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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Skandinaviska Enskilda Banken AB v. christer@emg.se

Case No. DNU2002-0004

 

1. The Parties

The Complainant is Skandinaviska Enskilda Banken AB, c/o Cogent IPC AB, Stockholm, Sweden, represented by Joanna Lundquist of Sweden.

The Respondent is christer@emg.se, EMG Management Group AB, Gothenburg, Sweden.

 

2. The Domain Name and Registrar

The disputed domain name <seb.nu> is registered with .NU Domain Ltd.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 20, 2002. On December 24, 2002, the Center transmitted by email to .NU Domain Ltd. a request for registrar verification in connection with the domain name at issue. On the same date, .NU Domain Ltd. transmitted by email to the Center its verification response confirming that the current Billing e-mail is the one indicated as Respondent in this case and providing further contact details for Billing and Technical Contact. (The issue of the identity of Respondent is further considered below under Discussions and Findings). The Registrar also confirmed that the Uniform Domain Name Dispute Resolution Policy applies to the domain name and indicated that the Registrant has submitted in its Registration Agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the domain name at issue.

The Center verified, on January 7, 2003, 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 January 7, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 29, 2003.

The Center appointed Henry Olsson as the sole panelist in this matter on February 3, 2003. 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

The Skandinaviska Enskilda Banken AB is one of the leading banks in Sweden and has a leading role also in the other nordic countries and has a strong presence in Europe and in other parts of the world. According to the Complaint, the bank has approximately 200 branches in Sweden.

As regards Respondentґs activities nothing more is known than what is specified in the Complaint where it is stated that Respondent is a music company, EMG Management Group whose activities, according to the company register of the Swedish Patent and Registration Office, include marketing in the field of publicity, entertainment and restaurants.

In accordance with Paragraph 3(b)(xiii) of the Rules, Complainant agrees to submit, only with respect to any challenge that may be made by Respondent to a decision by the Administrative Panel to transfer or cancel the domain name at issue to the jurisdiction of the courts in Sweden.

 

5. Parties’ Contentions

A. Complainant

General

Complainant states as an introduction that the trademark SEB was registered for the first time in Sweden in 1967, under registration number 118 604 and that Complainant has, in that country, altogether seven registrations for that trademark alone and in combination with other words. Furthermore, the trademark is also registered in several European countries and also in, for instance, the United States of America. The mark "SEB" is registered for financial affairs and financial services and also for development of computer software. To support its statements in respect of the trademark registrations, Complainant has submitted various registration certificates.

Complainant adds that the trademark "SEB" has, thanks to considerable efforts and advertising campaigns, become well-known in the circle of consumers and trade; one of the most recent advertising campaigns was the participation of the sailing yacht "SEB" as a main partner in the Volvo Ocean Race. Complainant stresses that a well-known trademark provides its owner with the right to prevent any use of such a trademark or a confusingly similar denomination in connection with any products and services regardless of the actual list of products and services. In this context Complainant refers to Article 6bis of the Paris Convention for the Protection of Industrial Property and Articles 16.2 and 16.3 of the so-called TRIPS Agreement within the World Trade Organization.

Identity or Confusing Similarity

In this respect, Complainant first alleges that the domain name at issue is identical with the denomination "SEB" which has been registered by Complainant as a trademark, trade name and domain name in several countries all over the world. Also here Complainant has submitted extracts and copies of registration documents and searches for domain names.

Complainant furthermore adds that the addition of the notion ".nu" does not have any impact on the overall impression of the dominant portion of the name "SEB" as the suffix is generic and lacks distinctiveness.

Rights or Legitimate Interests

Complainant alleges that Respondent has no rights or legitimate interests in the domain name at issue, and elaborates on the basis for that allegation.

As also mentioned above, Complainant stresses that Respondent is a music company, EMG Management Group, which is registered in Gothenburg. That company is not listed in the Whois database where instead the person of registrant is indicated as "Christer"; the telephone and fax numbers of the respondent as well as the e-mail addresses as indicated in the Whois are, however, identical with that of the company. Therefore, in the view of Complainant, there can be no doubt that the company is the proper Respondent in this case.

Complainant states that it has not found that Respondent has any registered trademarks corresponding to the domain name in Sweden; Complainant refers to an earlier case (WIPO Case No. D2001-0826 Chinatrust Commercial Bank, Ltd. and Chinatrust Bank (U.S.A.) v. China Holding Company, Incorporated) where the Panel found that the Respondent in that case was not connected to the domain name at issue in the case either through its name or its business, something that proved a lack of legitimate interest.

Complainant adds that there is no connection between Complainant and Respondent and that it is also clear that no license or other authorization has been given by Complainant to use the trademark "SEB." On the basis of a reference to some other earlier cases, Complainant draws the conclusion that this, among other facts, made the Panels in those cases come to the conclusion that Respondent could not have any legitimate interests in the domain names at issue.

No other evidence has been found by Complainant to the effect that Respondent has connections to the name "SEB".

When Complainant became aware that the domain name at issue was taken, it contacted Respondent by letters sent by mail on June 19 and September 13, 2002, of which Complainant has submitted copies. An e-mail of which Complainant has submitted a copy was sent to Respondent on October 11, 2002. No response from Respondent was received and the letters were not returned, nor was the e-mail returned and consequently, according to Complainant, those letters and that e-mail must have been received by Respondent who has thus obviously refused to respond.

Complainant stresses that it is difficult to understand the choice of the domain name as Respondent has no connection to the word "SEB" nor has the word any generic meaning in Swedish.

In addition, Complainant refers to the fact that the domain name was registered on September 14, 1998, which date is subsequent to when Complainant registered the trademark "SEB" (beginning of 1967). It would, according to Complainant, have been prudent by Respondent to conduct a trademark search before registering the domain name at issue in order to make sure that the registration did not constitute a trademark infringement. In any case, Complainant stresses, it is highly unlikely that Respondent was not aware of the trademark "SEB" since SEB is one of the largest banks in Sweden and the awareness of that trademark is very high in Sweden. Complainant refers in this context to some other cases. Thus, in WIPO Case No. D2001-0067 Drexel University v. David Brouda and WIPO Case No. D2000-0050 The British Broadcasting Corporation v. Jaime Renteria, the Panels stated, in summary, that rights and legitimate interests can not be created where the user of the domain name at issue would not choose such names unless he was seeking to create the impression of association with Complainant. Also, Complainant refers, inter alia, to the WIPO Case No. D2001-1314 Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., where the Panel stated that, given the notoriety of Complainant’s mark, any use of that mark or a confusingly similar mark would likely violate Complainantґs exclusive trademark rights.

On the basis of those circumstances and of the reasoning of the Panels in earlier cases, Complainant concludes that any realistic use of the domain name results in a misrepresentation and a false and illegal association with Complainant and its goodwill resulting in passing off, breach of consumer protection legislation and trademark infringement.

Finally, in this part of the Complaint, Complainant stresses that Respondent can not be considered to be making a non-commercial or fair use of the domain name without intention for commercial gain to mislead consumers. According to Complainant, up to June 2002, the domain name at issue was pointed to "www.emg.se" where Respondentґs company presented its services.

Registration and Use in Bad Faith

As a first remark, Complainant states that SEB is one of the largest banks in Sweden with a long history in the Swedish society. As the awareness of the trademark "SEB" is substantial, it can, according to Complainant be ruled out that Respondent was not aware of the trademark.

With reference to the awareness of the trademark, Complainant has submitted a copy of a press release dated September 10, 1998, informing that the name of the new joint operations of SEB and the insurance company Trygg-Hansa would be "SEB". Thereafter articles about the name changes were found in all newspapers in Sweden and was commented upon by the local newspaper in Gothenburg, where Respondent is located, on September 14, 1998. Complainant stresses that on the very same day, Respondent registered the domain name at issue. Complainant also indicates that the top level domain ".nu" is the most commonly used in Sweden after ".com".

Complainant adds that Respondent could not, in view of the fact that Complainantґs trademark is old and registered in several countries, use the domain name without creating an impression in the minds of the public that Complainant had licensed the trademark to Respondent or given its authorization as to its use or authorized Respondent to register it or that some other kind of connection with Complainant existed. Complainant refers to the reasoning by Panels in some earlier cases and states that in fact it would be very unlikely that Respondent was unaware of the trademark "SEB" when the domain name was registered; this also must be seen in the light of the fact that Respondent is Swedish.

As regards registration in bad faith, Complainant stresses that "SEB" is not a generic word and that, therefore, Respondent should have conducted a trademark search before registering the domain name at issue. In the WIPO Case No. D2001-1384 Kate Spade, LLC v. Darmstadter Designs, the Panel concluded that if Respondent in that case had conducted a trademark search at the time it registered the domain name, Respondent would have received a notice of Complainantґs application for registration and the Panel concluded that Respondent had registered the domain at issue in bad faith. As the same situation prevails, according to Complainant, also in this case, Respondent has registered the domain name at issue in bad faith.

In elaborating on Respondentґs bad faith, Complainant mentions that at the time Complainant contacted Respondent, the domain name at issue was pointed at "www.emg.se" as shown in a printout submitted by Complainant. As EMG Management Group AB is a commercial company, the use of the domain name must, according to Complainant, obviously have been to attract Internet users to that site, something that is proof of bad faith. Complainant refers to the conclusions by the Panel in the WIPO Case No. D2000-0118 National Football League Properties, Inc and Chargers Football Company v. One Sex Entertainment, a/k/a Chargergirls.net to allege that, although Internet users might soon discover the unlikelihood of a business relationship between Complainant and Respondent, Respondent would have gained website traffic to its website; in this context Complainant also stresses that the Policy does not require any demonstration that Complainant suffered or would be likely to suffer any harm as a consequence.

With reference to some other earlier cases, Complainant alleges that the fact that Respondent has not answered letters and the e-mail sent to it must be considered as evidence of bad faith.

Complainant furthermore stresses that when Complainant reviewed the site under the domain name in August 2002, the site was "under construction" and continued to be so in September 2002 and during the fall of 2002. With reference to WIPO Case No. D2001-0434 Telstra Corporation Ltd v. David Whittle, Complainant suggests that use in bad faith is not limited to positive action but that also inaction is within the concept. It is, according to Complainant, possible in certain circumstances for inactivity by Respondent to amount to use in bad faith of the domain name, as all the circumstances in Respondent’s behaviour must be taken into consideration. In this particular case it must, according to Complainant, be taken into consideration that Complainantґs trademark is well-known in Sweden, that Respondent has refused to answer any letters/e-mail from Complainant and that Respondent has no relation to the name SEB. On the basis of these circumstances, Complainant alleges that the passive holding by Respondent of the domain name amounts to use in bad faith.

Finally, Complainant indicates that when it made a further review in December 2002, the site was pointed at the servers at the French Company Groupe SEB, "www.seb.fr" but that the domain was, and is, still owned by Respondent and the domain name servers for the domain name at issue are still Respondentґs.

According to Complainant, Respondent has, following the actions taken by Complainant in respect of the domain name (the letters and the e-mail which have been mentioned above), made efforts to transfer the domain name to third parties, something that reinforces Complainantґs belief that Respondent acted in bad faith and most likely registered the domain name at issue for the purpose of selling it to Complainant.

As the transfer of a domain name to a new holder is not allowed during the administrative proceeding under the Policy, Complainant has simultaneously with the Complaint sent a notice to this effect to the Registrar.

Remedies Requested

In accordance with Paragraph 4.i of the Policy and for the reasons set out in the Complaint, Complainant requests that the Administrative Panel issue a decision that the contested domain name be transferred to Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and is consequently in default.

 

6. Discussion and Findings

Rule 15 prescribes that the Panel shall decide a Complaint on the basis of the statements made and documents submitted and in accordance with the Policy, the Rules and any principles of law that it deems applicable.

In the case of default by a Party, Rule 14 prescribes that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or a requirement under, these Rules, the Panel shall draw such conclusions therefrom as it considers appropriate. In this case no Response has been submitted and none of the contentions by Complainant have been contested, despite the opportunity given to do so. The Panel will therefore have to operate and consider the case on the basis of the factual circumstances contained in the Complaint and the documents available to support those contentions.

From the Registrar Verification follows that the Policy is applicable in this case. Consequently, there is an obligation for Respondent to submit to a mandatory administrative proceeding as the one now initiated in respect of the domain name at issue.

As regards the identity of Respondent, the Panel notes that, according to the Registrar Verification, "the current billing email of the registrant is "christer@emg.se" and that the Domain Name Owner and Billing Contact Information", is "christer troglich "christer@emg.se" emg management group ab." while the Contact Information refers to "dennis@emg.se". The Verification also indicates the mailing address of the domain name owner/billing contact as "emg management group ab, parkgatan 8a, göteborg 411 38, se." These circumstances lead the Panel to conclude that in fact the proper Respondent in this case is the entity under the e-mail address "christer@emg.se" against whom consequently the legal effects of this Decision are to be directed.

The Notification of Complaint and Commencement of Administrative Proceeding was sent to Christer Troglich, to the Technical Contact and to "postmaster@seb.nu", respectively, by post/courier (DHL Airway Bill 2829080085, with enclosures), facsimile (complaint without attachments) and e-mail to the three e-mail addresses mentioned. There are no indications that those communications to Respondent were not received. Consequently, the Panel concludes that the documents in this case have been duly communicated to Respondent and that there is from this point of view no obstacle to considering the case.

Paragraph 4.a of the Policy directs that Complainant has to prove each of the following:

- that the domain name registered by Respondent is identical with, or confusingly similar to a trademark or a service mark in which Complainant has rights;
- that Respondent has no rights or legitimate interests in the domain name; and
- that the domain name has been registered and is being used in bad faith.

In the following parts of this Decision the Panel discusses each of those elements.

A. Identity or Confusing Similarity

In this respect, Complainant has, according to Paragraph 4.a(i) of the Policy, to prove that the domain name at issue is identical with, or confusingly similar to, a trademark or a service mark in which Complainant has rights.

The domain name at issue in this case is <seb.nu>.

Complainant has claimed that it has registered trademark rights in Sweden since 1967, for the denonimation "SEB" either alone or in combination with other words and has submitted evidence to support its claim in this respect. It has protection for that mark also in other countries but as both Complainant and Respondent reside in Sweden, it is of course primarily the trademark protection in Sweden that is of relevance. In this respect the Panel finds that the evidence submitted proves that Complainant has registered trademark rights in Sweden in the denomination "SEB".

Complainant alleges that the domain name at issue is identical with the trademark, because the addition of the top-level domain ".nu" does not have any impact on the overall impression of the dominant portion of the notion "SEB". In this respect the Panel agrees with Complainant. It has in fact been well established in earlier cases that the addition of such a notion does not change the likelihood of confusion with a trademark.

The Panel thus finds it to be established that the domain name at issue is confusingly similar to Complainantґs trademark. The fact that the trademark is written in capital letters and the domain is not changes nothing in this finding.

B. Rights or Legitimate Interests

In this respect, Complainant has, according to Paragraph 4.a(iii) of the Policy, to prove that Respondent has no rights or legitimate interests in the domain name at issue.

In this respect the Panel first notes that the denomination "SEB" or "seb" does not have any generic meaning in Swedish. Complainant has alleged that Respondent has no registered trademarks in Sweden corresponding to the domain name and that there is no connection or co-operation between Complainant and Respondent and also that no license or authorization has been provided by Complainant to Respondent in respect of the notion.

Despite the opportunity to comment on Complainantґs allegations, Respondent has chosen not to do so. The Panel therefore is prepared to accept Complainantґs allegations in this respect.

Complainant has alleged that it is unlikely that Respondent, regardless of whether Respondent had made a trademark search before the registration of the domain name or not, was in fact aware of the trademark "SEB" at the time of the registration of the domain name and that no rights or legitimate interests could be created where the user of the domain name would not choose such a name unless he was trying to create the impression of an association with Complainant. Complainant has added, and submitted evidence in this respect, that up to June 2002, the domain name was pointed at "www.emg.se" which is the site where Respondentґs company presented its services.

Also here Respondent has not commented upon Complainantґs allegations. The Panel therefore accepts those allegations, the more so as they are to a large extent supported by evidence. As also discussed under the following heading the Panel concludes that Respondent must have been aware of Complainantґs trademark "SEB" at the time of the registration of the domain name. Especially in the light of the fact that the domain name was for a long time pointed at the website of Respondentґs company the Panel also concludes that it is likely that Respondent registered the domain name in order to create an impression of association with Complainant in order to attract Internet users to its own website. This is, in the view of the Panel, obviously not a legitimate or fair use of the domain name.

These considerations lead the Panel to the conclusion that Respondent has no rights or legitimate interests in the domain name at issue.

C. Registration and Use in Bad Faith

In this respect, Complainant has, according to Paragraph 4.a(iii) of the Policy, to prove that the domain name has been registered and is being used in bad faith. Furthermore, Paragraph 4.b of the Policy sets out some circumstances which, in particular but without limitation, shall, if found to be present by the Panel, be considered as evidence of registration and use in bad faith.

In its reasoning under the previous heading the Panel has stated that Respondent must have been aware of the trademark "SEB" when registering the domain name at issue. The Complainant is a well-known bank in Sweden and its trademark "SEB" is also well established in that country. The Panel finds it striking that the registration of the domain name was filed the same day as the local newspaper (Göteborgsposten) in Respondentґs city commented on the new name of the joint operations of Complainant and an insurance company. In fact those comments were fairly negative and must have provoked some discussion.

In view of this and in view of the fact that "SEB" or "seb" does not have any generic meaning in Swedish and do not seem to have any connection to Respondentґs activities, the Panel concludes that the domain name at issue has been registered in bad faith in the sense of the Policy.

As regards the possible bad faith in the further use of the domain name at issue, Complainant has submitted evidence to the effect that Respondent for a long time used the domain name to point at the site of EMG Group Management AB which is a commercial company. Consequently, in the opinion of the Panel, it is highly likely that the intention of Respondent at that time must have been to attract Internet users to the site of the company.

As regards the later use made of the domain name, Complainant has also alleged that the site activated to the domain name at issue has been "under construction" at least from August 2002, and that, in view of the circumstances, Respondentґs passive holding of the domain name amounts to acting in bad faith. Complainant has suggested that Respondent most likely registered the domain name for the purpose of selling it to Complainant.

The later allegation has not been supported by evidence and the Panel can not base any conclusions on it. As regards the other circumstances invoked by Complainant the Panel notes again that they have not been commented upon by Respondent. The Panel takes note of Complainantґs contention – uncontested by Respondent - that at a review in August 2002, the site activated under the domain name was "under construction" and that this was after Complainant has sent its first letter to Respondent relating to the domain name at issue. The Panel furthermore notes that, according to Complainantґs allegation – also uncontested by Respondent – the site was, at a review in December 2002, pointed at the servers of a certain French company Groupe SEB.

When considering these circumstances the Panel finds it to be established that the use of the domain name at issue has been in bad faith in the sense of the Policy both before Respondent received the first letter from Complainant and thereafter.

D. Conclusions

On the basis of these considerations, the Panel considers it established that the domain name at issue is confusingly similar to the trademark in which Complainant has rights, that Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and is being used in bad faith. Complainantґs request for a transfer of the domain name shall consequently be approved.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <seb.nu> be transferred to the Complainant.

 


 

Henry Olsson
Sole Panelist

Dated: February 6, 2003

 

Источник информации: https://internet-law.ru/intlaw/udrp/2002/dnu2002-0004.html

 

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