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WIPO Domain Name Decision: D2000-1761
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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Saab Automobile AB et al. v. Joakim Nordberg
Case No. D2000-1761
1. The Parties
Complainants are Saab Automobile AB and Saab Opel Sverige AB, organized and existing under the laws of Sweden, represented by Johan Sjöbeck, L.A. Groth & Co. KB, Sweden.
Respondent is Joakim Nordberg, Nordberg.org, Schluesselgasse 3, 8001 Zürich, Switzerland.
2. The Domain Names and Registrars
The domain names at issue are <saabopel.com> and <saabopel.net>. The registrar is Network Solutions, Inc. ("NSI"), Herndon, Virginia, United States of America and OpenSRS, Toronto, Ontario, Canada respectively.
3. Procedural History
A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on
December 19, 2000, and the signed original together with four copies was received by the WIPO Center on December 20, 2000. The WIPO Center sent an Acknowledgment of Receipt to the Complainant, dated December 20, 2000.
On December 28, 2000, the Requests for Registrar Verification were transmitted to the Registrars. NSI returned the Verification on December 29, 2000 and OpenSRS returned it on January 4, 2001. They confirmed that the domain names were registered and that the Respondent was the current registrant of the name. The Registrars also forwarded the requested WHOIS details, confirmed that the Uniform Domain Name Dispute Resolution Policy was in effect and stated that the domain names were on "Active" status (NSI) or on hold (OpenSRS).
The policy in effect at the time of the original registration of the domain name at issue was Network Solutions 5.0 Service Agreement and the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy").
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, and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy. 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 January 8, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent with copies to the Complainant, NSI and OpenSRS as well as ICANN, setting a deadline of January 29, 2001, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by the required means.
On February 1, 2001, having received no Response from the designated Respondent, the WIPO Center transmitted to the parties a Notification of Respondent Default.
On February 9, 2001, in view of the Complainant’s designation of a single panelist the WIPO Center invited Mr. Knud Wallberg to serve as a panelist in Case No. D2000-1761, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.
Having received Mr. Knud Wallberg’s Statement of Acceptance and Declaration of Impartiality and Independence the same day, on February 15, 2000, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Knud Wallberg was formally appointed as the Sole Panelist. The Projected Decision Date was February 28, 2001. 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, but without the benefit of a response from the Respondent.
4. Factual Background
SAAB has been registered as a trademark in Sweden for a long range of goods and services since 1963 including motor vehicles. Opel has been registered as a trademark in Sweden since 1951. The Complainants do not own the registrations, but they have been granted the exclusive rights to use the mark. In addition, Complainant 1 is the owner of a pending application of the mark Saab in Sweden and Complainant 2 has registered the company name Saab Opel Sverige AB with the Swedish register of companies.
No specific information has been furnished as to the Respondents background.
5. Parties’ Contentions
The complaint is based on the claim that the rules of the UDRP is fulfilled i.e. that:
(1) The domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) The Respondent has no rights or legitimate interests in respect of the domain names; and
(3) The domain names were registered and are being used in bad faith.
This Complaint is based on the following grounds:
(1) As to the Complainants rights reference is made to various registrations of the trademark SAAB and Opel, as well as to a pending application to register the mark SAAB. Proof of the rights was annexed to the Complaint. The trademark registrations do not belong to the complainants but the Complainant Saab Automobile AB has exclusive rights to use the Saab trademark in relation to cars and various car-related items.
Reference is also made to the fact that the name of Complainant 2 is Saab Opel Sverige AB. A copy of the registration certificate was furnished as an annex. The mission for this firm is to directly or through subsidiaries or dealers sell motor vehicles, tools, and accessories and spare parts, and perform reparations of vehicles etc.
The disputed domain names <saabopel.com> and <saabopel.net> consist of the two registered trademarks SAAB and OPEL which when added together becomes SAABOPEL, which is the company name (Saab Opel Sverige AB) of one of the Complainants. The domain names are substantially similar to the registered trademarks used by both Complainants. If one were to look at the domain names closely, one would probably notice that they actually contain two well-known trademarks and with that in mind it would be fair to say that the domain names are very similar, if not identical, to the registered trademarks. Furthermore, it goes without saying that the domain names are identical to the company name of one of the Complainants, save for the national description "Sverige" (Sweden).
(2) To the best of the Complainants’ knowledge, the Respondent has no rights in either of the names, and the Respondent has admitted that being the case in a telephone conversation with the legal representative of the Complainants
on November 30, 2000.
Furthermore, the Respondent has no legitimate interests in respect of the domain names being subject of this dispute. 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 names in question, and the Respondent is not commonly known by the registered trademarks SAAB, OPEL or by the combination of both trademarks, SAABOPEL
(3) The Complainants succumb to the opinion that the disputed domain names have been registered and are being used in bad faith.
In the Complaint Complainants disclosed the content of the previous contacts between the parties, most of it being telephone conversations.
From these contacts it appears that the Respondent registered the domain name <saabopel.com> in an attempt to get revenge against the car dealers, as he had a dispute with them regarding a newly bought car that he was not satisfied with. The domain name <saabopel.net> was registered after the two parties had been in contact, i.e. after Respondent was made aware of the Complainants trademark rights. Respondent has a certain point been willing to sell the disputed domain names to the Complainants for an amount that exceeds the out-of-pocket costs for the registrations.
The domain names prevented the Complainants from reflecting their trademarks and company name in corresponding domain names. Even though it may not be looked upon as a pattern of registering numerous trademarks as domain names, the Respondent has shown his wilful intentions by registering a second domain name containing the trademarks after being informed by the Complainants that such behaviour is unacceptable due to trademark rights.
The Complainants believe that the respondent was well aware of the value of the complainants trademarks at the time of the domain name registrations and that the primary purpose was to tarnish the trademarks, sell, rent or otherwise transfer the domain names to the complainants or to a competitor of the complainants for valuable consideration in excess of out-of-pocket costs directly related to the domain names.
The various threats to disclose the alleged 500mb e-mail correspondence intended for the Complainants to a competitor of the Complainants alternatively to the press, further indicates that both domain names are being used as an instrument for extortion in order to attract financial gain or alternatively disrupting the businesses of the complainants as revenge for not being satisfied with the car he once bought. The demand for money in relation to the e-mail correspondence is directly related to the use of the domain names.
The Complainants are of the opinion that the Respondent is using the domain names in order to attract financial gain and at the same time tarnish the trademarks in order to satisfy his personal needs for revenge. Using domain names consisting of registered trademarks in the above-mentioned immoral way should not be considered good faith.
As mentioned above under 3, the respondent has not filed a formal response in accordance with the Rules, Para. 5.
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) the domain name has been registered and used in bad faith.
The domain names <saabopel.com> and <saabopel.net> contain the two trademarks SAAB and OPEL and also directly reflect the company name of one of the Complainants except for the non distinctive parts "Sverige" and "AB". That the domain names are a combination of two marks does not mean that the Policy cannot be applied, cf. Case D2000-0135 <maersksealand.com> et al. Complainants are not the owners of the old registrations of the SAAB and OPEL marks in Sweden, and have not furnished evidence to the effect that they are authorized to use the marks. The merits of the case do, however, not lead the Panel to draw into question that these information are true and correct. Therefore, the domain names must be regarded as confusingly similar to trademark rights in which the Complainants have rights.
The Complainants have not licensed or otherwise permitted Respondent to use the distinctive and well-known trademarks or to apply for any domain name incorporating the marks. Further, the Respondent has not proven that he has any prior rights or legitimate interests in the domain name. The Panel notes that it does not in itself constitute a legitimate interest to register and use the trademarks belonging to someone else as a domain name, that the intended use is to make a web-site disclosing ones distrust or trust in the said marks.
The Respondent has not disputed the facts put forward in the Complaint that he had knowledge of the two marks when he registered the disputed domain names. Further, Respondent has apparently come up with different explanations as to the purpose of the registrations. The Panel cannot make a final determination on this point. Nevertheless the Panel holds the view that the consequences of Respondents action would be that the business of the Complainants are disrupted, and that they are prevented from reflecting their company name and their well-known trademarks in a corresponding domain name, and that these consequences were known to the Respondent. The domain names have thus been registered and used in bad faith.
Consequently, all the prerequisites for cancellation or transfer of the domain names according to Paragraph 4(a) and (b) of the Rules are fulfilled.
The Complainant has requested transfer of the domain names.
In view of the above circumstances and facts the Panel decides, that the domain names registered by Respondent are similar to the trademarks in which the Complainants have rights, and that the Respondent has no rights or legitimate interests in respect of the domain names, and that the Respondent’s domain names have 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 names <saabopel.com> and <saabopel.net> be transferred to the Complainants.
Dated: February 26, 2001