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Tjдnstemдnnens Centralorganisation / TCO v. Netsol Ltd.
Case No. DNU2005-0005
1. The Parties
The Complainant is Tjдnstemдnnens Centralorganisation / TCO, Еsa Reiland, Stockholm, Sweden, represented by Juristfirman Gard AB, Sweden.
The Respondent is Netsol Ltd., Road Town, BVI, United Kingdom of Great Britain
and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <tcodatorn.nu> is registered with Key-Systems GmbH
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2005. On November 23, 2005, the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar verification in connection with the domain name at issue. On November 30, 2005, Key-Systems GmbH dba domaindiscount24.com 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 December 12, 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 December 15, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was January 5, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 6, 2006.
The Center appointed Jette Robsahm as the Sole Panelist in this matter on January 26, 2006. 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.
The language of the proceeding is English.
4. Factual Background
The following non-contested facts are derived from the Complaint with supporting evidence submitted:
The Complainant, Tjдnstemдnnens Centralorganisation/TCO, is a Swedish umbrella organization for 17 affiliated trade unions, with about 1,3 million members in total.
The Complainant has used its company name and the acronym TCO since 1931. According to the Complainant, the acronym TCO is established as a well known trademark in accordance with the Swedish trademarks Act. Under this trademark, the Complainant has worked to strengthen the legal right to collective bargaining and union rights in general, internationally as well as in Sweden. The Complainant has also acted for equal rights between sexes and against the exploitation of women and children.
Complainant has entered into agreements with different suppliers of products and services which are offered to members at discount prices. One of these products is computers which have been offered to members of the affiliated unions at discount prices. The computers have been marketed under the trademark TCO-DATORN since 1998, and have been sold in numbers ranging between 10 000 and 15 000.
One of the former contracting parties had been granted the right to register the domain name <tcodatorn.nu>, but cancelled the domain name by a mistake. The Complainant was not informed.
The Complainant also owns the company TCO Utveckling AB, a company which is active in the business of quality labelling office equipment. This subsidiary is granted a license to register and use the trademark TCO.
The subsidiary has registered several trademarks in Sweden and internationally. The Complainant mentions the following:
||Date of registration
||Classes and goods and services
computers, displays, etc,
20, 41, 42
Computers, displays etc,
Computers and data processing apparatus
The domain name at issue, <tcodatorn.nu>, was
registered on August 4, 2005, by the Respondent and points to a site with sexual
5. Parties’ Contentions
The Complainant states, inter alia, as follows:
The Complainant has since 1998 through contracting parties sold its products under the trademark TCO and the trade name TCO-datorn. The word “datorn” is the Swedish translation of the English word “computer”.
Further, the trademark TCO must be considered as an established mark on the Swedish market also due to the fact that it has been used as an acronym for and in connection with the Complainant since 1931.
The domain name registered by the Respondent is identical to the trade name TCO-datorn. Further the distinctive part of the domain name <tcodatorn.nu> is identical to the registered trademarks TCO.
The Complainant has an exclusive right to the trademark TCO through the wholly owned company TCO Utveckling AB, both through its trademark registrations and unregistered trademark rights according to the Swedish Trademarks Act.
Also, the Complainant has, through a contracting party, been the owner of the domain name <tcodatorn.nu> until it was cancelled by a mistake.
The Respondent uses the domain name to attract visitors on the Internet to a website with sexual content.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to convince the Panel of its rights and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements are satisfied:
A. the domain name in question is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, and
B. the Respondent has no rights or legitimate interests in respect of the domain name, and
C. the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided sufficient evidence of its rights to the trademark TCO. The Panel also believes the Complainant when it states to have owned the domain name <tcodatorn.nu> through a former associate.
The domain name in question, <tcodatorn.nu>, comprises in its entirety the trademark TCO. The question is whether the word “datorn” is capable of distinguishing from the Complainant-s trademarks to a degree sufficient to avoid confusion.
The word “datorn” is a generic term. It is the translation into Swedish of the English word “computer”. It has no distinctive character per se. Thus, added as a kind of suffix, it does not change the overall impression of the disputed domain name. As TCO is obviously quite well known in Sweden, and the public therefore also knows of the Complainant’s activities, there is reason to believe that the domain name <tcodatorn.nu> will be perceived as owned by or related to the Complainant.
Moreover it has been stated in several decisions by
prior UDRP administrative panels that incorporating a trademark in its entirety
into a domain name can be sufficient to establish that the domain name is identical
or confusingly similar to a registered trademark. See as examples Thaigem
Global Marketing Limited v. Sanchai Aree, WIPO
Case No. D2002-0358, Toyota France and Toyota Motor Corporation v. Computer-Brain,
WIPO Case No. D2002-0002 and Pfizer,
Inc. v. Seocho and Vladimir Snezko, WIPO
Case No. D2001-1199.
On this background, it is the view of this Panel that the domain name <tcodatorn.nu> is confusingly similar to the trademark TCO.
B. Rights or Legitimate Interests
The Respondent has not filed a response to the Complainant’s contentions and the Panel must therefore base its view on the facts and allegations brought forward by the Complainant.
The Respondent uses, as mentioned above in item 5 A, the domain name to attract visitors on the Internet to a website which has nothing to do with computers. On the contrary, the public is attracted to a website with sexual content, which is exactly the same website as “www.deluxemovie.com”. The Panel finds it difficult to see what should be the legitimate interest of the Respondent to use the domain name, the latter having been registered after having been used by a licensee of the Complainant, and TCO also being a registered trademark of the Complainant. The Panel therefore finds that the Respondent has no rights in the domain name.
C. Registered and Used in Bad Faith
As a starting point it can be said that abandoned domain names in principle are free to be used by others. However, this is true subject to the condition that registering and using the domain name does not violate third parties’ registered or acquired rights. In the present case the domain name in question is used to divert the public to a pornographic site.
In several WIPO decisions, it has been found that use of a domain name embodying
a unrelated trademark to divert the Internet user to a pornographic may be an
indication of bad faith. See Caledonnia Motor Group Limited vs. Amizon, WIPO
Case No. D2001-0860; Bass Hotels & Resorts, Inc. v. Mike Rodgerall,
WIPO Case No. D2000-0568.
It makes no difference that the public immediately will be aware that the site is not what he or she expected. The Respondent has already succeeded in its goal, namely to use the domain name for commercial gain.
In the present case it is likely the Respondent knew of the Complainant and
its trademark as the domain name has no meaning in English language or any other
languages than Swedish. In view of the present use, which has nothing to do
with the content of the website to which it points, the Panel finds that the
domain name is registered and used in bad faith.
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, <tcodatorn.nu>, be transferred to the Complainant.
Dated: February 4, 2006