WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Modern Times Group (MTG) AB v. Stefan Häge, Kriströms Advokatbyrå AB
Case No. DTV2000-0004
1. The Parties
The Complainant is Modern Times Group (MTG) AB, a Swedish limited liabilty company, Box 2094, 103 13 Stockholm, Sweden.
The Respondent is Stefan Häge, Kriströms Advokatbyrå AB, an individual resident at the address of Torstenssonsgatan 13, 114 56 Stockholm, Sweden.
2. The Domain Name and Registrar
The domain name at issue is <everyday.tv>, which is registered with dotTV, ("the Registrar"), 130 West Union Street, Pasadena, CA 91103, USA.
3. Procedural History
A Complaint was submitted electronically to the World Intellectual Property Organization, Arbitration and Mediation Center, on November 7, 2000, and in hardcopy on November 13, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated November 14, 2000.
On November 14, 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 the 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 November 14, 2000, the Registrar confirmed that a copy of the Complaint was sent to the Registrar by the Complainant, the domain name <everyday.tv> 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.
The Registrar has 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 November 22, 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 December 11, 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 December 8, 2000, the Respondent submitted its Response to the WIPO Center and on December 13, 2000 the WIPO Center received a completion of the Response.
On December 13, 2000, the Complainant submitted comments to the Responden’s Response to the WIPO Center.
On January 11, 2001, 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 Rules and the WIPO Supplemental Rules.
The Administrative Panel shall issue its decision based on the Complaint, the Response, the Policy, the Rules and the WIPO Supplemental Rules.
4. Factual Background
The Complainant and its Registered Trademarks
Modern Times Groups (MTG) AB is the holder of the following trademark registrations:
324 205 EVERYDAY (device) in Sweden, classes 9, 16, 38, 41, 42
174 167 EVERYDAY (device) in Norway, classes 9, 16, 38, 41, 42
200327 EVERYDAY (device) in Finland, classes 9, 16, 38, 41, 42
VR 1994 08874 EVERYDAY (device) in Denmark, classes 9, 16, 38, 41, 42
314 476 Everyday Money (device) in Sweden, class 36
172878 Everyday Money (device) in Norway, class 36
04.914 1995 Everyday Money (device) in Denmark, class 36
328 679 EVERYDAY GAMELINX, classes 9, 16, 38, 41, 42
CTM 1249860 everyday.com (device) in the European Union, classes 9, 16, 35, 38, 41, 42
201157 everyday.com (device) in Norway, classes 9, 16, 35, 38, 41, 42
469878 everyday.com (device) in Switzerland, classes 9, 16, 35, 38, 41, 42
161005 everyday.com (device) in Hungary, classes 9, 16, 35, 38, 41, 42
Modern Times Group (MTG) AB is also the holder of the following trademark applications:
145616 everyday.com (device) in the Czech Republic
Z-205828 everyday.com (device) in Poland
9901291 everyday.com (device) in Estonia
M-99-1237 everyday.com (device) in Latvia)
99-1675 everyday.com (device) in Lithuania
MTG or its affiliates have registered the domain name everyday in approximately 30 ccTLDs. Furthermore, MTG or its affiliates hold approximately 35 domain name registrations containing the word everyday, such as <everydaytelephone.com> and <radioeveryday.com>.
5. Parties’ Contentions
The Complaint is based on the following grounds:
The mark EVERYDAY has been in use since 1994 in relation to Internet projects (Annex 5 to the Complaint). The launch of the Internet portal EVERYDAY in 1999 was a huge success. In June 2000 it was established in eleven countries (Annex 4 to the Complaint). In September 2000 it was established in twelve countries and had one million registered members (Annex 6 to the Complaint). In Sweden it is one of the major portals with some 470,000 unique visitors monthly (MMXI Nordic, September). Thus, EVERYDAY has been established, at least in the Swedish market, as a trademark for an Internet portal and for entertainment, media and information services.
MTG has recently released its plans to launch the Internet portal EVERYDAY on Viasat Broadcasting’s digital TV platform as Everyday.TV (Annex 7 to the Complaint).
The trademark EVERYDAY received a lot of attention as Metro International S.A., a former subsidiary to MTG, launched a new free daily newspaper in Stockholm on August 28, 2000 (Annex 8 to the Complaint). The launch of the newspaper EVERYDAY is a first step in the co-operation between Metro International S.A. and the Internet portal EVERYDAY. According to a survey conducted October 26, 2000 – November 3, 2000, the newspaper EVERYDAY has more readers than any other evening newspaper in Stockholm (Annex 9 to the Complaint).
Mr. Matttias Öhman registered the domain name <everyday.tv> on September 1, 2000. According to the content of the web page at the time he intended to build an Internet portal named EVERYDAY. At the same time it was indicated that the domain name was for sale (Annex 10 to the Complaint). On October 20, 2000, MTG sent him a letter requesting him to immediately cease use of the domain name and transfer it to MTG. On October 27, 2000, MTG received a response from Kriströms Advokatbyrå which explained that the domain name had been assigned to them in September on behalf of a client (Annex 11 to the Complaint). According to the registrar, dotTV, the transfer was recorded on October 24, 2000, i.e. after receipt of MTG’s letter (Annex 12 to the Complaint). MTG was promised a full response no later then November 3, 2000. MTG has still not received a response to its letter nor has Kriströms Advokatbyrå given any relevant information regarding its client.
The Complainant has checked the traffic statistics at the webpage <everyday.tv>. The observations that can be made are that the visitors to the page are primarily from the Nordic countries, i.e. the market where EVERYDAY is a well-known and established trademark (Annex 13 to the Complaint).
The domain name <everyday.tv> is almost identical to MTG’s trademarks. The only difference is that MTG’s registered trademark also contains figurative elements or a different TLD. The requirement for confusing similarity is fulfilled.
MTG has been using the trademark EVERYDAY for many years. During the past years MTG has conducted several availability searches for the trademark all over the world but MTG has not come across any registrations that stand in the name of the respondent. A recent on-line search in the Community Trademark Register and the US Register has not revealed any trademark rights on behalf of the respondent.
The respondent’s legal name is not Everyday and to our knowledge the respondent is not presently conducting real activities under the name "everyday", nor has the respondent commonly been known to use this name. The content of the current website <everyday.tv> is merely links and brief news provided free of charge to websites by another company, namely iSyndicate (Annex 14 to the Complaint). Furthermore, there is not any information at the website regarding the Respondent or its plans for the site. Consequently, the Respondent is not using the domain name in connection with a bona fide offering of goods and services.
Since the respondent is not a licensee or otherwise permitted to use MTG’s trademark, the respondent does not have any legitimate interests in respect of the domain name.
(iii) Bad faith
It is self evident that the first registration of the domain name was made in bad faith as Mr. Mattias Öhman registered the mark with the intention to sell it, which actually happened.
Although the Respondent informed the Complainant that it is acting on behalf of a client it does not change the fact that the Respondent is the registered holder of the domain name. Indeed, the Respondent has not provided any information regarding the client nor explained what legitimate interest his client has in the domain name. Furthermore, the client has not been recorded as registrant in the dotTV domain name register. In Complainant’s opinion, this behavior does not support the idea that the domain name registration was made in good faith.
In these days when "cybersquatting" has become an important issue it falls naturally to assume that a purchaser of a domain name takes adequate actions in order to avoid a violation of another persons trademark rights. In this case the respondent is a Swedish law firm that must be considered familiar with the trademark in issue. As EVERYDAY is a registered Swedish trademark with a reputation, especially within the Stockholm region, where the Respondent has its office, it must be concluded that the Respondent had knowledge of the trademark EVERYDAY at the time of the registration.
The transfer was recorded after the date when MTG released the news that MTG together with Viasat Broadcasting intended to launch a digital interactive TV-platform named everyday.tv. Furthermore the transfer was recorded after receipt of MTG’s letter to the former registrant Mr. Mattias Öhman. Apparently, Mr. Mattias Öhman also informed the Respondent of the content of MTG’s letter. Consequently, the Respondent had knowledge of the complainant’s trademark EVERYDAY.
One must assume that a company that decides to register a domain name with the intention of making real use of the domain name in its business activities on the Internet must have checked if the domain name in question is available for registration in the gTLD’s at least. If there are competitors that use a similar domain name or if the domain name is registered in other TLD, it is reasonable to take precautions in order to avoid confusion or trademark infringement, at least if there a bona fide intention to offer goods and services under the domain name.
As mentioned above MTG or its affiliates hold approximately 65 everyday domain name registrations, including the gTLD .com and .org. In Complainant’s opinion, it is more than likely that the respondent was aware of the Internet portal Everyday at the time of the transfer and chose the domain name by that reason. This assumption is supported by the fact that the respondent has not, as mentioned above, made any real use of the domain name to offer goods or services. The service available at the website everyday.tv is provided for free to anyone who is interested, by a third party (annex 15 to the Complaint). There are no indications at the website that the content is a service from the Respondent.
Considering that Everyday is a famous trademark in Sweden and an Internet portal with over one million members, the Respondent must intentionally have chosen the domain name to attract, for financial gain, Internet users to its website by creating a likelihood of confusion with the trademark EVERYDAY. According to the statistic of the traffic presented above, many of MTG’s potential consumers have visited the site, probably in search of MTG’s Internet portal Everyday. Everyday has even received phonecalls from consumers asking questions regarding everyday.tv.
Considering that the registration of <everyday.tv> prevents MTG from launching the digital TV-platform at the Internet address <everyday.tv>, as intended, it is likely that the Respondent has registered the domain name <everyday.tv> for the purpose of disrupting the business of a competitor.
In conclusion, the registration of the domain name has been made in bad faith.
Finally, the Complainant has requested the Administrative Panel to issue a decision by which the contested domain name <everyday.tv> is transferred to the Complainant.
In his response, the Respondent has stated the following:
It is correct that MTG is the holder of the trademark registrations set forth in its Complaint. It is, however, very important to note that the registrations do absolutely not give the copyright or the exclusive right to the letter "E" or the word "EVERYDAY".
For all the trademark registrations it is clearly stated that MTG or any other organisation or person does not have the copyright or the exclusive right to use the word "Everyday" in all kinds of spelling and the letter "E" in all kinds of types.
All of the above mentioned trademarks cover goods and services relating to computer programmes, equipment for computers, books, magazines, printed matter, manuals, instructional and teaching materials, advertising radio and television commercial activity, computer programming, transmission of message and so on, conducting conferences, entertainment services like rental of video films and so on, and also computer consultant services etc…
This means that the trademark has a very broad trademark-area and that it covers a very broad area of goods and services.
In the countries where the Complainant has registered the trademark "Everyday" together with the figure (logo)" the Respondent only find the trademark "Everyday and the letter together with the logo" to be in active use in Sweden, it therefore probably and only has gained protection for violation of it’s use in the active area.
The Respondent does not agree that "Everyday together with the logo" is in active use for all the services that they have registered the trademark for. It is unknown to the Respondent and the present holder, III LLC, if the trademark Everyday together with the logo is used in Denmark, Norway, Finland, Estonia, Netherlands, France, Austria, Italy, Germany, Switzerland and Luxembourg. In all circumstances, a company in Central America cannot know whether the trademarks are active in the last mentioned countries.
No public information except from Sweden and in Swedish has been found about the trademark EVERYDAY together with its logo.
The undersigned and the present holder of the domain have not seen the press release invoked by the Complainant until now.
Nevertheless it is possible that SEC on June 13, 2000, issued a press release that they will launch <everyday.com> in a limited number of countries in Europe.
The present owner International Internet Investment LLC owns the portal of <www.everyday.tv> and has no intention or interest to launch or work in the countries where "everyday.com" works. The domain <everyday.tv> is heading for the North-American market and do not even operate in "everyday.com’s" market or has any of the actual languages on it’s site.
The other press releases invoked by the Complainant are dated after Mr. Öhman’s registration of the domain and even after his sale of it to the undersigned for further transaction to III LLC. It is very strange that a company like MTG tries to launch a domain that they obviously know they do not own.
The huge success that is mentioned for <everyday.com> in the Complaint is a different story in the Swedish newspapers, compared to that in its own press releases. Everyday Webguide which is responsible for <everyday.com> has recently let go 50 % of their staff and today approximately only 10 persons are working with <everyday.com>.
It is possible that the trademark EVERYDAY has been in active use in the local market in Stockholm, Sweden since 1994 and it is obvious that the Internet-Portal <everyday.com> in Sweden is in active use, so is the Internet-Portal "everyday.tv" in the North-American market.
Note that the press release from Everyday.com, from September 6, 2000, is dated one week after Mr. Öhman registered the domain <everyday.tv>, Annex 7 to the Complaint.
MTG has obviously in bad faith used the domain <everyday.tv> in their press releases even when they were not owners of the domain.
It is correct that I as a representative for my client International Internet Investment LLC bought the domain from Mr. Öhman. As a local representative the purpose was to make the transaction as smoothly as possible, resulting in the sale by Mr. Öhman of the domain to me and I immediate forwarded the site to my client, Annex 10-11 to the Response. In respect of the secrecy agreement in the settlements most of the business-related information can not be disclosed.
Mr. Öhman could therefore hardly have acted in bad faith and definitely not the buyer International Internet Investment LLC, who is not even aware of the local paper in Stockholm and the site in Swedish, <everyday.com>.
It’s correct that MTG sent a letter to Mr. Öhman, which immediately contacted me and asked why the transfer of the domain had not been completed after the sale. It is correct that the first registration was completed after Mr. Öhman received the first letter.
Unfortunately dotTV corporation has not acted as fast as you can wish and even the transaction from me, Stefan Häge, Kriström Lawfirm Ltd, to International Internet Investment LLC has not been completed and registered, even if dotTV has all information that they need since some time.
Mr. Öhman nor I as a representative, could have known that MTG’s lawyer, 30 days later after the transaction had been started, would send the above mentioned letter.
It is not strange that there has been traffic from the Nordic countries to the III LLC domain when MTG still seems to use the domain name in bad faith in their brochure and so on, even if they do not own it.
III LLC has been recommended not to lay down costs and not to launch the site until this dispute has been settled.
It is correct that the domain name everyday.tv is identical with the word everyday. But referring to what has been mentioned above/earlier, MTG does not have the copyright to a common name like "everyday" world-wide.
MTG has not the authority and the exclusive right to common names like "Everyday", "Good morning" and so on. It is a misunderstanding and not a correctly interpretation of the rules if WIPO stop other company and people world-wide, who obviously do not know the local market in Stockholm, to use similar names or words that are common in their daily business in other parts of the world. A policy like this breaks against a number of Compton laws, and free trade laws etc.
III LLC didn’t know that Everyday is well known in Stockholm and even if they did have this knowledge it doesn’t mean that MTG has the exclusive right to the common name "Everyday" or the letter "E". It’s correct that the transfer was recorded with dotTV the week before MTG released the information news that MTG together with Viasat’s digital TV-platform would try to launch <everyday.tv>.
How could my client or the registered party be aware of this a week before it happened and when the site was free for sale ?
It is not correct that the transfer was recorded after recital of MTG’s letter to the formal registrant Mr. Öhman, see the intensive and on going communication preceding that letter, Annexes 12-19 to the Response.
The transaction to the undersigned started long before the above mentioned letter and it was completed immediately after the settlement had been signed. The transfer to the owner was delayed because of dotTV and some delay on my part.
A check of how MTG act in the other domain names shows the following.
MTG doesn’t use their domain names. They only register the domains without no other reason than to stop other companies/people to act in the free market. It’s understandable that people from the Swedish market have found the domain because MTG uses the name, despite they know that it’s not their domain name.
MTG has only fulfilled the first conditions about similarity and that is natural when you use a common name or letter.
III LLC can of natural causes and under the present situation not launch the site when MTG tries to transfer the domain through WIPO from III LLC to MTG.
Mr. Öhman has sold the site and selling and buying sites are not unusual. The MTG "story" of what happened has now been proved to be totally wrong.
The sole purpose why MTG acts through WIPO seems to be that they want to have a popular ".TV" domain for free.
In respect of the presented facts WIPO has to reject the Complainant’s complaint and decide in the Respondent’s favour.
C. Complainant’s comments to the response
The response submitted by the Respondent suggests that the Complainant has excluded relevant information from the WIPO Arbitration and Mediation Center. The Respondent even implies that the Complaint has been brought forward in bad faith for the reason that the Complainant "want to have a popular .tv domain for free".
These are indeed serious allegations that we would like to comment upon.
First we would like to point out that the requirement of the Uniform Dispute Resolution Procedure Policy paragraph 4(a)(i) is that the Complainant "has rights" (trademark). The paragraph does not state that these rights must be exclusive. This view has also been taken by the Administrative Panel in previous cases (such as D2000-0993 smartdesign.com and D2000-1300 fastnet.com).
Thus, the recordal of a disclaimer in certain registrations is not contrary to paragraph 4(a)(i).
The harmonization of the trademark laws within the European Union has come far and it is no secret that the national legislation in the different member states is similar or that one of the requirements for trademark registration is that the trademark is distinctive. Also, many countries use a system with disclaimer for unregistrable parts of a mark.
However, the Respondent is quite wrong to assume that the existence of these rules per se gives the same certainty as the recordal of a disclaimer in the different national register. The mere fact that the legislation, in general, does not confer rights to descriptive words, does not say anything about the specific trademarks in question. It is quite common that different countries have different practices. A word could be considered descriptive in one country but distinctive in another country.
Furthermore, there is no formal requirement to submit examples of national trademark legislation. Nor is it desired, I assume. Thus, there is a natural reason for excluding that information in the Complaint.
It is a fact that MTG has had trademark registrations containing the word "everyday" since 1994, i .e. before the domain name <everyday.tv> was first registered. We have also substantiated that the Internet portal Everyday.com is being widely used and that it has at least one million registered users in Europe. Thus, MTG has a bona fide basis for filing a Complaint.
MTG is definitely not trying to obtain a domain name for free. It is also quite clear that the registration fee for a .tv domain is less than the fee for using the WIPO Arbitration and Mediation Center. It was indeed unfortunate that the domain name <everyday.tv> was not registered on behalf of MTG before the press release. However, the plans for the digital TV platform had been considered within the company long before September 1, 2000 or the press relase.
We would like to emphasize that a domain name registration is not a trademark right. As the Respondent does not seem to hold any trademark rights to the domain name, we fail to see how MTG is in bad faith. The holder of a domain name does not obtain any exclusive trademark rights to the domain name. Consequently, a domain name per se can not prevent others from using their trademark rights. In this context we would like to underline that the domain name registrations that MTG holds do not stop people to act on the free market, as suggested. However, the trademark rights MTG holds forbids others from using a confusingly similar trademark for certain goods within the relevant territories and possibly also in other countries.
As shown in annex 12 and 1 of the Complaint, we received information from dotTV that the domain name was transferred October 24, 2000 i.e. after our letter to Mr. Mattias Öhman. We had no information of any email correspondence between Mr. Stefan Häge and dotTV.
The Respondent did not, as stated in his response, inform us on November 3, 2000 that he would in short time respond to our letter. After repeated telephone calls and messages to the Respondent on November 6-7, 2000, we were informed on November 7, 2000, that he could not give us a response. At this time we informed the Respondent that we probably would take proper actions. Already in our letter to Mr. Mattias Öhman we had specifically mentioned the ICANN Domain Name Dispute Resoulution Policy.
Our Complaint can not have come as a surprise for the Respondent, nor was the Complaint uncalled for.
As mentioned in the Complaint the Complainant is using the trademark in many European countries. Using links is one of the fundamentals of the Internet and the Complainant has – for example - chosen to use a link from everyday.se to guide its customers to <everyday.com>. It is not very strange.
The fact that the MTG subsidiary Everyday Webguide has made some organizational changes and limited the number of employees has no effect on the current and future use of the trademark Everyday.com. MTG has clearly stated that its ambitions with the portal Everyday.com have not weakened. Furthermore, the everyday.tv project is another subsidiary’s project, namely Viasat Broadcasting, as indicated in the pressrelease. Viasat Broadcasting includes 18 TV-channels in 8 different countries. The company has been active in the debate regarding the digital tv-opportunity for several years.
The Internet portal Everyday.com has in less than a year expanded its business to 12 European countries. It is likely that the expansion will proceed to other territories as well. MTG’s sister companies have business interests in North-, Central- and South America. The ccTLD.tv is, by its nature, natural to use all over the world. For many Internet users it would seem to be a gtld. It is therefore important that MTG can use this domain as well, especially in order to avoid confusion amongst Everyday.com’s one million members.
MTG does not, as implied by the Respondent, sell any "everyday domains" and MTG has no intentions to do so in the future.
We note that the Respondent is aware of the use in Sweden. We also note that the Respondent considers it understandable that people from the Swedish market have found the domain name because MTG uses the name (see page 13 in the Response).
Apparently the Agreement between Mr. Stefan Häge and Mr. Mattias Öhman is dated September 11, 2000 and the request for a transfer was emailed to dot TV on September 12, 2000. However, the press release regarding the launch of <everyday.tv> was dated September 6, 2000 (annex 7 to the Complaint).
Both Agreements, submitted by the Respondent contains certain guarantees. We do not know what kind of guarantees, but it is reasonable to assume that they concern potential conflicts with prior trademark rights, suggesting that this issue had been under consideration.
We also note that the Agreement between Mr. Stefan Häge and Mr. Mattias Öhman states in paragraph 6 that the vendor shall take actions to register Mr. Stefan Häge as the owner. The letter to Mr. Stefan Häge from Mr. Mattias Öhman (in annex 20 of the Response) states the contrary, namely that Mr. Stefan Häge had promised to take care of the registration procedure.
It is a fact that on October 19, 2000 the domain name was not in use. Instead it appeared to be for sale (annex 10 of the Complaint). Furthermore, it seems clear that on November 6, 2000 the Respondent did not use the domain name (for further details see Complaint and annex 14 of the Complaint).
We note that the Respondent has not claimed any prior trademark rights to the word EVERYDAY.
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 figurative trademark EVERYDAY and other versions including the word EVERYDAY in several countries.
The Respondent has alleged that the Complainant’s trademark registrations of the mark EVERYDAY do not give them the exclusive right in the word EVERYDAY since this is a not distinctive word.
The Complainant’s trademark registrations are figurative marks which contain the word EVERYDAY. Some of the trademark registrations contain a disclaimer for the word EVERYDAY.
The Panelist is of the opinion that the word EVERYDAY is suggestive and therefore cannot be considered as descriptive in relation to all the goods and services in the trademark registrations. Further, according to Swedish case law, the Swedish Patent Office cites trademark registrations as bars to registration to confusingly similar trademark applications even though such trademark registrations contain a disclaimer. The Patent Office also pays attention to such trademark registrations in the judgement whether a trademark shall be considered as confusingly similar or not to another persons trademark. Lastly, the Panelist would like to emphasize that not all of the Complainant’s trademark registrations contain a disclaimer for the word EVERYDAY which means that some of the registrations grant protection to the word element.
Accordingly, the Panelist finds that the domain name at issue is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Respondent has not proven that he has any prior rights or legitimate interests in the domain name.
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, namely
(i) 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; or
(ii) you have required the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The domain name at issue was registered on September 1, 2000, by Mr. Mattias Öhman. The Respondent has stated that he acquired the domain name on September 11, 2000, from Mr. Mattias Öhman on behalf of an American client, International Internet Investment LLC ("III LLC"). The Respondent further states that on September 12, 2000, he transferred the domain name to III LLC but that his client has not yet been recorded as registrant of the domain name. The Panelist is therefore of the opinion that the Respondent acquired the domain name primarily for the purpose of selling it to his client.
The Respondent states that III LLC has no intention or interest to launch or work in the countries where Complainant is active and that the domain everyday.tv is heading for the North-American market. The Respondent has also with reference to a secrecy agreement not revealed any further business related information about the transfer of the domain name or his client. The Panelist is of the opinion that the geographical area where III LLC is supposed to be active is of no relevance since the Internet is accessible globally.
The Complainant has several trademark registrations in class 38 which cover a very broad range of Internet related services. With regard to this fact and the trade name of the Respondent’s client, i.e. International Internet Investment LLC, it can be anticipated that III LLC will be a competitor of the Complainant.
In light of these circumstances, the Panel concludes that the domain name was registered and is being used in bad faith.
Consequently, all the prerequisites for cancellation or transfer of the domain name according to Paragraph 4 (i) of the Rules are fulfilled.
The Complainant has requested transfer of the domain name.
In view of the above circumstances and facts the Panel decides, that the domain name registered by Respondent is identical or confusingly similar to the trademark and service mark in which the Complainant has rights, and that the Respondent has no rights or legitimate interests in respect of the domain name, and that 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 <everyday.tv> be transferred to the Complainant.