again.

The Respondent would like to point out that after the initial goals of his actions had been obtained it had always been his intent to give the domains back to the parties judging the domains as theirs. However, suffering economic loss registering a domain judged theirs by the Complainant is unreasonable, hence a purely symbolic offer was made to the Complainant amounting to the sum of $750. Other parties had at this time offered a substantially larger amount of money for the domain, which was declined in favor of the Complainant. The Complainant calls these actions "blackmail" whereas the Respondent only wanted to rid himself of the domain without any economic loss. Instead of accepting the modest and good willed offer, the Complainant chose to try the case with ICANN at a much greater expense for the Complainant.

The Complainant argues that LEGEFORENINGEN is the name the association is known by in public. This is clearly a half truth, "Petrolstation" is also the name the public uses for a petrol station, "Bookstore" is also the name the public uses for a bookstore. Such generic terms cannot be copyrighted or trademarked for obvious reasons. It is clearly not the Respondent’s fault that the The Norwegian Medical Association has chosen such a generic term for its name instead of choosing a trademarkable name for its web-pages.

The Complaint further argues that it has the legitimate rights to "Den Norske Lægeforening", which is undoubtly true, the only problem being that the "Den Norske Lægeforening" trademark is not the issue at hand, but rather LEGEFORENINGEN, which they have no legitimate claim for, nor will they ever.

The Complaint also writes that: "Through media, in writing and on the phone, the Respondent has explained that he is doing this because he want to smear the Complainant and the other organizations and governmental institutions, get a lot of publicity, and make some money out of it by ransoming them back to their rightful owners."

The Respondent has never made any of these "statements". The Respondent would like the Complainant to document these allegations and if they cannot they should be taken out of consideration in this matter. Not in any conversation with either the media or in the one phone conversation has the Respondent ever stated anything else then that "no economic motive is present."

The word "Ransom" is a word the Complainant uses a great deal in the claim. The Respondent would like to point out the following facts:

$750 is by far less than the Complainant is using on this legal proceeding.

I claim to have demonstrated that

- The term "legeforeningen" is generic and as such cannot be claimed by Den Norske Lægeforening (The Norwegian Medical Association).

- The domain name was not registered in bad faith, nor is it used in bad faith. It was used purely for satirical purposes, and this activity ceased upon the request of the Complainant.

- The Respondent did or does not have any economic motivation for acquiring the domain name.

 

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.

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) that the domain name has been registered and is being used in bad faith.

The Complainant is the owner of the trademark "Den Norske Lægeforening".

The Complainant has stated that by this registration and through use and recognition, it has also required rights for the shortversion "Legeforeningen", which is the name the Complainant is known by in the public.

The Respondent has, in contrast, alleged that "Legeforeningen" is not a registered trademark, but in fact a generic word.

The Complainant lacks a trademark registration for the shortversion "Legeforeningen", which means "The Physicians’ Association". Without registration, there is no presumption of validity to Complainant’s claim of exclusive rights in the word "Legerforeningen" alone, and it must prove that this word has aquired distinctiveness through extensive use and that Complainant has aquired a right of user as a result of such use.

The words "Physicians’ Association" are undoubtedly generic with respect to any association of doctors or physicians and belongs to the common language required to be freely available for any association of this sort. Thus the registration of "Den Norske Lægeforening" (approx. The Norwegian Physicians’ Association) does not automatically grant protection to the abbreviated form. However, it is highly probable that the public and the medical profession use only the abbreviated form. It is not totally impossible to obtain protection for a word which was originally generic. The decisive thing is how the relevant circles conceive the word. In order to obtain such a right of user of a generic word a very extensive use is required. It seems probable that "Legeforeningen" has been used very extensively in Norway since it started already in 1886.

However, in order to obtain a right of user substantial evidence has to be presented, preferably in the form of both indirect and direct evidence in the form of market surveys etc.

Consequently, a right of user in a trademark can only in exceptional cases be attached importance in an Administraive Proceeding.

Such evidence has not been presented by the Complainant.

Thus the Panel finds that the Complainant has failed to meet the requirements of Paragraph 4(a) (i) of the Policy.

Having found that the Complainant has failed to meet these requirements, the Complaint must be rejected.

It is important to note that the ICANN Rules contemplate only limited evidentary presentations by the parties. Although the Panel has found on the basis of the filed evidence that the Complainant has not established a right of user to the word "Legeforeningen", this is not a definite determination. In the event that the Complainant could prove a right of user in the future, then Complainant may refile this proceeding and seek transfer of the domain name or intiate court action, and this decision is without prejudice to any such further proceedings.

 

7. Decision

Complainant has failed, on this record, to establish trademark rights in the

designation "legeforeningen.com". Accordingly, Complainant has failed to satisfy Paragraph 4 (a) (i) of the Policy. The Panel therefore denies the Complainant’s request that the domain name "legeforeningen.com" be transferred from Respondent to Complainant.

 

 


 

 

Jonas Gulliksson
Sole Panelist

Dated: November 15, 2000

 

Источник информации: https://internet-law.ru/intlaw/udrp/2000/d2000-1267.html

 

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