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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aktiebolaget TeliaSonera AB v. Blossom Holdings Ltd
Case No. D2009-0617
1. The Parties
The Complainant is Aktiebolaget TeliaSonera AB of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Blossom Holdings Ltd of Charlestown, Netherland Antilles.
2. The Domain Name and Registrar
The disputed domain name <wwwtelia.com> is registered with Lead Networks Domains Pvt. Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 8, 2009. On the same day, the Center transmitted by email to Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the disputed domain name. On May 12, 2009, Lead Networks Domains Pvt. Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 13, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on the same day. 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" or "UDRP"), 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 14, 2009. In accordance with paragraph 5(a) of the Rules, the due date for Response was June 3, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent`s default on June 5, 2009.
The Center appointed Brigitte Joppich as the sole panelist in this matter on June 12, 2009. 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant is a leading provider of worldwide mobile and advanced telecommunication services, in particular for transferring and packing of voice, data, information, transactions and entertainment. The Complainant`s share is listed on the NASDAQ QMX Stockholm Stock Exchange and the NASDAQ QMX Helsinki.
The Complainant owns a multitude of registrations for its trademark "TELIA" for data- and telecommunication products and services, covering goods and services in International Classes 9, 38 and 42 in more than 30 countries worldwide (the "TELIA Marks").
The Complainant uses numerous domain names to provide its services on the Internet, including <telia.com>, <telia.com.hk> and <webtelia.com>.
The disputed domain name was registered on July 21, 2005 and is used in connection with a parking website.
The Complainant first became aware of the Respondent`s registrations in February 2009 and sent a cease and desist letter to the Respondent by email on February 17, 2009. The Respondent did not reply to such email.
5. Parties` Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The disputed domain name is confusingly similar to the Complainant`s TELIA Marks: It wholly incorporates the Complainant`s trademark "TELIA", the prefix "www" is the well-known acronym for "world wide web", having no distinguishing capacity in a domain name context, and the addition of the top-level domain name ".com" is irrelevant for the determination of confusing similarity between the trademark and the domain name.
(2) The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant states that the Respondent has no registered trademarks or trade names corresponding to the domain name, that nothing suggests that the Respondent has been using TELIA in any other way that would confer any legitimate rights in the name upon it, that no license or authorization of any other kind has been given by the Complainant to the Respondent to use the TELIA Marks, and that the Respondent`s use in connection with a parking website is not bona fide under the Policy but misleading Internet users to commercial web sites and consequently tarnishes the TELIA Marks.
(3) Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith: Upon the Complainant`s contentions, the TELIA Marks are well-known with a substantial and widespread reputation throughout the world and the value and goodwill of the TELIA marks made the Respondent register the disputed domain name. With regard to the Respondent`s bad faith use, the Complainant contends that the trademark TELIA is a purely fictional word mark and the use of the word is not one that traders would legitimately choose unless they were seeking to create an impression of an association with the Complainant. The Complainant further contends that the Respondent`s use of the disputed domain name in connection with a web site containing sponsored links is an attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant`s mark as to the source, sponsorship, affiliation or endorsement of its website.
The Respondent did not reply to the Complainant`s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to a trademark in which the 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 is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant`s widely known TELIA Marks in which the Complainant has exclusive rights.
The mere addition of the generic acronym "www" does not eliminate the confusing similarity between the Complainant`s marks and the disputed domain name (see LEGO Juris A/S v. Bladimir Boyiko,
WIPO Case No. D2009-0437; The Nasdaq OMX Group, Inc. v. Eli Shoval,
WIPO Case No. D2009-0185; Venator Group Retail Inc v. Michele Dinoia d/b/a SZK.com, NAF Case No. FA 101506; BMG Direct Marketing, Inc. v. "BM GMusic Services" Russia a/k/a Private, NAF Case No. FA 98466; Technology Properties, Inc. v. Personal, NAF Case No. FA 96569; Victoria`s Secret et al v. Thomas Terrerello d/b/a Domains 4 Sale, NAF Case No. FA 96493; Cable News Network LP v. Stonybrook Investments LTD, NAF Case No. FA 96282 - all decisions dealing with the element "www" within the domain name disputed in each case). It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words (see Dr. Grandel GmbH v. Drg Randel Inc.,
WIPO Case No. D2005-0829; Microsoft Corporation v. J. Holiday Co.,
WIPO Case No. D2000-1493; Quixtar Investments, Inc. v. Dennis Hoffman,
WIPO Case No. D2000-0253; RRI Financial, Inc., v. Ray Chen,
WIPO Case No. D2001-1242).
Furthermore, it is well established that the specific top level domain name generally is not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant`s trademark and the disputed domain name (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,
WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,
WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,
WIPO Case No. D2001-0374).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent of, 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; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is consensus view among panelists that a complainant has to make only a prima facie case to fulfil the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of proving that the respondent has rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainant has asserted that the Respondent neither uses the domain name or any name corresponding to the disputed domain name in connection with a bona fide offering of goods or services nor is known by the disputed domain name, that the Respondent is not making any legitimate non-commercial or fair use of the disputed domain name, and that the Respondent therefore cannot have any legitimate interests in the domain name. The Respondent did not deny these assertions in any way.
Accordingly, and in view of the Panel`s finding further below, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent`s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant`s mark as to the source, sponsorship, affiliation, or endorsement of the respondent`s website or location or of a product or service on its website or location.
The circumstances mentioned in paragraph 4(b) of the Policy are not exclusive, while the two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered in bad faith and is being used in bad faith. This point is clear from the wording of the Policy and has been confirmed ever since Telstra Corporation Limited. v. Nuclear Marshmallows,
WIPO Case No. D2000-0003 (see also Telstra Corporation Limited v. Adult Web Development and Telstraexposed,
WIPO Case No. D2002-0952; Telstra Corporation Ltd v. David Whittle,
WIPO Case No. D2001-0434; Prada S.A. v. Mr. Chuan Sheng Wang,
WIPO Case No. D2003-0758).
Evidence of bad faith registration and use is shown when registration of a domain name occurs in order to utilize another`s well-known trademark by attracting Internet users to a website for commercial gain (see America Online, Inc. v. Tencent Communications Corp., NAF Case No. FA 93668; Lilly ICOS LLC v. John Hopking / Neo net Ltd.,
WIPO Case No. D2005-0694; Lilly ICOS LLC v. East Coast Webs, Sean Lowery,
WIPO Case No. D2004-1101).
The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and its rights in the TELIA Marks. The Complainant has been carrying on business activities under the name TELIA for many decades. It is hardly conceivable that the Respondent registered the disputed domain name, which fully includes the Complainant`s TELIA Marks and is nearly identical to one of the Complainant`s domain names ("wwwtelia.com" instead of "www.telia.com"), without knowledge of the Complainant`s rights in the TELIA Marks. Furthermore, as this is a case of "typo squatting", which typically involves the registration and use of a domain name that is the result of a common typographical error in relation to a well-known trademark, the Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant`s marks and thus in bad faith under paragraph 4(a)(iii) of the Policy.
As to bad faith use, by fully incorporating the TELIA Marks into the disputed domain name and by using the website at such domain name as a parking website the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant`s website to its own for the purpose of earning click-through revenues from Internet users searching for the Complainant`s website. The use and exploitation of trademarks to obtain click-through revenues from the diversion of Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy (see L`Oréal, Biotherm, LancГґme Parfums et Beauté & Cie v. Unasi, Inc.,
WIPO Case No. D2005-0623, with further references). The Panel is therefore satisfied that the Respondent has also used the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy.
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <wwwtelia.com> be transferred to the Complainant.
Dated: June 22, 2009