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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arla, ekonomisk förening v. P D S and Tony Lennartsson
Case No. D2000-0151
1. The Parties
The Complainant is Arla Ekonomisk förening, an economic association organized under the laws of Sweden, having its principal place of business at Torsgatan 14, 105 46 Stockholm, Sweden. The Respondents are P D S, having its principal place of business at Luntmakaregatan 12, Stockholm, Sweden, and Tony Lennartsson, an individual resident at the address of Luntmakaregatan 12, Stockholm, Sweden.
2. The Domain Name(s) and Registrar(s)
The domain name at issue is <arla.com>, which domain name is registered with Network Solutions, Inc. ("NSI"), Herndon, Virginia, United States of America.
3. Procedural History
A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on March 10, 2000, and the hardcopy was received on March 16, 2000. A Supplement to the Complaint was received by the WIPO Center on March 14, 2000, by e-mail and in hardcopy on March 16, 2000. An Acknowledgement of Receipt was sent by the WIPO Center to the Complainant, dated March 15, 2000.
On March 15, 2000, a Request for Registrar Verification was transmitted to the Registrar, NSI requesting it to:
(1) confirm that a copy of the Complaint was sent to the Registrar by the Complainant, as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy, Paragraph 4(b);
(2) confirm that the domain name at issue is registered with NSI;
(3) confirm that the Respondent is the current registrant of the domain name(s);
(4) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the Registrar’s WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact;
(5) confirm that the Uniform Domain Name Dispute Resolution Policy applies to the domain name(s);
(6) indicate the current status of the domain name(s).
On March 17, 2000, NSI confirmed by e-mail that NSI was in receipt of the Complaint sent to NSI by the Complainant, the domain name <arla.com> was registered with NSI and PDS was the current registrant of the name. The Registrar also forwarded the requested WHOIS details, confirmed that the Uniform Domain Name Dispute Resolution Policy was in effect and stated that the domain name was in "Active" status.
The policy in effect at the time of the original registration of the domain name at issue was Network Solutions 4.0 Service Agreement.
Network Solutions Domain Name Registration Agreement in effect provides in pertinent part:
"NETWORK SOLUTIONS, INC.
DOMAIN NAME REGISTRATION AGREEMENT
A. Introduction. This domain name registration agreement ("Registration Agreement") is submitted to NETWORK SOLUTIONS, INC. ("NSI") for the purpose of applying for and registering a domain name on the Internet. If this Registration Agreement is accepted by NSI, and a domain name is registered in NSI’s domain name database and assigned to the Registrant, Registrant ("Registration") agrees to be bound by the terms of this Registration Agreement and the terms of NSI’s Domain Name Dispute Policy ("Dispute Policy") which is incorporated herein by reference and made a part of this Registration Agreement. This Registration Agreement shall be accepted at the offices of NSI.
* * * * *
C. Dispute Policy. Registrant agrees, as a condition to submitting this Registration Agreement, and if the Registration Agreement is accepted by NSI, that the Registrant shall be bound by NSI’s current Dispute Policy. The current version of the Dispute Policy may be found at the InterNIC Registration Services web site: "http://www.netsol.com/rs/dispute-policy.html."
D. Dispute Policy Changes or Modifications. Registrant agrees that NSI, in its sole discretion, may change or modify the Dispute Policy, incorporated by reference herein, at any time. Registrant agrees that Registrant’s maintaining the registration of a domain name after changes or modifications to the Dispute Policy become effective constitutes Registrant’s continued acceptance of these changes or modifications. Registrant agrees that if Registrant considers any such changes or modifications to be unacceptable, Registrant may request that the domain name be deleted from the domain name database.
E. Disputes. Registrant agrees that, if the registration of its domain name is challenged by any third party, the Registrant will be subject to the provisions specified in the Dispute Policy.
* * * * *
Q. This is Domain Name Registration Agreement Version Number 4.0. This Registration Agreement is only for registrations under top-level domains: COM, ORG, NET, and EDU. By completing and submitting this Registration Agreement for consideration and acceptance by NSI, the Registrant agrees that he/she has read and agrees to be bound by A through D above.
Domain Version Number: 4.0 [URL ftp://rs.internic.net/templates/ domain-template.txt] [01/98]."
Effective January 1, 2000, NSI adopted the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"). There is no evidence that the Respondents ever requested that the domain name at issue be deleted from the domain name database. Accordingly, the Respondents are bound by the provisions of the Policy.
A Formal Requirements Compliance Checklist was completed by the assigned WIPO Center Case Administrator on March 21, 2000. The WIPO Center has determined that the Complaint is in formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Uniform Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "WIPO Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount by the Complainant. The Panelist agrees that this is true in relation to PDS. However, the individual Tony Lennartsson is not a registrant and has not in his capacity of an individual submitted to the mandatory administrative proceedings.
No formal deficiencies having been recorded by the WIPO Center, on March 22, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondents (with copies to the Complainant, NSI and ICANN), setting a deadline of April 10, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondents by e-mail to the e-mail addresses indicated in the Complaint and specified in NSI’s WHOISґs confirmation, as well as to <firstname.lastname@example.org>; no e-mail addresses were found at any web page relating to the disputed domain name. In addition, the Complaint was sent by express courier to all available postal addresses.
Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
On April 11, 2000, having received no Response from the designated Respondents, the WIPO Center transmitted to the parties a Notification of Respondent Default. On April 14, 2000, the WIPO Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date. This Notification informed the parties that the Administrative Panel would be comprised of a single Panelist, Mr Jonas Gulliksson.
The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and WIPO Supplemental Rules.
The Administrative Panel shall issue its Decision based on the Complaint, the
e-mails exchanged, the Policy, the Uniform Rules, the WIPO Supplemental Rules, and without the benefit of any Response from the Respondents.
4. Factual Background
4.1 The Complainant and its Registered Trademarks
As Sweden’s largest dairy, Plaintiff handles over 65% of the milk produced in Sweden. Along with producing milk, butter, and margarine, Plaintiff markets assorted other foods, such as flavored Crиme Fraiche, Bravo juice, Ängsgården cheese, Leif & Lena flavored milk, Muu flavored milk, and Keso cottage cheese with added fruit and herbs.
Regional exports of Plaintiff’s products reach through Europe, including Finland, Germany, Norway, Estonia, the United Kingdom, Greece, Denmark, and the Russian Federation. From its 34 manufacturing plants located throughout Sweden, Plaintiff’s broader-based exports are sold across the North and South American, Australian, Asian, and African continents.
Plaintiff maintains a significant presence on the Internet through its website located at www.arla.se.
The Respondents are not and have never been a licensee of Plaintiff, and the Respondents are not and have never been otherwise authorized by Plaintiff to use any of Plaintiff’s marks.
Plaintiff is the owner of Swedish Trademark Registration No. 225,413 for the ARLA mark covering goods in the following International Classes: 5 (pharmaceuticals); 6 (metal goods); 8 (hand tools); 10 (medical apparatus); 11 (environmental control apparatus); 13 (firearms); 14 (jewelry, precious metals); 17 (rubber goods); 18 (leather goods); 19 (non-metallic building materials); 20 (furniture and articles not otherwise classified); 22 (cordage and fibers); 23 (yarns and threads); 26 (fancy goods); 30 (staple foods); 31 (natural agricultural products); 32 (light beverages); 33 (wine and spirits); 35 (advertising and business); 36 (insurance and financial services); 37 (building construction and repair); 38 (communications services); 39 (transportation and storage services); 40 (treatment of materials); 41 (education and entertainment); and 42 (miscellaneous services). A true and correct copy of Plaintiff's registration certificate with an English translation is attached as Exhibit 5 to the Complaint.
5. Parties’ Contentions
Respondent PDS is listed as the registrant of the disputed domain name.
Respondent Tony Lennartsson was previously listed as the Administrative Contact for the domain name. Tony Lennartsson is the president, sole shareholder, sole director, and sole full-time employee of PDS, as evidenced in the copy of a motion submitted by Tony Lennartsson to the United States District Court for the Eastern District of Virginia in the case of Swedish Match AB et al v. Tony Lennartsson et al, Exhibit 3 to the Complaint.
Upon information and belief, Tony Lennartsson is the legal entity responsible for registering the domain name. On further information and belief, Tony Lennartsson is not known as nor does business as <arla.com>.
Plaintiff's trademark registration for the mark ARLA issued on August 2, 1991, well prior to the 1996 registration date of the disputed Domain Name.
Plaintiff’s registration certificate for its ARLA mark evidences the validity of Plaintiff’s trademark and Plaintiff’s exclusive right to use this trademark.
As noted above, Plaintiff has also used its ARLA mark in connection with the promotion of its goods and services via its Internet website located at www.arla.se.
Having been widely promoted among members of the general consuming public and having exclusively identified Plaintiff, the ARLA brand name symbolizes the tremendous goodwill associated with Plaintiff and is a property right of incalculable value. Furthermore, due to its wide and substantial use, the ARLA mark enjoys unquestionable fame and notoriety.
The value of Plaintiff’s trademark rights and goodwill was placed at SEK 56 million (US $10 million) for the 1998/1999 fiscal year alone.
The Respondents registered the disputed Domain Name, which is identical to Plaintiff’s ARLA mark. The Respondents own no rights or legitimate interests in this domain name. The Respondents are not and have never been (either as an individual, business, or other organization) commonly known by the name ARLA or by the domain name.
Pursuant to Section 3(b)(ix)(3) of the Uniform Rules, the Respondent’s registration and use of the domain name meets the bad faith element described in Section 4 (b)(ii) of the Policy. Namely, Respondent registered the domain name <arla.com> to prevent Plaintiff (the owner of the trademark) from reflecting the mark ARLA in a corresponding domain name, and has engaged in a pattern of such conduct.
In fact, Lennartsson is a known cybersquatter, who registers the trademarks of others as domain names under the registrant names PDS and Control Alt Delete.
Lennartsson, a citizen of Sweden, has been a co-defendant in at least two trademark infringement lawsuits regarding past thefts of domain names.
In Swedish Match AB, et al v. Tony Lennartsson, Control Alt Delete Stockholm AB, and PDS, the U.S. District Court for the Eastern District of Virginia enjoined Lennartsson from "...using the ‘Swedish Match’ and "Blend’ names and marks, and any name or mark confusing similar to those names...". The court also ordered, among other things, the cancellation of Lennartsson’s registrations of the domain names <swedishmatch.com> and <blend.com> and the transfer of those domain names to Swedish Match AB. Notably, the court found that "Defendants are all residents of Sweden, who are engaged in a business which ... ‘kidnaps’ other companies’ names and trademarks and registers them as Internet domain names, without permission from the rightful owners of those names. Defendants then offer to sell the domain names back to the companies which claim rights to them.". In view of Lennartsson’s willful infringement, the Court ordered Lennartsson to pay Swedish Match AB’s costs and attorneys fees. Plaintiff attaches as Exhibits 6 and 7 to the Complaint copies of the Order and the Memorandum Opinion.
In Folksam Omsesidig Sakforsakring, et al v. Tony Lennartsson and Control Alt Delete Stockholm AB, the court found that "Plaintiffs are the rightful owners of the Internet domain name ‘folksam.com’", and enjoined the Defendants from "using the ‘Folksam’ name and mark ... including, but not limited to, use as Internet domain names." As in Swedish Match AB et al v. Tony Lennartsson, et al, the court ordered Lennartsson to pay Folksam Omsesidig Sakforsakring’s costs and attorneys’ fees. Exhibits 8 and 9 copies of the Complaint and the Order.
Pursuant to Section 3(b)(ix)(3) of the Uniform Rules, the Respondent’s registration and use of the disputed Domain Name meets the bad faith element described in Section 4(b)(i) of the Policy. The Respondents registered the domain name primarily to sell, rent, or otherwise transfer it back to Plaintiff - the trademark owner - for valuable consideration in excess of his documented out-of-pocket costs directly relating to the domain name.
Attached as Exhibit 10 to the Complaint is a printout filed in the above-noted court actions from the website www.controlaltdelete.se/test.html comprising, in part, of an inventory of Respondent’s trademark-related domain names for sale. The disputed domain name is listed as the 17th domain name available for sale. As recently as October 8, 1999, the website at www.controlaltdelete.com offered domain names for sale. Exhibit 12 to the Complaint is a copy of the www.controlaltdelete.com website dated October 8, 1999.
Moreover, Respondent’s bad faith intention to rent the domain name is evidenced by their current email address, <email@example.com>.
Respondents have an established pattern of registering domain names comprised of the trademarks of others for purposes of ransoming them back to their rightful owners. In fact, Respondents have even gone so far as to have offered to sell back their large inventory of name-napped domains of Sweden’s most well known companies on Swedish national television.
Respondent’s registration and use of the disputed domain name is likely to cause confusion, mistake, or deception as to: (a) the affiliation, connection, or association of Lennartsson and Plaintiff; (b) the origin, sponsorship, or approval of Plaintiff, its services, and commercial activities; and (c) Plaintiff's ability to have a business presence on the Internet under the domain name users are most likely to search.
Respondent’s misappropriation of the domain name will irreparably injure Plaintiff’s reputation and hard-earned goodwill and its ARLA mark. If Respondents are allowed to retain ownership of the infringing domain name, Plaintiff will be unable to use its famous ARLA name and mark to designate and identify a website by the domain name where Internet users most commonly assume Plaintiff’s site to be found.
Furthermore, Complainant has requested the Administrative Panel to issue that the contested domain name <arla.com> shall be transferred to Complainant.
Respondents have not contested the allegations of the Complaint.
6. Discussion and Findings
According to Paragraph 15 (a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The parties are domiciled in Sweden. This means that in addition to the Policy, the Rules and the Supplemental Rules, applicable Swedish principles of law would apply as well.
The Complainant has stated that both PDS and Tony Lennartsson are Respondents in the case. According to Paragraph 1 of the Uniform Rules the "Respondent" means the holder of a domain-name registration.
The Registrar has verified that PDS is the sole current registrant of the domain name at issue, which means that Tony Lennartsson is not the registrant of the domain name.
The Complainant has further stated that Tony Lennartsson is the sole shareholder of PDS. PDS is an incorporated company under Swedish law (AB). Consequently, PDS is a legal entity separate from the individual Tony Lennartsson.
Therefore, Tony Lennartsson is not required to submit to a mandatory administrative proceeding and therefore this Panel is not competent to try a dispute between the Complainant and Tony Lennartsson personally regarding the domain name <arla.com>.
Paragraph 4 (a) of the Policy directs that the Complainant must prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
(ii) that the Respondent has no legitimate interests in respects of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The domain name <arla.com> is identical with the trademark ARLA and the company name Arla except for the addition .com.
PDS has not proven that it has any prior rights or legitimate interests in the domain name.
The word Arla is considered distinctive and registrable as a trademark and the word is not a generic or descriptive word which can be used by anyone.
The prerequisites in the Policy, Paragraph 4 (a) (i) and (ii) are therefore fulfilled.
Paragraph 4 (a) (iii) of the Policy further provides registration and use in bad faith.
Paragraph 4 (b) regulates the kind of evidence that is required.
It is obvious from the facts in the case, i.e. the prior ownership by Complainant of an identical trademark registration, the identity between the dominating element Arla in the corporate name and the domain name at issue, the fact that the word Arla has a high degree of individuality and distinctiveness and the fact that it is highly improbable that PDS AB has selected the name without first having noticed the Complainantґs trademark registration and its wide reputation in the word Arla, the non-contested statement in the Complaint and the contents of the Policy Paragraphs 4 (a) (i-iii) and 4 (b) (i), that the domain name has been registered and is being used in bad faith. Cf. Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003.
Consequently, all the prerequisites for cancellation or transfer of the domain name according to Paragraph 4 (i) of the Rules are fulfilled.
The Complainant has requested transfer of the domain name.
In view of the above circumstances and facts the Panel decides, that the domain name registered by PDS is identical or confusingly similar to the trademark and service mark in which the Complainant has rights, and that PDS has no rights or legitimate interests in respect of the domain name, and that PDS's domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4 (i) of the Policy, the Panel requires that the registration of the domain name <arla.com> be transferred to the Complainant.
The Complaint does not comply with the formal requirements of the Policy and the Uniform Rules in relation to Tony Lennartsson. Therefore, the Panel dismisses the action against Tony Lennartsson.
Dated: April 28, 2000