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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kværner ASA v. Christian Sampson
Case No. D2002-0173
1. The Parties
1.1. This Complaint was filed by Kværner ASA, a public limited company of Oslo, Norway ("Complainant").
1.2. The respondent is Christian Sampson, an individual of Santa Monica, CA 90404, United States of America ("Respondent").
2. The Domain Name and Registrar
2.1. The domain name the subject of this Complaint is <kværner.com> ("domain name"), the ACE encoding for which is ‘bq--abvxnztsnzsxe.com’.
2.2. The registrar of the domain name is eNom, Inc, of Redmond, WA 98052, United States of America ("Registrar").
3. Procedural History
Issuance of Complaint
3.1. On February 20, 2002, the Complainant by email and by courier submitted to the WIPO Arbitration and Mediation Center ("the Center") a Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), both of which were implemented by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999. The copy of the Complaint submitted by email was received on February 20, 2002, and the copy of the Complaint submitted by courier was received on February 26, 2002. An Acknowledgement of Receipt of Complaint was sent by the Center to the Complainant by email on March 1, 2002.
Confirmation of Registration Details
3.2. A Request for Registrar Verification was dispatched by the Center to the Registrar by email on March 1, 2002. By email to the Center on March 7, 2002, the Registrar confirmed that it had received a copy of the Complaint from the Complainant; confirmed that it was the registrar of the domain name the subject of this Complaint; confirmed that the current registrant of the domain name is the Respondent, and provided a postal contact address for the Respondent; confirmed that the Policy applies to the domain name; informed that the current status of the domain name is "lock"; and stated that the service agreement between it and the registrant is in the English language.
Notification to Respondent
3.3. On March 26, 2002, having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, and that payment of the filing fee had been properly made, the Center issued to the Respondent a Notification of Complaint and Commencement of Administrative Proceeding.
3.4. This Administrative Panel finds that the Center has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent".
Filing of Response
3.5. By email received on April 15, 2002, and by courier received on April 19, 2002, the Respondent sent to the Center a Response.
Constitution of Administrative Panel
3.6. In accordance with the request in the Response, the Center proceeded to appoint a three-member panel, comprising Ms. Diane Cabell, Mr. Knud Wallberg, and Dr. Andrew Christie. All three Panelists submitted a Statement of Acceptance and Declaration of Impartiality and Independence. On June 3, 2002, the Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date, which informed of the identity of the Panelists and stated that absent exceptional circumstances a decision would be provided by this Administrative Panel by June 17, 2002. The case before this Administrative Panel was conducted in the English language, this being the language of the registration agreement applicable to the domain name in issue.
Compliance with the formalities of the Policy and the Rules
3.7. Having reviewed the Case File in this matter, this Administrative Panel concurs with the assessment by the Center that the Complaint complies with the formal requirements of the Policy and Rules.
Extension of Time for Providing a Decision
3.8. As a result of a delay in transmission of the case file to one of the Panelists, this Administrative Panel extended the time for providing a decision to June 25, 2002.
4. Factual Background to this Complaint
Complainant’s Activities and Trademarks
4.1. The Complainant asserted, and generally provided evidence in support of, the following facts. Unless otherwise specified, this Administrative Panel finds these facts established. The Complainant is a Norwegian registered business, but has a London, UK-based international headquarters. It has annual revenue of approximately USD 6 billion, with some 35,000 permanent staff located in almost 35 countries throughout Europe, Asia and the Americas. The Complainant’s activities are organized in two core business areas: Engineering and Construction, and Oil & Gas. Other current activities include shipbuilding and pulping equipment.
4.2. The Complainant has fourteen registered trademarks, all of which are variants of the two main marks "KVÆRNER" and "KVAERNER" (Norwegian reg. no.162770 and 162771). These two marks are registered in Norway in classes 1, 7 and 16 for goods, and in classes 36, 37, 39, 40 and 42 for services. Class 42 includes, among other things, computer-programming. Outside of Norway, both word marks and device marks are registered and applied for registration in more than 60 countries all over the world. Some of the national and international registrations are the word marks "Kværner LC 5 Engine" (no 173050), "Kværner LC 10 Engine" (no 173051), "Kværner LC 15 Engine" (no 173052), and "Kværner LC 20 Engine" (no 173053) for class 7, "KVÆRNER innovation WHITBREAD TEAM" for classes 9, 12 and 22, "KVÆRNER ENGINEERING" for classes 6, 7, 11, 19, 37, 40 and 42 and KVÆRNER GROUP (cn 1055294) for classes 6, 7, 9, 11 and 42. Copies of registration records and class detail listings are enclosed as Annex 3 to the Complaint.
4.3. The Complainant has for several decades successfully been using its trademarks primarily in the areas of industrial technology. These trademarks are widely known and have a substantial reputation.
4.4. The Respondent asserted, and generally provided evidence in support of the following facts. Unless otherwise specified, this Administrative Panel finds these facts established. The Respondent is an Internet entrepreneur and the owner of a large number of topical web sites ranging from online magazines to search engines. The revenue from the Respondent’s Internet business comes from advertisements and commissions on sales. Some examples of the Respondent’s web sites are: http://agriculturemagazine.com, http://broadbandmagazine.com, http://eyemovies.com, http://mobilephonebatteries.com, http://mobilesurf.com, http://naturefilm.com, http://oilandgasmagazine.com, http://ontrail.com, http://preregisterdomains.com, http://smartphonegaming.com, http://smartphonemagazine.com, http://softwaremagazine.com, http://techstockmagazine.com, http://top10city.com, http://urlcrawler.com, http://wildlifemagazine.com, http://wirelessorganizers.com.
4.5. The Respondent registered the domain name <kværner.com> on February 26, 2001, together with several other generic multilingual domain names. Because the domain name is part of the Verisign multilingual test-bed, the Respondent has not yet been able to use the domain name.
4.6. On January 14, 2002, the Complainant’s law firm contacted the Respondent informing him of the Complainant’s trademarks, alleging that his registration of the domain name constituted infringement of those trademarks, and requesting that he transfer the domain name to the Complainant. By email sent on the same day, the Respondent stated to the Complainant that the domain name is a generic domain name to which the Complainant does not have rights, that he would do his best to ensure that it is not used in a manner that conflicts with the Complainant’s trademarks, and that he would defend any legal action brought by the Complainant in relation to the domain name. Between January 17, 2002, and February 4, 2002, there were a number of further email exchanges between the parties. These exchanges essentially repeated the points made in each party’s original communication.
5. Parties’ Contentions
5.1. The Complainant contends that each of the three elements specified in Paragraph 4(a) of the Policy are applicable to the domain name the subject of this dispute.
5.2. In relation to element (i) of Paragraph 4(a) of the Policy, the Complainant contends that the domain name is either identical or confusingly similar to its trademarks.
5.3. In relation to element (ii) of Paragraph 4(a) of the Policy, the Complaint contends that it has not licensed or otherwise permitted the Respondent to use its trademarks or to apply for any domain name incorporating any such marks, and that the registration and use of the domain name constitutes an infringement of the intellectual property rights of the Complainant, and with that a violation of the Norwegian Marketing Act (of June 16, 1972 no. 47), the Norwegian Trademarks Act (of March 3, 1961 no. 4) and the Norwegian Company Names Act (of June 21, 1985 no. 79). In addition, although the Respondent states in his January 17, 2002, e-mail to the Complainant that the domain name <kværner.com> "eventually will be developed, used for email services, or pointed to another web site", the Respondent does not present any clear evidence that this actually will happen. It cannot be sufficient to establish rights/legitimate interest that it is possible to use a domain name for certain activities in the future. Further, the Respondent has not registered or established by use intellectual property rights to the domain name.
5.4. In relation to element (iii) of Paragraph 4(a) of the Policy, the Complainant contends as follows. Although the Respondent emphasizes the importance of the Danish meaning of "kværner", the Respondent does not have any connection to Denmark or to other Scandinavian countries which could have explained his interest in this word. As the Respondent does not have any right or legitimate interest to the domain name, and the domain name refers to a well-known company (the Complainant), it appears that the Respondent’s motivation for registering the domain name was to prevent the Complainant from using its trademark for its businesses.
5.5. The Respondent contends that only the first element specified in Paragraph 4(a) of the Policy is applicable to the domain name the subject of this dispute.
5.6. In relation to element (i) of Paragraph 4(a) of the Policy, the Respondent agrees that the domain name is identical to the Complainant’s trademarks.
5.7. In relation to element (ii) of Paragraph 4(a) of the Policy, the Respondent contends as follows. The domain name consists of a single word that means "grinding" in Danish. The word is also a Scandinavian surname, the equivalent of "Miller". The domain name thus consists of a generic word. The Complainant’s trademarks in construction and engineering do not prevent other people from using the word "kværner" in other contexts. Most of the Respondent’s web sites make use of generic domain names as a way to increase traffic and revenues. For several months prior to the dispute the Respondent has been operating a website using the domain name <kvaerner.net>. When it becomes possible to use the domain name, it will be used to advertise grinders by pointing the domain name to this website. This represents demonstrable preparations by him to use the domain name the subject of this Complaint, as defined in Paragraph 4(c)(i) of the Policy. Also, as a result of such use, the Respondent has "established common rights" to the word ‘kværner’ as defined in Paragraph 4(c)(ii) of the Policy.
5.8. In relation to element (iii) of Paragraph 4(a) of the Policy, the Respondent contends as follows. He has not made any offer to sell the domain name. The Complainant already has several domain names that correspond to its marks. No evidence has been presented that would suggest that the Respondent has registered the domain name primarily to disrupt the business of a competitor. No evidence has been presented of any use of the domain name by the Respondent that would attract or mislead consumers as described in Paragraph 4(b)(iv) of the Policy. The Respondent registered the disputed domain name because it is a one word generic domain name that refers to grinders. The Respondent has presented valid reasons for registering the domain name and is already using a similar domain name to advertise grinding products. That the Respondent registered the domain name in good faith is also supported by the fact that it was purchased together with several other generic multilingual domain names only seconds before and after the disputed domain name. It is not true, as the Complainant claims, that the Respondent’s registration of the domain name violates trademark laws. Paragraph 4(a)(iii) of the Policy specifies that the Complainant has to prove both bad faith registration and bad faith use of the domain name by the Respondent. Because of the multilingual test-bed, it has not been possible for the Respondent to point the domain name to an active IP address. The inability of the Respondent to activate the domain name for this reason can hardly be compared to a case where a registrant holds a regular domain name for several years without use. Therefore, it is not possible for the Complainant to show that he is using the domain name in bad faith, since any use of the domain name is currently impossible.
5.9. Finally, the Respondent contends that the Complainant has engaged in reverse domain name hijacking. The Complainant approached the Respondent with an agenda of taking over the domain name and appears to have been trying to mislead the Respondent into handing over the domain name. When that failed, the Complainant submitted a bad faith Complaint intended to (a) prevent the Respondent from providing more evidence as to his rights before a complaint could be filed, and (b) prevent the Respondent from having a chance to use the domain name upon completion of the multilingual test-bed. The Respondent feels abused and finds it unfair that he has to spend time and money to defend himself.
6. Discussion and Findings
(a) Domain Name Identical or Confusingly Similar to Complainant’s Mark
6.1. In relation to the domain name <kværner.com>, the relevant part is "kværner". This is identical to at least one of the Complainant’s trademarks, namely KVÆRNER. Accordingly, this Administrative Panel finds that the Complainant has made out its case under Paragraph 4(a)(i) of the Policy.
(b) Respondent’s Rights or Legitimate Interests in the Domain Names
6.2. The Respondent asserts that he was for some months prior to this dispute operating a website at <http://www.kvaerner.net> about grinders (i.e. grinding equipment). However, the only evidence in support of this assertion is a listing of account administration information from the Respondent’s server host, provided by the Respondent as Appendix 2 to the Response. At best this information establishes that the domain name <kvaerner.net> was added to the host’s servers on September 24, 2001; it does not prove anything in relation to how (if at all) that domain name has been used by the Respondent. In the absence of any evidence supporting the Respondent’s claimed use of the domain name <kvaerner.net>, the majority of this Panel make no finding in relation to it.
6.3. Further, this Administrative Panel considers fanciful the Respondent’s assertion of a right or legitimate interest in this domain name by virtue of it being generic. In Danish, "a grinder" is "en kværn". The plural form of this noun is "kværne". In Danish, the verb "to grind" is "at kværne". The first person, present tense conjugation of that verb is "kværner" (eg. the phrase "I grind" is "Jeg kværner" in Danish). The Respondent is not, therefore, strictly correct in asserting that "kværner" is a generic word in Danish meaning "grinding". In any event, this Panel does not find plausible the Respondent’s assertion that he registered this domain name for the purpose of using it in relation to a website about grinders. It is unlikely that websurfers would look for information on grinders using the domain name <kværner.com>, because "kværner" is a verb not a noun.
6.4. Finally, this Panel does not accept the Respondent’s contention that he has a right or legitimate interest in the domain name by virtue of the fact that "kværner" is a Scandinavian surname, the equivalent of "Miller". The Panel accepts that "kværner" is a Scandinavian surname (although it makes no finding about how common a surname it is). However, this fact on its own does not give the Respondent a right or legitimate interest in the domain name. "Kværner" is not the Respondent’s surname, and the Respondent has not demonstrated that he has acquired a trademark or service mark right to the name, so Paragraph 4(c)(ii) of the Policy is not applicable. Indeed, "kværner" is the trade mark of another person (namely, the Complainant). In those circumstances, the fact that the domain name may also be the surname of some third parties does not of itself give to the Respondent any right or legitimate interest to it. Accordingly, the Panel concludes that the Respondent has no right or legitimate interest in the domain name.
(c) Domain Names Registered and Used in Bad Faith
6.5. It is true that the Respondent has not engaged in any positive action in relation to the domain name since registering it. It is, however, now clearly established that it is possible for a Complainant to succeed under Paragraph 4(a)(iii) of the Policy even absent any positive action by the Respondent; it all depends on the circumstances of the particular case in issue. This possibility was first recognized in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and has been accepted in numerous cases under the Policy since then.
6.6. Although the matter is not without some doubt, the majority of this Panel has concluded that, taking into account all the circumstances of the case, the Complainant has discharged its burden in relation to Paragraph 4(a)(iii) of the Policy. The Complainant’s trademark KVÆRNER is widely known and has a substantial reputation. The domain name is identical to this trademark. The Respondent, who admits he was raised in Norway, very likely would have been aware of the Complainant’s trademarks prior to his registration of the domain name. The domain name is not a generic word. The full Panel does not find plausible the Respondent’s assertion that his intention in registering the domain name is to use it in relation to a website concerning grinders. In light of these circumstances, this Panel finds that, on the balance of probabilities, the Complainant has made out its case under Paragraph 4(a)(iii) of the Policy.
6.7 I, Diane Cabell, am not persuaded that the Respondent actually intends to use the domain name as he claims. He relies on his corresponding domain registration, <kvaerner.net>, as evidence of his right and legitimate interest. However, the look and feel of this site is unlike his many other sites and gives the appearance of a hastily created page full of links to one single independent vendor. There is no evidence that the Respondent has any business relationship with that vendor or is receiving any revenue from this use of the site. He also contends that a vanity email service is one of his possible business models for the disputed domain, however he has no prior history offering such services, so again, there is the appearance of retroactive justification, rather than prior good faith intent. I find that the registration was in bad faith.
6.8 Nevertheless, I interpret Section 4(a)(iii) strictly as to the requirement of both bad faith registration and bad faith use. Although there has been no active use of the disputed domain name as yet, the Respondent has specifically identified his intended uses of the domain. While I believe such uses would certainly qualify as legitimate uses, I am not persuaded by the evidence he supplies that these were his actual intentions, therefore I find sufficient justification to decide in favor of the Complainant.
7.1. This Administrative Panel decides that the Complainant has proven each of the three elements in Paragraph 4(a) of the Policy in relation to the domain name the subject of this Complaint.
7.2. Pursuant to Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, and in accordance with the request of the Complainant contained in the Complaint, this Administrative Panel requires that the Registrar, eNom, Inc., transfer to the Complainant, Kværner ASA, the domain name <kværner.com> (the ACE encoding for which is bq--abvxnztsnzsxe.com).
Andrew F. Christie
Dated: June 26, 2002