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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Seco Tools Aktiebolag v. P D S
Case No. D2002-0045
1. The Parties
The Complainant is Seco Tools Aktiebolag, a legal person under public law, incorporated under the laws of Sweden; address: 73782 Fagersta, Sweden.
The Respondent is – according to contact details from the Registrant’s Whois’ database – P D S, situated at Luntmakargatan 12, Stockholm, Sweden.
2. The Domain Name
The domain name at issue is <secotools.com>, registered with Network Solutions, Inc., on July 15, 1996.
3. Procedural History
A complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on January 18, 2002. Its receipt was acknowledged to the Complainant by the WIPO Center on January 23, 2002. On January 24, 2002, the WIPO Center had requested and on January 31, 2002, received a Registrar Verification. Payment of the administration fee was duly received. The Center undertook a Formal Compliance Review, verifying 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"). On February 1, 2002, a Notification of Complaint and Commencement of Administrative Proceeding was issued, followed by a Response Default Notification on February 25, 2002.
The Complainant chose to have the dispute decided by a single-member Administrative Panel. There having been no response to the complaint, the Panel was properly constituted on February 27, 2002, the formal date set for commencement of this administrative proceeding. It was founded on a Statement of Acceptance and Declaration of Impartiality and Independence dated the same day, on which also a Notification of Appointment of Administrative Panel and Projected Decision Date was properly issued, indicating as single panelist Gunnar Karnell.
WIPO Center forwarded to the Panel by courier mail the relevant documents, which were received on March 2, 2002. Pursuant to Rule 5 (b), in the absence of exceptional circumstances, the Panel is required to forward its decision by March 13, 2002.
4. Factual Background
In accordance with Paragraph 3 (b) (xiii) of the Rules, the Complainant has agreed to submit, only with respect to any challenge that may be made by the Respondent to a decision by the Administrative Panel to transfer or cancel the domain name that is the subject of its complaint, to the jurisdiction of the courts where the Respondent is located, as shown by the address given for the domain name holder in the concerned Registrar’s Whois database at the time of the submission of the complaint to the WIPO Center.
5. Parties’ Contentions
A. Complainant (short summary; and request for remedy)
1) The Respondent’s domain name <secotools.com> is confusingly similar to Complainant’s trademark SECOTOOLS, and at least confusingly similar to its trade name SECO TOOLS.
The Complainant started its activities in 1929. The brand SECO was created in 1932. Complainant now covers 8% of the world market of tools to the machine industry, making the Complainant number 4 in the world, number 2 in Europe and number 2 in Sweden, with market shares in the latter of 15% and 30% respectively. It delivers each year millions of tools under it trademark SECOTOOLS and its trade name SECO TOOLS to the machining industries around the world. Consolidated invoiced sales during the first nine months of 2001 amounted to SEK 3,214 billion. SECO TOOLS is its registered trade name since December 11, 1973 (Complainant’s corporate registration number relating to the trade name SECO TOOLS AKTIEBOLAG is 556071-1060; at that, the word AKTIEBOLAG only refers to the legal character of the entity, i.e. its incorporation). An application for registration of the trademark SECOTOOLS was made on February 15, 2001, and a favourable preliminary decision was issued on January 11, 2002. SECOTOOLS is, were it not yet to be formally registered, anyhow protected as an established trademark according to Article 2 of the Swedish Trademark Act. Article 3, second paragraph, of the Act also renders protection against unauthorised use of the trade name. Referring to Swedish law – the law applicable to the parties, both being located in Sweden – Complainant claims that its rights, both to the trade name and its established trademark, render foundation to the complaint.
2) The Respondent has no rights or legitimate interest in the domain name <secotools.com>. The domain name, incorporating the word "secotools", has been registered without any authorisation from the Complainant.
Before any notice was communicated to the Respondent, there has been no evidence of any use or preparation to use the domain name or any corresponding name in connection with a bona fide offering of goods or services. The web site to which the domain name leads is "under construction". However, there is no entity in charge of constructing the web site secotools.com by the name of P D S. The Respondent is a known Swedish "cyber squatter", known under the trade name P D S/PDS AB. It has registered a great number of domain names containing widely known trademarks in Sweden and the Nordic countries. It does not provide accurate information concerning its whereabouts and repeated attempts to make contact with the Respondent have all failed.
3) The Respondent has registered the domain name <secotools.com> and uses it in bad faith.
The Respondent attempts to make commercial gain from the registration of the domain name. A list provided by the VeriSign Whois contains a substantial number of domain names for P D S reflecting trade marks or trade names, known to wide segments of the public, to which the Respondent cannot claim any rights. The Respondent has previously been the subject to procedures similar to the present one, where its behaviour has been considered to be in breach of the Service Agreement with the Registrar according to the Uniform Policy. The present registration is detrimental to the business of the Complainant. It has occurred for the purpose of preventing the trademark owner from reflecting the mark in a corresponding domain name, in order also to disrupt the business of the Complainant.
4) The Complainant has requested, in accordance with Paragraph 4 i. of the Uniform Policy, that the Administrative Panel transfer the domain name <secotools.com> to the Complainant.
There has been no response from the Respondent.
6. Discussion and Findings
On the basis of the Complainant’s submissions and evidence introduced by the Complainant, and in particular with regard to the content of the relevant provisions of the Uniform Policy (paragraph 4. a. to c.), the Administrative Panel considers that the case does not deserve any lengthy arguments on its part.
A. The domain name <secotools.com> is similar to Complainant’s established trade mark SECOTOOLS, protected under Swedish law. The added gTLD .com does not affect this assertion. Given this, there is no reason to discuss here the issue raised by the Complainant about a possible recognition of rights related to its trade name. The public to which the trademark SECOTOOLS is directed will clearly be confused to believe that the domain name refers to products and services of the Complainant or to someone authorised by the Complainant.
B. Evidence provided by the Complainant shows that the Respondent has no rights, nor any legitimate interest, in respect of its domain name. Any use by the Respondent of the trademark would require permission by the Complainant. No such permission has been given and it is not a legitimate interest worthy of respect to be allowed to register a domain name "on expectation" that permission may one day for consideration or without be given to activate a "sleeping" domain name of confusing similarity to an established mark such as that of the Complainant.
C. The Respondent has been shown to have registered the domain name in bad faith and to misuse the domain name system to the detriment of a legitimate trade mark right holder, the Complainant. The Respondent’s continued possession of the registration of the domain name <secotools.com>, characterised as described here above, constitutes, together with what has been made clear to the Panel about related acts by the Respondent, conclusive evidence that the name is being used in bad faith. Also, an attitude of "wait and see" or a policy of extended and current inactivity under the standard phrase "under construction" for the web site on the part of the Respondent – neither responding to the attempts by the Complainant to get in contact nor to the formal complaint now before the Panel – does not deserve legal recognition under the circumstances evidenced in the case.
D. The Administrative panel concludes that all elements mentioned in the Uniform Policy under article 4 a. (i)-(iii) are present in the case.
The Administrative Panel requires that the registration of the domain name <secotools.com> be transferred to the Complainant.
Dated: March 11, 2002