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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Svenska Spel v. Niklas Bråthén
Case No. D2001-1388
1. The Parties
The Complainant is AB Svenska Spel, a Swedish limited company, with its principal place of business at 621 80 Visby, Sweden.
The Respondent is Niklas Bråthén, an individual resident of Uppsala, Sweden.
2. The Domain Names and Registrar
The domain names at issue are <svenskaspel.com> and <svenskaspel.org>, which are registered with Network Solutions, Inc. ("the Registrar"), Herndon, Virginia, United States of America.
3. Procedural History
A Complaint was submitted electronically to the World Intellectual Property Organization, Arbitration and Mediation Center, on November 22, 2001, and in hardcopy on November 26, 2001.
On November 26, 2001, 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 Domain Name Resolution Policy, Paragraph 4(b);
(2) confirm that the domain names at issue are registered with the Registrar;
(3) confirm that the Respondent is the current registrant of the domain names;
(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 names, the technical contact, the administrative contact and the billing contact;
(5) confirm that the Uniform Domain Name Dispute Resolution Policy applies to the domain names;
(6) indicate the current status of the domain names.
On November 29, 2001, the Registrar confirmed that a copy of the Complaint was sent to the Registrar by the Complainant, the domain names <svenskaspel.com> and <svenskaspel.org> were 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 names were in "Active" status.
Effective January 1, 2000, the Registrar adopted 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 names 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 Name 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 30, 2001, 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 20, 2001, by which the Respondent could file a Response to the Complaint The Commencement Notification was transmitted to the Respondent 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 courier and facsimile.
On January 4, 2002, having received no Response from the Respondent the WIPO Center transmitted to the parties a Notification of Respondent Default.
On January 10, 2002, the WIPO Center withdrew the Notification of Respondent Default and set a new deadline for filing a Response. The new due date was set to January 25, 2002. The WIPO Center withdrew the Notification of Respondent Default since the Respondent’s Representative contacted the WIPO Center prior to the Response due date. The Representative requested a copy of the Complaint filed in the matter. As the message from the Representative did not contain the case number it did not reach the Case Manager before the Notification of Respondent Default was issued. The Respondent’s Representative stated in his message that his client had only received the transmittal cover sheet of the Complaint. With respect to the fact that the hard copy of the Complaint sent to the Respondent was returned to the WIPO Center due to a incorrect address to the Respondent the WIPO Center decided to extend the deadline for filing a Response until January 25, 2002.
With respect to the fact that the Complainant did not object to the extension of the deadline and with respect to the errors in the delivery of the Complaint to the Respondent the Panelist is of the opinion that the withdrawal of the Notification of Respondent Default and the extension of the deadline for filing a Response were correct.
On January 24, 2002, the Respondent submitted his Response to the WIPO Center.
On February 26, 2002, 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 Trademark rights
The Complainant is the holder of a Swedish Trademark application for "SVENSKA SPEL". The Trademark application was filed on July 18, 2000.
5. Parties’ Contentions
The Complainant has in its Complaint stated the following:
"The domain names <svenskaspel.com> and <svenskaspel.org> are identical with the Trademark application for SVENSKA SPEL in classes 9, 16, 28, 35, 36, 41 and 42.
SVENSKA SPEL is as also considered to be a trademark right arisen from use. The mark has been in use since the company was established in the beginning of 1997, see Annex 7 to the Complaint. As the leading lottery in Sweden, with 6 900 retailers and a customer stock equal to 80% of the population, the trademark SVENSKA SPEL must also be considered to be a well known trademark. In a market research carried out in spring 2000 and 2001, the Complaint was the amusement game company, which was mentioned first (top of mind) by most people in Sweden when talking about amusement games. Top of mind was 48% and total knowledge about the Complaint was 96%, year 2000, top of mind was 33% and the total knowledge of the company was 85%, see Annex 8 to the Complaint.
AB Svenska Spel was established in January 1997, when the Swedish Parliament decided to merge the two state lotteries because of the growing competition on the Swedish lottery market. "Svenska Spel is the leading lottery in Sweden with a turnover in 1999, of SEK 13.3 billion and a market share of 43 per cent." – Key Facts, Svenska Spel 2000 and the Annual Report 2000, Annex 9. The company is owned by the Swedish Parliament and is sorted under the Finance department. The Complaint’s products are found at 6 700 agents and at more than 200 restaurants through out Sweden. The Complaint is one of biggest sponsor of culture and sport activities in Sweden. See further, Annex 10.
The Complaint has no relationship with the Respondent. The Complaint has not given the current holder license or any permission to register the trademark SVENSKA SPEL as a domain name.
The Respondent has no legitimate right to the domain names. The Respondent has neither a trademark nor a trade name corresponding to the domain names. The Respondent has not been commonly known by the name in Sweden and in Latvia or somewhere else and has not made any demonstrable preparations to use the domain names.
The Complaint has written four letters to the Respondents’ Swedish address dated: April 17, 2001, April 24, 2001, September 21 2001, September 26, 2001, and one letter to the Latvian address dated March 30, 2001, informing the Respondent of the Complaints legitimate right to the domain names and asking the Respondent to voluntarily transfer the domain names to the Complaint.
The Respondent has responded (the letters sent to the Swedish address) that he has no intention to voluntarily transfer the domain name voluntarily, Annex 11.
Bad faith is stated on the following grounds: (1) knowledge of the trademark, (2) the Respondent try to financially gain by creating a likelihood of confusion with the Complainant's mark, (3) registration of the domain name with the purpose of selling it, (4) disrupting the business of a competitor and (5) non-use.
1. Actual knowledge
Reference is made to the case Document Technologies, Inc. v. International Electronic Communications Inc., Case No. D2000-0270 where knowledge of a trademark at the time of registration suggested bad faith even if trademark was not applied at the time; but the Complainant could show sufficient use to create trademark rights.
The Respondent must have been well aware of the trademark SVENSKA SPEL when the domain names were registered. The Respondent lives or partly lives in Sweden, where the trademark is considered to be well known. The Respondent is also working in the same field of business as the Complaint, who is the biggest competitor on the market.
2. Financial gain
The Respondent has in a letter dated April 24, 2001, (Annex 11) to the Complaint stated that he aims to use the domain names for amusement games on the Internet, which is the same field of business as the Complaints’. By registering the domain names for the purpose of using them for a similar business as the Complaint, it is very likely that this will create a likelihood of confusion for consumers seeking the Complaints site.
The Respondent will in this way financially gain and ride on the back of the goodwill of the Complaints trademark.
3. Offering to sell the domain name
In the letter dated April 24, 2001, to the Complaint, the Respondent offered to sell the domain name <svenskaspel.com> for the amount 100 000 USD. Even though the Respondent in the same letter states that he aims to use the domain name, it cannot be disregarded that the Respondent actually registered the domain names with the intent to sell it to the Complaint. The Respondent knew for a fact that the Complaint would be interested to purchase the domain names since the generic top- level-domains: -.com and -.org are among the most commonly used top-level-domains for Swedish companies.
4. Disrupt the business
The domain names have still not been activated even though it is more than a year ago they were registered. In this regard it may indicate that the domain names were only registered in order to prevent the Complaint from reflecting the trademark in a corresponding domain name and to disrupt the business of the Complaint since they are competitors. In the case Telstra Corporation Ltd. v. Nuclear Marshmallows, Case No. D2000-0003 it was stated that inaction constitute bad faith for circumstances of those identified in paragraphs 4(b)(i), (ii) and (iii).
5. No Use
The Respondent has still not after more than a year (<svenskaspel.com> was registered July 17 2000, and <svenskaspel.org> was registered January 12, 2000), made use of the domain names in active sites. As was stated in Telstra Corporation Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000), that registration together with inaction can constitute bad faith as well and in another decision: Educational Testing Service v. TOEFEL, case No. D2000-0044 "the broad community of Internet users will be better served by transferring the domain name to a party with a legitimate use for it".
6. Failure to respond to request to transfer
The Respondent has refused to answer the letter that was sent to the Respondents address in Latvia regarding the domain name <svenskapel.org> dated March 30, 2001. The address is correct according to the investigation executed by the Swedish Trade Office in Latvia. This factor was considered bad faith in the case Encyclopedia Britannica v. John Zuccarini D2000-0330 (WIPO June 7, 2000), Thierry Mugler v. New York Link Case No. D2001-0713.
All these facts show that the Respondent has no legitimate right to the domain names and that the domain names were registered in bad faith."
Finally, the Complainant has requested the Administrative Panel to issue a decision by which the contested domain names <svenskaspel.com> and <svenskaspel.org> be transferred to the Complainant.
In his response, the Respondent has stated the following:
"1. Identical or similar trademark
Niklas Bråthén has been operating game systems under the name of Svensk Spelservice ("Swedish game service") since 1994. The domain name is a description of the services provided by the company Svensk Spelservice HB (916578-8796) and the web site, such as playing Swedish games on the Internet. By the time that Niklas Bråthén started using the name Svensk Spelservice, the company Svenska Spel AB did not even exist. The registration of the name on the Internet took place before Svenska Spel AB was registered as a name as well as a trademark. The company Svenska Spel was established in 1997, and the trademark Svenska Spel was registered in July 2000.
The web site "svenskaspel.se" does not provide the same service as <svenskaspel.org> and <svenskaspel.com> are intended to provide and does not apply to the same purpose. "Svenskaspel.se" is for the most part an information site about the services provided by Svenska Spel AB and only a limited amount of gaming services is accessible on the web site. None of the games provided on the site operated by Complainant are exclusively found on the Internet, but it’s the same supply of gaming services as found with the retailers that represent Svenska Spel AB on a regular basis.
The games that Niklas Bråthén, Svensk Spelservice and Baltic Gaming planned to provide are of another character. They are exclusively operated on the Internet, under another legal framework and with another customer base. The playing of the games is operated on the web-site and retailers do not provide it.
2. Legitimate right
The Respondent has been operating under the name Svensk Spelservice since 1994, and has thus obtained a legitimate purpose of using the names <svenskaspel.com> and <svenskaspel.org>. By the time that Niklas Bråthén started using the name Svensk Spelservice, the company Svenska Spel AB, as mentioned above, did not even exist. The trade name that Niklas Bråthén uses is similar to the name of the web site. Another important remark is that the name "Svenska Spel AB" translated to English would be "Swedish Games". That name is almost identical to the name "Swedish Game Service", which would be the correct translation of the name under which Bråthén’s organization is operating. This explains why Niklas Bråthén initially chose the names <svenskaspel.com>and <svenskaspel.org> for his web sites.
The name of the web site is also referring to the activity that will be provided by the site, that is, Swedish games not available in Sweden. Respondent is operating on an international market, which Svenska Spel AB is prevented from by its articles of association. Svenska Spel AB does not have any use for the top-domain name ".com", since it refers to companies that operate on an international and commercial market. Svenska Spel AB is not, according to its articles of association, allowed to operate outside the geographical market of Sweden. Therefor the use of the top-domain name ".org" and ".com" is unnecessary.
3. Bad faith
Knowledge of the trademark Respondent is aware of the Complainant's trademark, but refers to the fact that his registration of the domain names took place before the registration of Complainant's trademark, which is registered as late as July 2000. Knowledge of the trademark at the time of registration is not disputed.
Svenska Spel AB has argued that the only purposes for Respondent to register the above mentioned domain names is to free-ride on the goodwill of Svenska Spel AB and to gain financially from the confusion that consumers allegedly will experience. Respondent would again like to stress the fact that the services provided by Respondent differ from those provided by Complainant. The parties are also operating on different geographical markets. Svensk Spelservice was registered before Svenska Spel AB and the trademark.
Offering to sell the domain name
Respondent’s purpose in offering to sell the domain name <svenskaspel.com> is to avoid an extensive legal process due to the Complaints initiated by Complainant. Respondent is not willing to give up his legally obtained right to the domain name for less than its proper value. Respondent’s purpose of registering the domain name was not to sell it to Complainant, but to use it in his business, and he could not possibly foresee a legal proceeding. Svenska Spel AB claims that ".org" and ".com" are the most frequently used top-domain names. That is an incorrect allegation, since ".se" is the most frequently used top-domain name for Swedish businesses and ".org" is rarely used at all.
Disrupt the business
It is correct that the domain names have not yet been activated. The reason for this is not to disrupt the business run by Svenska Spel AB. In this case, inaction does not constitute bad faith since there are justifications for the delay. Niklas Bråthén was first contacted in this matter in 1999, and later in a letter, dated March 30, 2001. From that he understood that the use of the web sites could be disputed. With the thus obtained knowledge of the problems that might occur, he no longer wanted to spend the time, money and effort required to successfully run the web sites before the dispute was settled.
It is a correct remark that the domain names haven't been used since their registration. The correct date of registration, though, is on January 12, 2000, (<svenskaspel.org>) and August 9, 1998, (<svenskaspel.com>). There is, though, no time frame within which a use has to be started. There are several reasons, which cannot be referred to here, for Respondents failure to start using the web sites. There is no obligation to use the web site within a certain time period after the registration. As mentioned above, Niklas Bråthén didn’t want to spend time, money and effort on the web sites before the dispute is settled. He is withholding his legal right to the domain names and also the position that the domain names are suiting to his business.
Failure to respond to request to transfer
The remark on failure to respond is incorrect. As Attorney for Respondent I replied to the letters, dated March 30, 2001, sent by Complainant’s legal representative. In my reply I mistakenly referred to the letter as written on March 13, 2001. This date was also the reference made by Complainant’s legal representative in the following reply. This implies that Complainant’s legal representative has taken part of my reply. The reason for Svenska Spel AB’s failure to keep track on the correspondence can be explained by the fact that the legal representative has had two different persons in charge of the matter.
From the Respondent’s point of view these facts show that Respondent has a legitimate right to use the domain names, a right that does not infringe with Complainant's. Respondent is operating on an international market, which Svenska Spel AB is prevented from by its articles of association. Svenska Spel AB does not have any use for the top-domain name ".com", since it refers to companies that operate on an international and commercial market. The top-domain name ".se" adheres to Complainant's needs to a satisfying extent. The restrictions in the articles of association of Svenska Spel AB do also imply that the two parties to this case do not compete in the same branch of the market. Svenska Spel AB is exclusively operating on the Swedish market, whereas Svensk Spelservice HB, Niklas Bråthén and Baltic Gaming are operating internationally.
Another important remark is that the name "Svenska Spel AB" translated to English would be "Swedish Games". That name is almost identical to the name "Swedish Game Service", which would be the correct translation of the name under which Bråthén’s organization is operating. This explains why Niklas Bråthén initially chose the names <svenskaspel.com> and <svenskaspel.org> for his web sites."
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 lacks a trademark registration for the mark SVENSKA SPEL since the Swedish Patent Office has not yet granted registration. Without a registration, there is no presumption of validity to Complainant’s claim of exclusive rights in the mark.
However, the Complainant also asserts that it has acquired rights in the mark SVENSKA SPEL through use.
According to Swedish law an exclusive right in a trademark can be acquired without registration when the mark has been established on the market. A mark shall be considered as established on the market when it is within a significant portion of the circles of trade for which is intended, known as a symbol for the goods or services which are being made available under it.
The meaning of the mark in English is SWEDISH GAMES. The mark is thus a combination of a descriptive element and a generic element and must in the Panelist’s opinion be considered as non-distinctive. A non-distinctive mark can, however, acquire distinctiveness through use.
The Complainant has in support of its assertion that it has acquired trademark rights in the mark SVENSKA SPEL submitted a market survey, Annex 8 to the Complaint.
It is important to note that the Policy contemplate only limited evidentiary presentations by the parties. As such UDRP proceedings are inappropriate for conclusively deciding serious questions as to whether a Complainant has acquired trademark rights through use. If a Panel shall decide on such issues the evidence furnished must be very strong and convincing.
The Panelist is of the opinion that it is not obvious from the evidence filed by the Complainant that the mark SVENSKA SPEL has been established on the market or that the mark has acquired distinctiveness through use. For these reasons, the Panelist concludes that Complainant has failed to established rights in the mark SVENSKA SPEL for the purpose of satisfying Paragraph 4(a)(i) of the Policy. The Panelist therefore rejects the Complaint.
Complainant has failed, on this record, to satisfy Paragraph 4(a)(i) of the Policy. The Panel therefore denies the Complainant’s request that the domain named <svenskaspel.com> and <svenskaspel.org> be transferred from Respondent to Complainant.
Dated: March 13, 2002