WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Trygg Hansa Aktiebolag v. Mr. Björn Persson
Case No. DNU2000-0003
1. The Parties
The Complainant is Trygg Hansa Aktiebolag, an insurance corporation under Swedish law, whose principal place for business is at Fleminggatan 18, 106 26 Stockholm, Sweden.
The Respondent is Mr. Björn Persson, resident at Nygatan 16, 692 34 Kumla, Sweden.
2. The Domain Name
The domain name at issue is "trygghansa.nu", registered with .NU Domain Ltd. On October 2, 1999.
3. Procedural history
A complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on November 20, 2000, and was there received in hardcopy form on November 23, 2000. Payment of the administration fee was made by bank transfer on November 20, 2000, and duly received. The Center correctly verified that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Uniform Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The receipt was acknowledged by the WIPO Center to the Complainant the following day. Registrar Verification Request and Response were exchanged between the Center and NU Domain Ltd. on November 30, 2000. The complaint was properly notified to the Respondent on December 4, 2000. Response was timely received by the WIPO Center by email and hardcopy on December 19 and 21, 2000 respectively; acknowledged by the Center on December 21, 2000. The Complainant chose to have the dispute decided by a single-member Administrative Panel and the Respondent declared that he did not elect a three-member panel to decide the case. Founded on a Statement of Acceptance and Declaration of Impartiality and Independence dated January 8, 2001, the Administrative Panel was properly constituted on January 10, 2001, the formal date of commencement of this administrative proceeding. There have been no further submissions. The date scheduled for the issuance of the Panel’s decision is January 24, 2000.
4. Factual Background
The complaint is based on ownership of the trademark TRYGG HANSA – the words being separated or bound together by a ring in red and white, known by this Panel to symbolize a life-saving buoy - , registered for services in classes 35, 36, 41 and 42 with the Swedish Patent and Trademark office (Reg. No 242 707) for ten years period from November 27, 1992. Annexed to the complaint are, inter al., copies of the texts and pictures from the Respondent’s home page and copies of the official corporation and trademark registration documents. The Respondent has not brought any material evidencing his statements.
5. Parties Contentions (summary)
The domain name "trygghansa.nu" is undoubtedly identical to the trademark TRYGG HANSA, save for the space between the words TRYGG and HANSA. Due to technological barriers, if the Complainant would apply for any kind of domain name, it would have to be "trygghansa.any TLD". The Complainant submits that the domain name and the trademark shall be seen as identical. The Respondent has no rights or legitimate interests in respect of the name TRYGGHANSA, not being owner of any trademark, service mark, company name, product or service with a name similar to that of the domain name at issue. The Respondent is not using the domain name in connection with a bona fide offering of goods or services. The Complainant is not commonly known by the domain name because the sole purpose of the domain name registration is to refer to the Complainant in a non-favorable way which further indicates the lack of the Respondents rights and legitimate interests in the domain name. Since the Respondent does not use the name TRYGG HANSA in order to promote goods or services, he cannot have acquired any rights or legitimate interests in respect of the name. The domain name has been registered and used in bad faith, in order to prevent the Complainant from reflecting its trademark in a corresponding domain name and at the same time to tarnish the trademark. A surfer typing "trygghansa.nu" sees just that name in the URL.
Elaborating on its reasons for the complaint the Complainant mentions that, according to the Respondent’s own information in Swedish language on the "trygghansa.nu" website, the Respondent’s reason for attacking the Complainants trademark is that he was dissatisfied with service received regarding a car insurance. The Respondent, a former customer to the Complainant, now seeks revenge by its registration and by posting extensive negative information about the Complainant in order to tarnish the trademark and disrupt its business. Potential and/or existing customers are misled by the use of the trademark into entering the website in the belief of entering the website of the Complainant. Due to its content they will understand that it does not originate from the Complainant but they may be deterred by it from business with the Complainant by the tarnishing of the trademark and of the complainant’s services. Furthermore, the Respondent has posted information that he will not remove the website until the Complainant has apologized to him and that he would sell the domain name registration to the highest bidder, should he be forced to remove it. The Complainant asserts that this suggests that the registration was primarily for the purposes of tarnishing, blatant in character, and disruption of business as mentioned, as well as for selling, renting or otherwise transferring the name to either the Complainant or any its competitor for valuable consideration in excess of costs directly related to the name. The complainant also, in substantiation of its assertion about tarnishing, directs attention to particular parts of the content of Respondent’s website: a depreciatory sentence referring to the Complainant and a picture of a person appearing to be drowning, holding a life-saving buoy in colors corresponding to those noted in the registration certificate for the pictorial element of the TRYGG HANSA trademark. Asked to remove the website on May 9, 2000, by employees of the Complainant, the Respondent has not reacted. His behavior is not a legitimate non-commercial or fair use of the domain name under the circumstances mentioned. Even if the Respondent has not directly offered to sell, rent or transfer the domain name to the complainant he has, for reasons mentioned, been acting in bad faith.
The Complainant requests the Administrative Panel to issue a decision that the contested domain name shall be transferred to the Complainant.
The Respondent’s answer to the complaint concentrates upon assertions that his use of the domain name cannot be proven to be in bad faith and that he has a legitimate interest in it. He never intended to make any money out of the domain name and he bought it for his own personal non-commercial use. The phrase on the website [in English translation: "If it comes a time when I shut down this website the domain will be sold to the highest bidder"] upon which the Complainant bases its assertion that he would sell, rent or otherwise transfer the domain name registration only indicates a willingness to sell it when the day comes to someone that wants it. Had he intended to prevent, by his registration, Complainant from reflecting its trademark in a corresponding domain name he could have bought more free domain names, similar to "trygghansa.nu", than the one at issue. He is not a competitor to the Complainant and he can therefore not have registered the domain name primarily for the purpose of disrupting its business. He has no commercial interest in the website and he has never tried to make any money from it.
In particular relating to the Complainant’s assertion that he has registered and used the domain name in bad faith, seeking revenge because of dissatisfaction with services of the Complainant, the Respondent claims that he has been discriminated. He mentions that it might be true that he has been posting extensive negative information about the Complainant but also that that information is true to the best of his knowledge and remembrance and that the Complainant never tried to set things right or contacted him to solve the problems. He objects to the Complainant’s view that the sentence and picture rendered at the website which it mentions as tarnishing its trademark would do more than reflect the feeling he got when he was badly treated by the Complainant and he does not accept the Complainants opinion about what to infer from the picture. He has not been contacted by anybody about removal of the website before the present complaint.
In demonstration of his rights and legitimate interests in the domain name the Respondent asserts that he found that Internet seemed to be the right place to inform the public of his personal dilemma as customer to the Complainant. In his view, the only reason the Complainant wants the domain name "trygghansa.nu" is to silence a customer that stands up for the public and says "no more". Since the web site has been online for more than a year the Respondent has become commonly known by the domain name. He questions whether it is reasonable that a company that has a trademark in a country also automatically has the rights to all domains containing the name of the company.
6. Discussion and findings
On the basis of the parties’–both subject to Swedish law – submissions and evidence introduced by the Complainant and in particular with due regard to the content of the relevant provisions of the Uniform Policy, (paragraph 4 a to c), the Administrative Panel concludes as follows:
A. Complainant’s registered trademark is, notwithstanding the figural element separating the two words TRYGG and HANSA, confusingly similar to the domain name "trygghansa.nu".
B. The Respondent has registered the domain name and used it with admitted intent to tarnish the trademark and negatively influence the business reputation of its owner. Defamatory expressions used against a legal entity are not punishable under Swedish law, but in the opinion of the Administrative Panel this does not constitute a right in the meaning of the Uniform Policy or any legitimate interest to the domain name for the Respondent. A Respondent’s right would here imply an authorization to mislead members of the public –irrespective of jurisdictional boundaries –to make arrangements to get connected to the Complainant via the domain name, only to find themselves tied up with the Respondent. The Respondent’s messages could easily be conveyed under another domain name than the one at issue or a similar one, avoiding such effects to the trademark, the Complainant and the public as mentioned. The Administrative Panel is of the opinion that Internet shall be open for criticism by individuals against others to the extent permitted by applicable law but it does not follow that there is a right to such use as the one we witness in the present case related to the trademark of another party, nor any legitimate interest in such use.
C. The list of circumstances provided by paragraph 4 b. of the Uniform Policy is "without limitation" and it is understood by the Administrative Panel that such circumstances as are mentioned there under (i)–(iv) need not all be present for a finding that there is sufficient evidence of registration and use of the domain name in bad faith. Consequently the Administrative Panel finds as follows:
Although there is no evidence that the Respondent has registered the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant, nor of an intention on the part of the Respondent to prevent the Complainant from reflecting its trademark in a corresponding domain name, there is evidence provided by the text of the Respondent’s home page that he would sell the domain name to the highest bidder were he to close down the page. The Administrative panel is not convinced that the price intended would fall within the limits of documented out-of-pocket costs directly related to the domain name. The registration has clearly been effected and used primarily for the purpose of conveying messages intended to disrupt the business of the Complainant by tarnishing its trademark and its reputation. Neither the fact that, in that respect, the Respondent has not acted as a competitor to the Complainant, nor that the evidenced intention of the Respondent to create a likelihood of confusion does not fulfil the further conditions mentioned under paragraph 4 b. (iv) of the Uniform Policy, is, under the circumstances, of importance for the determination of whether the domain name has been registered and is being used in bad faith. The Administrative Panel finds that the domain name has been and is being so used.
D. Summarizing its findings under A–C, the Administrative Panel finds that the domain name registered by the Respondent is confusingly similar to the trade mark in which the Complainant has rights, that the Respondent has no rights or legitimate interest in respect of the domain name and that the Respondent’s domain name has been registered and is being used in bad faith.
The Administrative Panel requires that the registration of the domain name "trygghansa.nu" be transferred to the Complainant.