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Huge Fastigheter AB v. Netsol Ltd.
Case No. DNU2005-0002
1. The Parties
The Complainant is Huge Fastigheter AB, Huddinge, Sweden, represented by Advokatfirma Lindhs DLA Nordic KG, Sweden.
The Respondent is Netsol Ltd., Tortola, British Virgin Islands, United Kingdom
of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <huddingecentrum.nu> is registered with .NU
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2005. On October 10, 2005, the Center transmitted by email to .NU Domain Ltd. a request for registrar verification in connection with the domain name at issue. On October 11, 2005, .NU Domain Ltd. 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 20, 2005. The Center verified that the Complaint together with the amendment to 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 27, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was November 6, 2005. The Respondent did not submit a response within this deadline. Accordingly, the Center notified the Respondent’s default on November 7, 2005. On the same day, an employee of DeluxeMovie, Mr. Alex van de Goede, sent by email an informal reply to the Complaint.
The Center appointed Torsten Bettinger as the sole
panelist in this matter on November 14, 2005. 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
Complainant is the real estate administration of Huddinge, a Swedish municipality near Stockholm. Complainant is the registered owner of the domain name <huddingecentrum.se>.
The disputed domain name <huddingecentrum.nu> was registered by the director of public relations of the Complainant, Mr. Цrjan Akerblom, in the name of Ordblom Ad Manus AB, on behalf of the Complainant and has been used by the Complainant until August 4, 2005, to promote Huddinge Centrum, a shopping mall of 60,000 square metres.
Due to an inadvertent failure to renew the domain
name at issue, the registration lapsed on August 4, 2005. Immediately upon expiration
the Respondent, a company located in the British Virgin Islands, registered
the domain name and used it in order to redirect Internet users to a pornographic
website at “www.deluxemovie.com”.
5. Parties’ Contentions
Complainant submits that (1) the domain name <huddingecentrum.nu> is identical to the Complainant’s mark in which Complainant has rights; (2) Respondent has no rights or legitimate interests in respect of the domain name; (3) the domain name was registered and is being used in bad faith.
In reference to the element in paragraph 4(a)(i) of the Policy Complainant asserts that by virtue of Complainant’s use of the mark “Huddinge Centrum”, it has acquired a substantive and valuable goodwill in the mark “Huddinge Centrum” and therefore established an unregistered trademark by use under the Swedish Trademark Act. It contends that the domain name <huddingecentrum.nu> is identical to the Complainant’s mark.
In reference to the element in paragraph 4(a)(ii) of the Policy, Complainant argues that Respondent is a company of the British Virgin Islands with no connection whatsoever to Sweden, the municipality of Huddinge or the Complainant’s mark “Huddinge Centrum”.
In reference to the element in paragraph 4(a)(iii) of the Policy, Complainant asserts that Respondent registered the disputed domain name on the first day after the expiration of registration. It contends that Respondent was watching domain name registrations that were about to lapse due to unpaid renewal fees and took advantage of the Complainant’s inadvertent failure to renew the disputed domain name.
Complainant alleges that by registering and using the domain name <huddingecentrum.nu> for a pornographic website, Respondent was attempting to take advantage of the Internet traffic which had already been established to the Complainant’s website.
The Respondent did not submit a formal Response to
the Complainant’s contentions. However, as stated above, an employee of
DeluxeMovie alleged by email that he/they did not know of Huddinge, Sweden and
that he/they registered the disputed domain name in order to create an “eCentrum”
web page for a colleague named “Hudding”.
6. Discussion and Findings
A. Late filing of the Response
The first issue is whether the Panel will consider the administratively deficient and late Response of November 7, 2005.
In the event of a late Response, the Panel’s default course of action, pursuant to paragraph 14(a) of the Rules, is to proceed to decision based only on the complaint. The Panel may, in its discretion, consider the response if “exceptional circumstances” exist.
Respondent was notified by Center by Courier (with enclosures), facsimile and e-mail that an administrative proceeding had been commenced against it and that it had to file and serve its Response not later than November 6, 2005, in order to contest the Complaint. Respondent failed to meet that deadline. On November 7, 2005, an employee of Deluxe Movie sent an e-mail without any supporting exhibits or other tangible offer of proof, and without an explanation as to his relationship with the Respondent asserting that Respondent had never received previous e-mails sent by the Center because e-mails were either never sent to Respondent or been filtered out by anti-spam software.
The Panel notes that even if it is accepted as true that Respondent did not receive the Center’s Notification of the Complaint in electronic form there is no reason to believe that Respondent did not receive the Notification of Complaint sent out by courier on October 27, 2005.
The Center’s notification to Respondent and the Rules, clearly set forth the procedure and time periods to contest a claim. Respondent failed to meet those requirements. Accordingly, the Panel has elected to reject the untimely Response filed by Respondent.
B. Trademark or Service Mark
The Complainant has argued that it has trademark rights in the name “Huddinge Centrum” according to section 2 of the Swedish Trademark Act. This section states that “exclusive rights in a trademark may be acquired, even without registration, after the mark has been established on the market”.
The test of whether a trademark has been established is given in the third paragraph of the same section:
“A sign shall be considered to have become established on the market when it is, in Sweden, within a significant portion of the circle for which it is intended, known as a symbol for the goods (or services) which are being made available under it.”
Accordingly, Complainant must demonstrate that the name “Huddinge Centrum” has been generally known in the appropriate business or consumers circles in Sweden "as a symbol specific to its proprietor’s goods or services”.
The Complainant has offered little information as regards the use of the notion “Huddinge Centrum” as symbol for goods or services, but merely provides evidence that the Complainant has used the notion “Huddinge Centrum” as a name to designate a shopping mall. However, in the absence of contrary submissions by the Respondent, the Panel has no reason to doubt Complainant’s submissions as to trade mark use and accepts that Complainant has used “Huddinge Centrum” both as a trade name and a trademark.
Furthermore, in the absence of a contrary submission by the Respondent the Panel also accepts that the term “Huddinge Centrum” has been generally known in the appropriate business or consumers circles in Sweden as a sign for the Complainant’s goods or services become within a significant portion of the circle for which it is intended, known as a sign for the goods which are being made available under it.
The fact that “Huddinge” is the name of
a Swedish municipality does not refute the conclusion that the combination of
this geographical term with a generic term such as “Centrum” is
capable of distinguishing products or services of the Complainant and thus performing
trademark function (Sydney Markets Limited v. Nick Rakis trading as
Shell Information System, WIPO Case No.
The Panel therefore accepts that Complainant has rights in the unregistered mark “Huddinge Centrum”.
C. Identical or Confusingly Similar to a Trademark or Service Mark
The test of confusing similarity under the Policy
is confined to a comparison of the disputed domain name and the trademark alone,
independent of the products for which the domain name is used or other marketing
and use factors usually considered in trademark infringement (See Arthur
Guinness Son & Co. (Dublin) Limited v. Dejan Macesic , WIPO
Case No. D2000-1698 <guiness.com>, Ansell Healthcare Products Inc.
v. Australian Therapeutics Supplies Pty, Ltd., WIPO
Case No. D2001-0110 <ansellcondoms.com>, Dixons Group Plc v. Mr.
Abu Abdullaah , WIPO Case No. D2001-0843
<dixons-online.net>, AT&T Corp. v. Amjad Kausar, WIPO
Case No. D2003-0327 <attinternet.com>, <attuniversal.com>,
BWT Brands, Inc. and British Am. Tobacco (Brands), Inc. v. NABR, WIPO
Case No.D2001-1480; Britannia Building Society v. Britannia Fraud Prevention,
WIPO Case No. D2001-0505).
The disputed domain name wholly incorporates Complainant’s
trademark “Huddinge Centrum”. It is well established that the specific
generic or country code top level of a domain name does not affect the domain
name for the purpose of determining whether it is identical or confusingly similar
(See Magnum Piering, Inc. v. The Mudjackers and Garwood & Wilson, Sr.,
WIPO Case No. D2000-1525; Rollerblade,
Inc. v. Chris McCrady, WIPO Case No. D2000-0429)
The Panel thus finds that the domain name <huddingecentrum.nu> is identical to the trademark in which Complainant has exclusive rights and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy.
D. Rights or Legitimate Interests
Although paragraph 4(c) of the Policy requires the Complainant to prove the presence of this element, Panels in a number of cases found that once a Complainant makes a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to, or legitimate interests in the domain name.
The Complainant provided evidence that the Respondent used the disputed domain name to redirect to a pornographic website and thus has made a prima facie showing that the Respondent has no rights or legitimate interests in the domain name.
The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name.
The Complainant has not licensed or otherwise permitted the Respondent to use the trademark and business name and has not permitted the Respondent to apply for or use any domain name incorporating the trademark.
Before notice to the Respondent of the dispute, there was no evidence of its use, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
The combination of words “Huddinge Centrum” is obviously connected with the Complainant’s trademark and is not a word a company located in the British Virgin Islands would legitimately choose unless seeking to create an impression of an association with the Complainant.
Respondent’s use of the domain name to divert Internet users to its pornographic website capitalizing on the Complainant’s mark is not a bona fide use pursuant to paragraph 4(c)(i) of the Policy.
Further, nothing in the record suggests that the Respondent trades under the domain name or the name “Huddinge Centrum”, or is commonly known by said domain name or the name “Huddinge Centrum”, or is making a legitimate non-commercial or fair use of the domain name.
Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied
E. Registered and Used in Bad Faith
The Panel also agrees with the Complainant’s contention that the Respondent registered and is using the domain name <huddingecentrum.nu> to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the complainant's mark.
The notion “Huddinge Centrum” is obviously connected with the Complainant’s shopping mall in the Swedish municipality Huddinge. The Respondent has no connection whatsoever with Sweden, the municipality of Huddinge and the Complainants’s shopping mall.
In the absence of any explanation why the Respondent uses the disputed domain name for a pornographic website the Panel concludes that the Respondent intentionally attempted to trade off the value Complainant has built in its mark “Huddinge Centrum” and, by creating a likelihood of confusion with the Complainant’s mark, to attract, for commercial gain, Internet users to his website.
The Panel therefore concludes that Respondent registered and is using the domain
name <huddingecentrum.nu > in bad faith and that the requirement of the
paragraph 4(a)(iii) of the Policy is satisfied.
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, <huddingecentrum.nu> be transferred to the Complainant.
Dated: December 14, 2005