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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SSAB Oxelösund AB v. Moe Mahmoodian
Case No. D2002-0949
1. The Parties
The Complainant is SSAB Oxelösund AB of Sweden, represented by Domain and Intellectual Property Consultants DIPCON AB of Sweden.
The Respondent is Moe Mahmoodian of Vienna, Austria.
2. The Domain Name and Registrar
The disputed domain name <armox.com> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 14, 2002. On October 14, 2002, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On the same day, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 18, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was November 7, 2002. The due date for Response was then extended to November 27, 2002.
The Response was eventually filed with the Center on November 25, 2002.
The Center appointed Knud Wallberg as the sole panelist in this matter on December 3, 2002. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
SSAB Oxelösund AB, the Complainant, is a member of the SSAB Svenskt Stål AB Group and is the biggest Nordic manufacturer of heavy plate. The Complainant is the world’s leading producer of quenched steels, i.e. abrasion-resistant steels and high-strength construction steels. These are used, among other things, in construction machinery, mining equipment, cranes and bridges. Ordinary plate is used within shipbuilding and general engineering. The Complainant is also world leading in the field of quenched and tempered steels, and produces known brands such as HARDOX (HARD wear plates from OXelösund), WELDOX (WELDable structural plates from OXelösund) and ARMOX (ARMour plate from OXelösund). ARMOX protection plate is traditionally used for military applications but in today's world it is also used for civil applications.
The Complainant is represented in 40 countries and thereby covers all parts of the world. The trademark ARMOX was registered in June 1997 as a Community trademark for goods in class 6. The trademark ARMOX is a well recognized product name in the world when it comes to the business of armored plate.
5. Parties’ Contentions
The Complainant was informed of the registration of the domain name in question in the beginning of 1999 and immediately contacted the Respondent via letter and fax and informed him about the trademark rights relating to the domain name. The Complainant did in its letter to the Respondent request that the domain name was to be transferred to the Complainant in consideration for any costs directly related to the domain name. The Respondent did not respond at all to the Complainant's request. The intention of the Complainant was to inform the Respondent as early as possible in order to prevent the Respondent from putting any developments' costs into a name that corresponded to a registered trademark. The Complainant was not aware of the possibilities given by the UDRP at the time.
In March 2002, the Complainant was informed of the UDRP and since the Respondent had not responded to the Complainant's warning, the Complainant once again contacted the Respondent and once again informed him about the trademark rights relating to the word ARMOX. This time the Complainant also notified the Respondent that it intended to file a Complaint in accordance with the UDRP unless the domain name was transferred to the Complainant in consideration for costs directly related to the domain name. Attached to Complaint, as Annex 4, was the letter sent by the Complainant to the Respondent on March 20, 2002. The Respondent responded to this letter and said that it was willing to sell the domain name for 70 000 USD, a price clearly exceeding any reasonable costs directly related to the domain name. The Complainant therefore decided to file a Complaint in accordance with the UDRP.
Identical and/or confusingly similar
The domain name <armox.com>is identical to the Complainant's registered trademark. When comparing the domain name with the trademark the ".com" portion must be disregarded. For reference see British Broadcasting Corporation v. Bodyline Beauty Clinic, WIPO Case No. D2001-0389.
The Respondent does not have any rights in the registered trademark ARMOX, nor is the Respondent a licensee of the Complainant. Neither has the Complainant in any way given the Respondent permission to register the trademark ARMOX as a domain name.
The Respondent must clearly have been aware of the trademark rights affiliated with the ARMOX trademark when he registered the domain name, especially in the light of the Complainant's extensive marketing and use of the trademark in question. As far as the Complainant's information about the Respondent goes, the Respondent has not been commonly known by the domain name. This also seems fairly reasonable since the trademark ARMOX is well known in relation to steel products and nothing else.
In an e-mail sent to the Complainant's representative the Respondent claims to have legitimate interest in the domain name with reference to the surnames of the business owners (Moe, Armand and a third person which apparently was not interested in the Respondent's business but still was included in the domain name under the letter X). For reference, see Annex 5 containing the e-mail from Moe Mahmoodian.
The Respondent's explanation does not just seem rather artificial from the view of the Complainant, but also completely absurd. To include an uninterested anonymous person in the Respondent's domain name is simply something a reasonable person, with intent to do bona fide business, would not do. With reference to this vague explanation from the Respondent the Complainant considers it clear that the Respondent does not have a legitimate interest in the domain name but has only made up an artificial connection for the purpose of defense in a potential dispute.
Since the Respondent is using the Complainant's trademark with the purpose of confusing the Internet users as to the web pages' source of origin, there cannot be said that the Respondent has made any attempt of a bona fide offering of goods or services.
Use and registration in bad faith
The Complainant suspects that the Respondent has registered the domain name in issue with the intention to transfer the domain name to its rightful owner in exchange for consideration in excess of the Respondent's out-of-pocket costs, directly related the domain name. This statement is supported by Annex 5, in which the Respondent through an e-mail offer to transfer the domain name in issue to the Complainant in exchange for 70 000 USD, a sum clearly exceeding any out of pocket costs.
By registering the domain name in bad faith with the intention to transfer it to the Complainant it must also be concluded that the Respondent has prevented the Complainant from reflecting its registered trademark in a corresponding domain name. Since the top level domain ".com" is the number one top level domain in the world one can be fairly certain that many Internet users have been mislead to the Respondent's web page, which thereby has disrupted the business of the Complainant.
The Complainant further suspects that the Respondent deliberately chose to use the word ARMOX in his domain name, because by using such a well known trademark he would increase his chances of being found on the Internet and gain financially from the situation. The Internet users would believe that they had found a web page belonging to the Complainant when they in fact had ended up on a web page belonging to the Respondent. Such conduct is regarded as bad faith according to paragraph 4 b (iii) in the UDRP.
With reference to the above it cannot be said that the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
The Respondent requests that the action be dismissed, because the domain was not registered in bad faith.
<armox.com> was registered on June 18, 1999, and was mainly used as a communication platform and at a later stage for software development, design and hosting services. The Respondent Mr. Mohammad Mahmoodian had just finished his Masters Degree and had partnered with two other colleagues however one of the partners canceled his partnership.
<armox.com> was based on a synthesis of the first syllable of the first names of the partners’ names: Arman Farzaneh = "ar", Mohammad (Moe) Mahmoodian = "mo". Since the third partner had canceled his partnership we placed an "x" at the end of the other two short names. Separately we had made a market research and we had found out that people would better remember the names which have the word "x" incorporated into them such as Xerox, Exxon or Merox.
At the time of the Domain registration on June 18, 1999, there was no public information about the existence of a trademark under ARMOX. There was practically no way for the Respondent to explore all application for trademarks everywhere in the world to see if there would be any possibility of a dispute with any other interest.
Contrary to what the Complainant wants the panel to believe, there is no proof to establish that the Respondent had the intention to use the domain in bad faith.
The Panel should acknowledge that the client base of <armox.com> and ARMOX steel are entirely separate. A suggestion that <armox.com> domain name would disrupt the business of a steel company is nothing but a wild exaggeration. The contrary may be more true as <armox.com> was established before ARMOX steel application was published.
<armox.com> has been active and working on its own merits as a service provider for its clients. The suggestion that <armox.com> founders had spent so much time and effort into a domain for three years just to use it to get a rent from an unknown trademark owner is nothing but absurd. The whole concept is discarded by the comparison of the date of domain registration with the publication of the application for ARMOX trademark and the activity record of <armox.com>
The Complainant claims that it had sent out "faxes" and "letters" to the Respondent before the date of September 27, 2001, informing him of a dispute over the name ARMOX.
No copies of such letters have been submitted along with the complaint to substantiate the arguments. The Respondent maintains that there have been no such "letters" and "faxes" received by them.
The first correspondence received from the Complainant was on September 27, 2001, in the form of an email from Mr. Johan Anderson, Manager Business Development of SSAB Oxelösung AB, describing their business and the interest of buying the <armox.com> domain. The text of this letter refers to no other previous correspondence.
In fact if the intention of the Respondent was to charge an undue rent from ARMOX Steel, why didn’t <armox.com> owners try to sell the domain after the claimed "letters" and "faxes" were received?
On September 27, 2001, Mr. Johan Anderson made the first initial move and had asked us to sell the domain. After the initial response of our readiness to lease the domain, we suggested we would sell it for 70 000,- US dollar. However the Complainant has taken issue on the Respondent claiming that the suggested price of 70 000,- US dollar from the Respondent indicated his bad faith.
We submit that there were 1015 days from the date of domain registration June 18, 1999, until March 27, 2002, when we replied to their second letter and quoted a price of 70 000,- US dollar. This is a quotation for 35,- US dollar/day for the work performed by the co-owners. For the software and website developers, the concept of time and effort they put into development of services and client base means out of pocket money. This is their investment, as ARMOX Steel would also factor their product development cost into their prices. We submit for comparison that websites and software developers in Austria cost around 50,- US dollar/hour.
The Complainant claims his ARMOX name was a "well known" trademark. We would like to ask from the distinguished panel what type of "well known" trademark are they talking about. How was a name that was not even registered as a trademark "well known"? Is the Complainant really of the opinion that he is talking about a well known trademark like Coca Cola? But his trademark did not even exist at the time the Domain was registered. How quickly did it become "well known"?
Looking from another angle at the issue, the Respondent made a little investigation to see how "well" the name ARMOX is indeed "known" at least among his own users and clients now in November 2002. The Respondent sent out a questionnaire to some 100 of his users and clients trying to discover how the <armox.com> users viewed the domain name <armox.com>. From the 59 replies received from the 100 users, not even one of them said they related <armox.com> to have to do anything with a steel company.
<armox.com> has never been involved in any business related to that of the Complainant however, <armox.com> is willing to consider to offer no services to competitors of ARMOX steel business in any way or form in order to draw up a sharp line between the two interests of ARMOX steel and <armox.com>.
We would further submit that even in our reply to ARMOX steel second letter dated on March 27, 2002, where we offered to sell the Domain at a price we set out a precondition of a minimum of 3 months time span to approach our clients/users and have them register as new email/website user under another domain so that the interests of the users/clients would be preserved. Had we established and run <armox.com> on a bad faith against ARMOX trademark, the argument of the need to take care of our users base would not be needed at all. This point is another proof that <armox.com> was not registered in bad faith against ARMOX steel.
6. Discussion and Findings
The Policy, in its paragraph 4 (a) provides that the Complainant must prove each of the following:
i. The Respondent’s Domain Name is identical or confusingly similar to a trade or service mark in which Complainant has rights, and
ii. The Respondent has no rights or legitimate interests in respect of the Domain Name; and
iii. The Domain Name has been registered and used in bad faith
i. Identical or Confusingly Similar
The Disputed Domain Name is substantially identical to the Complainant's trademark ARMOX.
ii. Respondent's Rights or Legitimate Interests in the Domain Name
Respondent acknowledges that it has no trademark rights to the name ARMOX.
However, Respondent asserts that the creation of the domain name was based on a synthesis of the first syllable of the first names of the partners of Respondent. The Panel finds this explanation rather fanciful, and under such circumstances a purported acronym does not in itself give Respondent any rights in the name.
Respondent has provided some material showing its use of the domain name, but in the view of the Panel, this evidence does not substantially prove that it has used the name ARMOX for commercial activities, through which use it could have obtained a protectable right or legitimate interest in the name.
The Panel thus determines that Respondent has not satisfactory shown that he has any rights or legitimate interests in the disputed domain name. See inter alia WIPO Case D2000-0471, Reuters v. Teletrust IPR Ltd., and WIPO Case D2002-0801, Alm. Brand v. Com-municate Inc.
iii. Registration and Use in Bad Faith
Paragraph 4(a)(iii) of the Policy further provides that the Complainant must prove registration and use of the domain name in bad faith. Paragraph 4(b) sets out, by way of example, the kind of evidence that may be put forward.
Complainant has the burden of demonstrating Respondent's bad faith in registering and using the disputed domain name. A finding of bad faith requires some determination as to Respondent's knowledge and intent.
Complainant has not furnished any evidence that supports its claim that the mark ARMOX was well known or even used in the country of residence of the Respondent, Austria, or elsewhere, at the time when the contested domain name was registered on June 18, 1999.
Complainant had before that date, namely on June 3, 1997, applied for registration of the trademark as Community Trademark, but the mark was not published until November 11, 1999, and was not registered until October 10, 2001. This means that even if Respondent had conducted a trademark search at the date of registration of the contested domain name, which the Panel agrees with the Complainant is a factor that must be considered in this context, he could not have found any conclusive information, that the name ARMOX was protected as trademark. See inter alia Digital Vision v. Advanced Chemill Systems, WIPO Case No. D2002-0827 and LandAmerica Financial Group v Joseph Virzi, WIPO Case No. D2002-0145.
Further, the Panel shall remark that the fact that you, when approached by someone, offers to sell a domain name is not in itself conclusive evidence of bad faith. Even though it is a factor to be considered, in the present case, this factor cannot lead to a conclusion of bad faith. See inter alia Puky GmbH v. Ignatius Agnello, WIPO Case No. D2001-1345.
It follows from the above that the Panel finds that Complainant has failed to meet its burden of proof of demonstrating that Respondent registered and is using the disputed domain name in bad faith.
For all the foregoing reasons, the Panel finds that the contested domain name is identical to Complainant's trademark; that Respondent has not shown to have any rights or legitimate interests in the domain name, but that Complainant has not been able to prove that Respondent registered and is using the domain name in bad faith.
Consequently, the Complaint is dismissed.
Dated: December 16, 2002