v.
EUROCALL S-VERIGE AB
eResolution
Administrative Panel Decision
Case Number: AF-0254
Commenced: 13 June 2000.
Judgement: 9 August 2000.
Panelist: Richard Hill
Domain name - Domain name dispute resolution policy Default Telecommunications - Swedish Trademark Network Solutions - Identical - Confusingly similar - Bad faith registration - Bad faith use Attract consumers.
Complainant is Telia InfoMedia Reklam AB, a Swedish corporation.
The trademark "Gula Sidorna" was registered in Sweden in 1985 by Complainant
a large and well-known telecommunications company in Sweden. Complainant
uses this mark to publish and market directory services, primarily in Sweden,
but also in other Nordic countries. Some of these services are offered
via a web site at gulasidrona.se.
Respondent is Eurocall Sverige AB, a Swedish corporation. Respondent
operates a web site at the contested domain name which offers directory
services that appear similar to those offered by Telia at its site gulasidorna.se.
The respondent registered the domain name gulasidorna.net on 22 January
1998.
Held, Domain name transferred.
Although Respondent defaulted, this panel cannot grant Complainant's
request automatically, but that it must instead examine the evidence presented
to determine whether or not the complainant has proven its case as required
by the ICANN Policy.
Complainant has presented evidence that it owns the rights to the
trademark "Gula Sidorna" and it is obvious that the contested domain name
gulasidorna.net is identical or confusingly similar to the trademark.
Complainant has presented evidence showing that the contested domain
name is being used for a web site offering services which are very similar
to the services offered by Complainant under its trademark and at its web
site gulasidorna.net. Given that Respondent registered its domain name
and created its web site several years after Complainant offered its services,
this panel holds that there is clear evidence that Respondent has no legitimate
rights in the contested domain name. The evidence shows that Respondent
has indeed created its web site in such a way that there is a likelihood
of confusion with Complainant's mark.
Policies referred to
Uniform Policy for Domain Name Dispute Resolution
Rules for Uniform Domain Name Dispute Resolution Policy
Hill, Panelist: -
1. Parties and Contested Domain Name
The Complainant is Telia
InfoMedia Reklam AB, a Swedish corporation. The Respondent is Eurocall
Sverige AB, a Swedish corporation. The contested domain name is gulasidorna.net,
registered with Network Solutions.
2. Procedural History
The electronic version of
the Complaint form was filed on-line through eResolution's Website on June
13, 2000. The hardcopy of the Complaint Form and the annexes were received
on June 26, 2000. The choice of jurisdiction was received on June 26, 2000.
The Complainant requested a change of remedy from cancellation to transfer
on July 7, 2000. Confirmation of payment was received on July 10, 2000.
Upon receiving all the required
information, eResolution's clerk proceeded to:
- Confirm the identity of the Registrar for the contested Domain Name;
- Verify the Registrar's Whois Database and confirm all the required contact
information for Respondent;
- Verify if the contested Domain Name resolved to an active Web page;
- Verify if the Complaint was administratively compliant.
The inquiry leads the Clerk
of eResolution to the following conclusions: the Registrar is Network Solutions,
the Whois database contains all the required contact information, the contested
Domain Name resolves to an active Web page and the Complaint is administratively
compliant.
An e-mail was sent to the
Registrar by eResolution Clerk's Office to obtain a copy of the Registration
Agreement on June 13, 2000. The requested information was received June
19, 2000.
The Clerk's Office proceeded
to send a copy of the Complaint Form and the required Cover Sheet in accordance
with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute
Resolution Policy.
The Clerk's Office fulfilled
all its responsibilities under Paragraph 2(a) in connection with forwarding
the Complaint to the Respondent on July 10, 2000. That date is the commencement
date of the administrative proceeding.
On July 10, 2000, the Clerk's
office notified the Complainant, the Respondent, the concerned Registrar,
and ICANN of the date of commencement of the administrative proceeding.
All the emails, except for
the one sent to the technical contact were successful. The faxes failed.
The complaint, official
notification and all the annexes were sent to the respondent by registered
mail by Canada Post because the only addresses available were P.O. Boxes.
The Respondent did not submit
a response via the eResolution Internet website nor a signed version.
On August 1, 2000, the Clerk's
Office contacted a panelist, and requested his services in this case. The
panelist was unable to act in this case.
On August 4, 2000, the Clerk's
Office contacted Mr. Richard Hill, and requested that he act as panelist
in this case.
On August 7, 2000, Mr. Richard
Hill accepted to act as panelist in this case and filed the necessary Declaration
of Independence and Impartiality.
On August 7, 2000, the Clerk's
Office forwarded a user name and a password to Mr. Richard Hill, allowing
him to access the Complaint Form, the Response Form, and the evidence through
eResolution's Automated Docket Management System.
On August 7, 2000, the parties
were notified that Mr. Richard Hill had been appointed and that a decision
was to be, save exceptional circumstances, handed down on August 21, 2000.
3. Factual Background
The trademark "Gula Sidorna"
was registered in Sweden in 1985 by Telia, a large and well-known telecommunications
company in Sweden. Telia uses this mark to publish and market directory
services, primarily in Sweden, but also in other Nordic countries. Some
of these services are offered via a web site at gulasidrona.se.
The respondent registered
the domain name gulasidorna.net on 22 January 1998.
The respondent operates
a web site at the contested domain name which offers directory services
that appear similar to those offered by Telia at its site gulasidorna.se.
4. Parties' Contentions
The complaint contends that
the domain name gulasidorna.net is confusingly similar to its trademark
"Gula Sidorna", and that the respondent has no legitimate interest in the
contested domain name, and that the respondent registered the domain name
in bad faith.
The respondent has defaulted
and hence makes no contentions.
5. Discussion and Findings
The panel will first address
the procedural issues related to the fact that the respondent has defaulted
and then analyse the evidence to determine whether the complainant has
proven, in accordance with article 4.a of the ICANN Policy that:
The contested domain name is identical or confusingly similar to a trademark
in which the complainant has rights, and The respondent has no rights or
legitimates interests in the contested domain name, and The respondent
registered and used the contested domain name in bad faith.
I. The procedural issue
related to the default of the respondent
Since the respondent has
defaulted, this panel must first determine what the procedural implications
are of a default. Should the complainant automatically prevail, or should
the panel anyway examine the evidence and base its decision on its determination
of the relevant facts and laws?
While the ICANN Policy,
Rules and the Supplemental Rules that govern these proceedings do not explicitly
address this question, they do give some guidance. Notably, article 4.a
of the ICANN Policy states:
"In the administrative proceeding, the complainant must prove that each
of these three elements are present." [emphasis added]
This panel therefore holds
that it cannot grant the claimant's request automatically, but that it
must instead examine the evidence presented to determine whether or not
the complainant has proven its case as required by the ICANN Policy.
II. Analysis of the evidence
in this case
Similarity between the trademark
and the domain name
The complainant has presented
evidence that it owns the rights to the trademark "Gula Sidorna" and it
is obvious that the contested domain name gulasidorna.net is identical
or confusingly similar to the trademark.
Lack of rights or legitimate
interests in the contested domain name
The complainant has presented
evidence showing that the contested domain name is being used for a web
site offering services which are very similar to the services offered by
the complainant under its trademark and at its web site gulasidorna.net.
Given that the respondent registered its domain name and created its web
site several years after the complainant offered its services, this panel
holds that there is clear evidence that the respondent has no legitimate
rights in the contested domain name.
Indeed, trademark law prevents
use of a distinctive name or mark for services similar to those for which
the mark was registered, unless of course the trademark owner licenses
such use, which is not the case here.
And an illegal use of a
name or mark cannot be considered a "legitimate interest".
Bad faith registration and
use of the contested domain name
The complainant has presented
evidence showing that there is some similarity, and a clear risk of confusion,
between its web site gulasidorna.se and the respondent's site gulasidorna.net.
Article 4.b(iv) of the ICANN
Policy states that the following shall be evidence of bad faith use and
registration:
"by using the domain name, you have intentionally attempted to attract,
for commercial gain, Internet users to your web site 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 your web site or
location or of a product or service on your web site or location"
This panel holds that the
evidence shows that the respondent has indeed created its web site in such
a way that there is a likelihood of confusion with the complainant's mark.
6. Conclusions
This panel concludes that
the respondent has proven that the contested domain name is confusingly
similar to its trademark "Gula Sidorna", that the respondent has no rights
or legitimate interests in the contested domain name, and that the respondent
has registered and used the contested domain name in bad faith.
The panel therefore orders
the contested domain name gulasidorna.net to be transferred to the complainant
Telia InfoMedia Reklam AB.
7. Signature
Geneva, Switzerland,
9 August 2000
(s) Richard Hill
Presiding Panelist
DOMAIN NAME TRANSFERRED