юридическая фирма 'Интернет и Право'
Основные ссылки










Яндекс цитирования

Рассылка 'BugTraq: Закон есть закон'



Rambler's Top100



Источник информации:
официальный сайт ВОИС

Для удобства навигации:
Перейти в начало каталога
Дела по доменам общего пользования
Дела по национальным доменам

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Tryg-Baltica Forsikring Skadesforsikringsselskab A/S v tryg.com

Case No. D2000-0634

 

1. The Parties

The complainant is Tryg-Baltica Forsikring Skadesforsikringsselskab A/S, a company incorporated under the laws of Denmark and having its principal place of business at Ballerup, Denmark ("the Complainant").

The respondent is tryg.com, which appears to be a trading name of Dennis Willardt Zewillis and possibly other individuals, of New York City, USA ("the Respondent").

 

2. The Domain Name and Registrar

The domain name the subject of this dispute is tryg.com ("the Domain Name"), which was first registered on May 8, 1998.

The registrar of the domain name is Network Solutions, Inc., of Herndon, Virginia, USA ("the Registrar").

 

3. Procedural History

A Complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), both of which were implemented by ICANN on October 24, 1999, was received by WIPO in electronic format on June 20, 2000 and in hard copy on June 26, 2000. The latter was accompanied by payment in the required amount for a single Panelist.

On June 22, 2000 a formal Acknowledgement of Receipt (Complaint) was sent to the Complainant.

On June 22, 2000 Request for Registrar Verification was sent to the Registrar, requesting confirmation that it had received a copy of the Complaint from the Complainant, that the domain name was currently registered with it and that the Policy was in effect, and requesting full details of the holder of the Domain Name and advice as to the current status of the Domain Name.

On June 28, 2000 the Respondent by email objected to the Complaint on the basis that it incorrectly identified Mr Zewillis as the respondent rather than tryg.com.

On June 30, 2000 WIPO by email requested that the Complainant amend the Complaint and serve it in accordance with the Rules.

On June 30, 2000 the Registrar advised that it had received the Complaint and that it is the registrant of the Domain Name, that the Respondent is the holder of the Domain Name, confirming the Respondent’s contact details, advising that the Registrar’s 5.0 Service Agreement was in force, and advising that the Domain Name was in ‘Active’ status.

On July 5, 2000 an amended Complaint, identifying tryg.com as the respondent, was received by WIPO.

On July 10, 2000 the Complaint was checked by WIPO for compliance with the Policy, the Rules and with the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") and was verified as being satisfactory.

On July 10, 2000, the formal requirements having been met, a Notification of Complaint and Commencement of Administrative Proceeding was sent to the Respondent and the Registrar, advising that the formal date of commencement of the administrative proceeding was July 10, 2000 and that accordingly the Response was due by July 29, 2000. The Notification was also sent by email and by courier to the Respondent’s Administrative/Billing contact and Technical/Zone contact.

On July 31, 2000 a Response pursuant to the Policy, the Rules and the Supplemental Rules was received by WIPO by email and on August 2, 2000 by hardcopy.

On August 7, 2000, in view of the Complainant’s designation of a single panelist, WIPO invited Clive Elliott ("the Panel") to serve as the panelist in this Proceeding and transmitted a Request for Declaration of Impartiality and Independence to the Panel.

On August 8, 2000 a Statement of Acceptance and Declaration of Impartiality and Independence was received from the Panel.

On August 9, 2000 a Notification of Appointment of Administrative Panel and Projected Decision Date ("the Appointment Notification") was sent to the Complainant and the Respondent. In accordance with the Complainant’s request, the Appointment Notification informed the parties that the Administrative Panel would be comprised of a single panelist, Mr Clive Elliott, and advised that the decision should be forwarded to WIPO by 22 August, 2000.

On August 9, 2000 the case file was transmitted to the Panel.

On 23 August the Panel stated that to assist the Panel in preparing this decision it requested, in accordance with paragraph 12 of the Rules :

That the respondent provide evidence of the existence, extent and nature of its trading activities in the United States;

That the complainant’ advisors provide an undertaking not to use the evidence for any purpose other than this proceeding and not to provide the evidence to any other party, in paticular the complainant;

That the complainant provide an English translation of the Danish High Court decision annexed to the complaint concerning Mr Zewillis; and

That the complainant provide confirmation that the decision of the High Court referred to above was the final and highest level decision in that matter.

Extensive communications were entered into following this request. The details of these communications do not need to be identified, save to say that, after some leeway was given, the complainant lodged a translation of the said High Court decision. The respondent failed to provide evidence of its alleged trading activities in the United States.

On October 18, 2000 (after making its decision) an email was received from Mr Zewillis indicating that he had asked his secretary to withdraw the shipment of the requested evidence at the last minute and also informed WIPO that the respondent had come upon information that the complainant was about to cease using its company name altogether and that this information had been kept secretary from the Panel and this indicated that the complainant had no interest in the disputed domain name. This issue is discussed below.

Having reviewed the file, the Panel is satisfied that the formal requirements of the Administrative Proceeding have been satisfied.

 

4. Factual Background

Complainant

The Complainant asserted and provided evidence in support of the following, which is accepted by the Panel.

The Complainant is a large insurance company operating in Denmark. It registered the following trade marks in Denmark prior to May 8, 1998 in international Class 35 (advertising and business services) and Class 36 (insurance and financial services):

VR 1995 8124 TRYG <devicemark>

VR 1998 2597 TRYG-BALTICA DIRECT <wordmark>

VR 1998 2596 TRYG DIRECT <wordmark>

VR 1998 2595 TRYG FINANS <wordmark>

VR 1998 2594 TRYG-BALTICA DIREKTE <wordmark>

VR 1998 2593 TRYG DIREKTE <wordmark>

VR 1997 1701 TRYG-BALTICA SPARPENSION <wordmark>

VR 1997 1700 TRYG-BALTICA BASISPENSION <wordmark>

VR 1996 3331 TRYG-BALTICA FORSSIKRING <wordmark>

VR 1996 3330 TRYG-BALTCIA <wordmark>

VR 1995 1886 TRYG GRUPPEFORSIKRING <wordmark>

Mr Zewillis has previously been convicted by the High Court of Denmark for violation of the Danish Marketing Practices Act. This arose out of his registration of the domain name <beologic.com> and subsequent offer of it for sale to the Danish Company Beologic A/S for valuable consideration in excess of his out of pocket expenses directly related to the domain name.

Respondent

The Respondent asserted and provided evidence in support of the following, which is accepted by the Panel.

The Respondent registered the Domain Name <tryg.com> on May 8, 1998.

The word TRYG is a common word in Danish and is variously translated into English as ‘safe’, ‘safety’, ‘secure’, ‘not threatened’, ‘without worries’, ‘outside danger’, or ‘untouchable’.

 

5. Assertions

Complainant

In relation to paras 4(a), (b), (c) of the Policy, the Complainant makes a number of assertions.

Firstly, the Domain Name is identical or confusingly similar to the Complainant’s registered trade marks and service marks. In support, the Complainant asserts that the trade mark TRYG is generally recognised in Denmark as being synonymous with the Complainant and its business.

Second, the Respondent has no rights or legitimate interests in respect of the Domain Name. In support of this assertion the Complainant notes that the Respondent has neither used nor demonstrated preparations to use the domain name in connection with a bona fide offering of goods and/or services.

Third, the Domain Name was registered and is being used in bad faith. The Complainant’s support for this assertion is as follows.

In the Beologic case, there was evidence that Mr Zewillis had registered over 330 domain names while resident in Denmark, many of which were well known Danish companies, and offered some of these for sale.

At the time of registration of the Domain Name, Mr Zewillis was resident in Denmark and proposed selling the Domain Name to the Complainant. While he did not actually contact the Complainant, offering to sell the Domain Name to them, this was because of his conviction in the Beologic case and/or that the Complainant had not contacted him at that time.

Through being a resident of Denmark, Mr Zewillis would have known that the Complainant was a large well known insurance company in that country when the Domain Name was registered.

The Domain Name was registered to prevent the complainant from reflecting the mark TRYG in the corresponding domain name. The Beologic judgment against him proves that he has engaged in a pattern of such conduct.

The Domain Name was registered for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket expenses.

The Domain Name has no home page attached to it and no activity has been connected to the domain name at any point since its registration.

Respondent

The Respondent has provided a detailed Response, making a number of assertions.

In relation to the Complainant’s allegation that the Domain Name is identical or confusingly similar to the Complainant’s registered trade marks, the Respondent notes that the Complainant does not have the word TRYG registered as a trade mark and also suggests that this word is not registrable under Danish trade mark law, which is why the Complainant instead has a simple device mark incorporating the word TRYG.

In relation to the Complainant’s allegation that the Respondent has no rights or legitimate interests in respect of the Domain Name, the Respondent makes the following assertions.

The Respondent has existing trade mark rights to both the domain name <tryg.com> and the organization name TRYG.COM in the USA, Denmark and other jurisdictions. While samples of the Respondent’s logo have been provided, no evidence of their use has been provided.

The Respondent also claims to have existed since Spring 1998 but has not provided any evidence in support of this claim. It has stated that it is developing a model for a business idea and obtaining venture capital funding, but that it cannot disclose the nature of its business model or activities for fear of others adopting the same approach and entering the market before the Respondent. The Respondent does, however, state that it does not provide business in the insurance, banking or similar areas and will not be in direct competition with the Complainant’s business in Denmark or any other country in the world. The Respondent anticipates launching its ‘revised’ website for business later this year (despite there being no evidence that the Respondent has ever had a website).

TRYG is a common word in Danish and other Scandinavian languages and accordingly is not ‘owned’ by any one entity.

TRYG is used as a part of the company name of many other companies and organisations in Denmark, and similar words are used in other parts of Scandinavia, notably Trygg Hansa AB, a Swedish insurance company substantially larger than the Complainant.

The Complainant is not known in Denmark as TRYG, but as TRYG-BALTICA. In support of this the Respondent notes that the Complainant’s website is located at <www.tryg-baltica.dk> (though the Panel notes that the domain name <www.tryg.dk> also connects to the website of the Complainant).

The Complainant has a number of other domain names registrations that it can use to promote its business, eg <www.tryg-baltica.com>, <www.tryg.dk>, <www.tryg.net> and <www.tryg.org>.

The court document provided by the Complainant is fabricated (though the Panel has independently verified that a decision in respect of <www.beologic.com> was published against Mr Zewillis). The complainant has also supplied to the Panel a translation of the decision, which was affirmed on appeal.

By approaching the Respondent with a desire to purchase the Domain Name (as evidenced by correspondence between the parties provided by both parties), the Complainant has disentitled itself from claiming that the Respondent’s registration of the Domain Name infringes its rights.

 

6. Discussion and Findings

Para 4(a) of the Policy requires that the Complainant must prove each of the following:

(i) the Domain Name is identical or confusingly similar to the Trade Mark: and

(ii) the Respondent has no right or legitimate interest in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

Para 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by para 4(a)(iii) referred to above.

Para 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in para 4(a)(ii) referred to above.

Identical or confusingly similar

The Complainant does not have a trade mark registration for the word TRYG alone. However, it has a number of trade mark registrations that feature this word in combination with a word descriptive of a particular product or service offered by the Complainant. The Complainant also has a trade mark registration for a device featuring the word TRYG surrounded by a simple border, the dominant feature of that trade mark being the word TRYG.

The Respondent has noted that a civil action brought in Denmark for recovery of the Domain Name earlier this year was dismissed, one of the reasons being that the Domain Name was not covered by the Complainant’s trade mark registrations. Without an opportunity to review this decision, a copy of which has not been provided, the Panel is not in a position to take this claim by the Respondent into account.

The Respondent has also asserted that the word TRYG alone could not be registered under Danish trade mark law. The Panel does not consider this in and of itself to necessarily prevent the Domain Name being similar to the Complainant’s trade mark registrations.

On the evidence before it, the Panel considers that the Domain Name is confusingly similar with the Complainant’s trade mark registrations.

No right or legitimate interest

The Complainant has baldly asserted that the Respondent has no right or legitimate interest in the Domain Name.

The Respondent has countered this by claiming to have been operating a business in the United States since 1998 under the name tryg.com, though it has refused to provide details as to the nature of that business and has not provided any evidence in support of its claim, claiming confidentiality issues make such disclosure undesirable. It has, however, noted that the business will not directly compete with the Complainant and its business, whether in Denmark or elsewhere.

Both the Panel and the Complainant’s representatives (in response to a request from the Panel) have provided confidentiality undertakings that address the confidentiality issue. As discussed above, it was on this basis that the Panel invited the Respondent to provide evidence in support of its claims. Mr Zewillis is either closely involved with or the guiding hand of the respondent. He identifies himself in the Record as variously an Internet Lawyer and a Master of Commercial and Corporate Laws at the University of London. It is reasonable to infer that he must have understood the relevance of this evidence. Having not received such evidence, notwithstanding numerous extensions, it is assumed that such evidence does not exist or the respondent has chosen not to provide it.

Because of this lack of substantiation, the Panel must consider whether the fact that the Domain Name consists of a common Danish word is sufficient to grant the Respondent a right or legitimate interest in the Domain Name.

A number of previous WIPO decisions have addressed this question. In the case No.D2000-0161 the domain name in issue was "zero.com" Relief was denied on the basis that the word "zero" is a common English word and the respondent had provided a proper explanation for its choice of this word. However, in Case No.D2000-0186 "libra.com" even though relief was denied, it was on a somewhat different basis. In this case, the question was asked whether mere registration of a generic name without making preparations to use the domain name for the bona fide offering of goods or services is sufficient to demonstrate the rights or legitimate interests required by paragraph 4(a) of the UDRP. The respondent provided no evidence that it had made preparations to use the domain name for the alleged purpose. The Panel found that the mere speculative idea for a bona fide business application of a generic domain name does not fall within any of the circumstances listed under paragraph 4(a) UDRP as evidence of rights or legitimate interests.

Likewise, in case No.D2000-0016 "allocation.com", while relief was once again declined the Panel noted that while "allocation" may be considered a common word in English speaking countries, this may not be the case in other countries such as Germany. It was also found that in view of the territorial nature of trade mark rights those terms which are descriptive or generic for particular goods or services and/or in a particular country, may be considered valid trade marks for other goods and services and/or in a country with a different language.

If this view is correct, then presumably the opposite applies. That is, trade mark name with a particular meaning in a particular country may be meaningless outside that country or region. Furthermore, while a trade mark may be highly descriptive in a certain language, this does not preclude an entity from obtaining trade mark rights in another country, or, through extensive use. The respondent does not dispute the complainant’s use of the term "tryg"; simply that it is used in conjunction with other terms. This does not, in itself, deny the ability of the complainant to claim trade mark rights.

It is not disputed that the respondent knew of the complainant’s use of the ‘tryg’ term as part of its trade mark; a factor absent in the "allocation.com" case.

Furthermore, based on the comments taken from the "libra.com" decision (no preparations to use domain name) and lack of knowledge about the complainant’s rights in the "allocation.com" case distinguishes the present case from these earlier two decisions.

On this basis, I find that the respondent lacked a right or legitimate interest in the subject domain name.

Registered and used in bad faith

The panel accepts that the complainant is of sufficient repute that it is reasonable to infer that Mr Zewillis must have heard of the complainant prior to registering the Domain Name. While the decision of the Danish High Court in the Beologic case does not specifically state the number of other Domain Names registered by Mr Zewillis and/or his associated companies, it is understood it confirms that he was the registrant of a number of these. Accordingly, the panel accepts the complainant’s assertion that Mr Zewillis and/or his associated companies had registered some 330 such Domain Names.

Accordingly, the panel finds that the complainant has made out a prima facie case that the Domain Name was registered and is being used in bad faith, in that the Domain Name was registered with knowledge of the complainant and its rights and with an intention of either preventing the complainant reflecting the mark TRYG and a corresponding Domain Name or for the purpose of selling, renting or otherwise transferring the Domain Name to the complainant for valuable consideration.

Accordingly, it was encumbant on the respondent to challenge or displace this finding.

The respondent’s assertions do not specifically address this issue. Instead, they focus on the respondent’s claim that it intends operating a legitimate business in the United States in combination with the Domain Name. The respondent has not stated why this particular Domain Name was chosen or suggested that its English meaning will be clear to its proposed customers and was registered on that basis.

In short, the respondent has not satisfactorily justified its choice of the Domain Name having been given the opportunity to do. Accordingly the panel finds that the Domain Name was registered and is being used in bad faith.

Finally, it is necessary to deal with Mr Zwellis’ belated allegation that the complainant has no interest in the disputed Domain Name and accordingly that it would be inappropriate for the domain name to be transferred to it. Even if this were a valid consideration, which is doubted, it does not, in the Panelist’s view, alter the above finding. It should be noted that this has been a protracted and time consuming administrative procedure. The respondent has been given substantial leeway. However, the line has to be drawn somewhere.

 

7. Decision

The Domain Name should be transferred to the complainant.

 


Clive L. Elliott
Panelist

Dated: October 24, 2000

 

Источник информации: http://www.internet-law.ru/intlaw/udrp/2000/d2000-0634.html

 

Добавить эту страницу в закладки:

 


 

Произвольная ссылка:

Разработка сайта
ArtStyle Group

Уважаемый посетитель!

Вы, кажется, используете блокировщик рекламы.

Пожалуйста, отключите его для корректной работы сайта.