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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Tryg-Baltica Forsikring Skadesforsikringsselskab A/S .v. Domain ID, Inc

Case No. D2000-0645

 

1. The Parties

The Complainant is Tryg-Baltica Forsikring Skadesforsikringsselskab A/S of Klausdalsbrovej 601, DK-2750 Ballerup, Denmark.

The Respondent is Domain ID, Inc c/o domainID.com, formerly of P O Box 165, 245 8th Avenue, New York, NY 10011, United States of America and now of Suite # D289, 244 Fifth Avenue, New York, NY 10001, United States of America.

 

2. The Domain Name and Registrar

The domain name in issue is "tryg-baltica.com"

and the Registrar is Network Solutions, Inc.

 

3. Procedural History

The WIPO Arbitration and Mediation Center [the Center] received the Complaint on June 21, 2000, [electronic version] and on June 26, 2000, [hard copy]. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy [the Policy], the Rules for Uniform Domain Name Dispute Resolution Policy [the Rules], and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [the Supplemental Rules]. The Complainant made the required payment to the Center.

The formal date of the commencement of this administrative proceeding is July 4, 2000.

On June 26, 2000, the Center transmitted via email to Network Solutions, Inc a request for registrar verification in connection with this case and on July 3, 2000, to Network Solutions, Inc transmitted by email to the Center Network Solution's verification response confirming that the registrant is Domain ID, Inc and that the contact for both administrative and billing purposes is domainID.com.

Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on July 4, 2000, to

hostmaster@domainid.com;
postmaster@tryg-baltica.com; and
ntxhostmaster@NTX.NET

this Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the Response was due by July 23, 2000. On the same day the Center transmitted by fax and by mail copies of the foregoing documents to:

Domain ID, Inc (TRYG-BALTICA-DOM)
c/o domainID.com
P O Box 165
245 8th Avenue
New York
NY 10011
United States of America

The Response was received on August 4, 2000, [electronic version] and because that version was not legible on August 14, 2000, a further electronic version was received. Acknowledgement of Receipt of Response was sent by the Center on August 14, 2000, using the same contact details and methods as were used for Notification of Complaint and Commencement of the Administrative Proceeding.

Prior to that, on July 18, 2000, the Respondent advised the Center by email of a change of address to

domainID.com
244 Fifth Avenue
Suite # D289
New York
NY 10001
United States of America

and that, as a result of both that change and absence on summer vacation, notification of the Commencement of this Administrative Proceeding had only just been received.

The Respondent requested an extension of time for service of its Response and that the Complaint be sent by courier to its new address (above). The Center replied on the same day and a further copy of the Complaint was despatched to the Respondent at that address. On July 21, 2000, the Center advised the Respondent that its request that time for Response be extended to August 4, 2000, was granted.

Because the Response received in electronic form by the Center on August 4, 2000, was incomplete [the Center was unable to open the attachments to the Response], on August 7, 2000, the Center requested the Respondent to resend the attachments. The Response [hard copy] was eventually received by the Center on August 24, 2000.

On August 31, 2000, the Complainant provided the Center with an English language translation of Annex 3 to the Complaint.

The Respondent transmitted to the Center on September 11, 2000, [email] and on September 13, 2000, [fax] its objection to the Panellist appointed by the Center. The Center replied on September 18, 2000, that it would appoint a new Panellist in this case.

Having received on October 6, 2000, Mr David Perkins' Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr David Perkins was formally appointed as the Sole Panellist. The Projected Decision Date was October 18, 2000. The Sole Panellist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.

Having reviewed the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondents". Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the Response, the Policy, the Rules and the Supplemental Rules.

 

4. Factual background

4.1 The Complainant

The Complainant, Tryg-Baltica Forsikring Skadesforsikringsselskab A/S, is a Danish Insurance Company.

4.2 The Respondent

The Respondent, Domain ID, Inc. describes itself as a five year old Internet based company, incorporated under New York State law and doing business only in the State of New York. The Respondent states that it is "… working with the world's largest web hosting company VERIO".

4.3 The Complainant's Trade Marks

The Complainant is the owner of the following trade mark registrations:

 

Country

Registration No

Mark

Goods / Services

Date

Denmark

VR 1996 3330

TRYG-BALTICA

36

Filed May 25, 1995

Registered June 17, 1996

Denmark

VR 1996 3331

TRYG-BALTICA FORSIKRING

36

Filed May 25, 1995

Registered June 17, 1996

 

Both of the above service marks were applied for and registered before registration of the domain name in issue on October 14, 1996. The Complainant's claim that the name and mark TRYG-BALTICA is generally recognised in Denmark as being synonymous with the Complainant's insurance company.

4.4 The Respondent submits that the Complainant's TRYG-BALTICA name and mark translates in English to "safe Baltic Area", which is essentially descriptive of an insurance company doing business in / located in the Baltic Area. The word "tryg" (safe) is, for example, used by another Scandinavian insurance company TrygHansa AB, "Hansa" denoting the Hanseatic towns of the Baltic Area. The Respondent's case is, therefore, that the Complainant's name and mark does not constitute "a trademark or service mark" for the purposes of the Policy, because "their name is a weak generic word taken from the dictionary".

 

5. Parties' Contentions

5.1 Complainant

The Complainant contends that the domain name in issue is identical and confusingly similar to the Complainant's TRYG-BALTIC name and mark, that the Respondent has no rights or legitimate interests in respect of the domain name and that it was registered and is being used in bad faith.

5.2 Respondent

5.2.1. As to the first of the Complainant's contentions, the Respondent counters on 4 grounds.

 

First, that the Complainant's TRYG-BALTICA name and mark is generic and does not constitute a trademark or service mark as required by the Policy.

 

Second, that in any event, the domain name is not identical or confusingly similar by reason of the additions of "www" and ".com".

 

Third, that as to "confusingly similar", it is entirely possible "… that two or more companies … can co-exist using the same or similar name, as long as the existence is based upon non-competing areas of business".

 

Fourth, that having co-existed since the domain name in issue was registered in October 1996 the Complainant is now too late to complain that its marks and the domain name in issue are confusingly similar.

5.2.2 As to the second of the Complainant's contentions, the Respondent counters as follows:

 

First, the Respondent maintains that "… the only real requirement concerning the use and maintenance of domain names in the .com, .net and .org field" is that "… the domain name must be connected to two or more servers that are in active use and connected to the Internet".

 

Second, the Respondent states that "we are in fact ourselves using the domain name in question" which "we have used in a serious and positive manner for four years and to no detriment to anybody else". In that respect, the Respondent does not identify what such use is other than that it is "for our own private purposes" and that:

"We are alone a company serving only one larger company here in New York with e-commerce solutions and general IT solutions".

 

Third, that the Complainant is already adequately equipped and able to conduct its business using other domain names of which it is the proprietor, namely;

"www.tryg-dk" registered July 1, 1996

"www.trygbaltica.dk" registered June 22, 2000

"www.tryg-baltica.dk" registered July 1, 1996

"www.baltica.dk" registered December 17, 1996

"www.trygbaltica.com" registered November 16, 1996

"www.tryg.net" registered January 13, 2000

"www.tryg.org" registered March 27, 2000

of which "www.tryg.dk" is the main domain name used by the Complainant to inform visitors of its business.

 

Fourth, that "the Respondent has a whole range of ideas and projects ready" but these are trade secrets which it will not divulge.

 

Fifth, that "legitimate interests" are satisfied by:

"… the continued registration, maintenance and recurring fees paid as well as in the non-infringing "under construction" web page associated with the domain name owned by the Respondent".

 

Sixth, that it is only fair that the Complainant first make actual use of its "www.trygbaltica.com" domain name - which it does not - "before it tries to steal other domain name owners' domain names".

 

Seventh, that there has been abandonment by the Complainant of any right to complain about the domain name in issue by reason of its inaction for almost 4 years since registration of that domain name.

5.2.3 As to alleged registration of the domain name in issue in bad faith, the Respondent replies as follows.

 

First, it had no knowledge of the Complainant at the time the domain name was registered in October 1996.

 

Second, it knows nothing about business in Northern Europe, nor does it employ any Scandinavians.

 

Third, as to the hyphen the Respondent states that if it

"had had the Complainant in mind, it would have been easier to register the name "www.trygbaltica.com" without the hyphen. Since this is the way most companies prefer to have their domain names, since the visitors often forget any hyphen in a name.

The Respondent registered the domain name with the hyphen, since it was two separate words that made up the domain name.

Also, the Complainant later on themselves registered the "www.trygbaltica.com" domain name without the hyphen. But they have yet to even set up a website for their name".

 

Fourth, the Respondent states that it "registered the domain name "www.tryg-baltica.com" with a very specific projection in mind. This project is still being seriously developed by the Respondent and its partners". No information as to the nature of that project is, however, given.

5.2.4 As to the alleged use of the domain name in issue in bad faith, the Respondent's reply is as follows.

 

First, it is the Complainant whom, through its Danish lawyers, offered to purchase the domain name in issue in March 2000. That offer was rejected by the Respondent.

 

Second, the Complainant routinely offers to buy domain names from the registrants.

"In short, they act as a domain name buyer, seller, broker and reseller".

 

Third, the domain name in issue "… has never been used for commercial or non-commercial matters. The disputed domain name has all along been parked and reserved for later use by the Respondent".

 

Fourth, the domain name is not preventing the Complainant trademark owner from reflecting that name in a corresponding domain name. The Respondent points to the Complainant's existing domain names set out in paragraph 5.2.2. above.

 

Fifth, the domain name in issue is not being used for disrupting the Complainant's business. In fact, as stated, it refers only to an under construction web page.

 

Sixth, it follows that the Complainant is not using the domain name in issue to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant's mark.

 

6. The Disputed Facts

6.1 The Complainant seeks to link the Respondent to a Mr Dennis Willardt Zewillis, who was found by the Danish Eastern High Court in a Judgment delivered on November 26, 1999, to have registered more than 330 domain names, the majority of which incorporated well known Danish company names or trademarks. The Plaintiff in that action was Baan Nordic A/S [formerly, Beologic A/s] and the Defendant was Mr Zewillis. It appears that, as Beologic A/s, the Plaintiff had been a part of the Bang & Olufsen Group. The Court held that Mr Zewillis [who was a Danish National in October 1996 when the domain name in issue in this administrative proceeding was registered] and Domain ID, Inc had co-operated closely in connection with the registration and sale of those domain names. As a Danish National at the relevant time, the Complainant contends that Mr Zewillis and, hence, the Respondent would certainly have been aware of the Complainant, which is a well known Danish Company (see, paragraph 4.3 above). This pattern of conduct is relied upon by the Complainant for the purpose of making out its case under paragraphs 4a(ii) and (iii) of the Policy.

6.2 This case involved an appeal by Mr Zewillis from judgement against him by the Copenhagen City Court on December 2, 1997. From the English translation of the Judgement of the Danish Eastern High Court on the Appeal, it appears that Mr. Zewillis has a Master of Laws degree but was unemployed at the time of the action., He claims that his brother was involved with Domain ID, Inc and although Mr Zewillis used his company, Zewillis Legal Services, to contact a number of Danish companies he maintained that registration of domain names in his name was undertaken by Domain ID, Inc without his authority or even his knowledge.

6.3 The Plaintiff pointed to Mr Zewillis' email address as being the administrative contact for the domain name in issue, "beologica.com", of which Domain ID, Inc was the registrant. As the Panel understands it, the Danish Court took jurisdiction over Mr Zewillis on this basis, he being the contact for domainID, Inc. The High Court affirmed the judgement of the lower Court, finding that the registration of the domain name "beologic.com" was made by Mr Zewillis for the purpose of offering it to the Plaintiff "at an over price in contravention of fair trading practices under the Danish Marketing Practices Act".

6.4 The Respondent responds to this as follows.

 

First, no legal action has ever been filed against domainID. com, Inc in the United States or in any other country.

 

Second, the Respondent has not done business or had other relations with Denmark.

 

Third, that the English translation of the judgement is "either false or without the proper translations and notarisations to become valid documents for the Panel to consider".

 

Fourth, that the Respondent is located in New York City only, it knows nothing about business in Northern Europe and it employs no Scandinavians.

 

7. Discussion and Findings

7.1 Under paragraph 4a of the Policy, the Complainant must prove three distinct elements in order to succeed with a claim for transfer of a domain name, namely:

- that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- that the Respondent has no rights or legitimate interests in respect of the domain name; and

- the domain name has been registered and is being used in bad faith.

7.2 Identical or Confusingly Similar

The Panel finds that the Respondent's challenge to the Complainant having rights in the TRYG-BALTICA name and mark fail. The mark is a registered service mark in Denmark and there is no challenge to the Complainant's case that in Denmark the TRYG-BALTICA name and mark is synonymous with the Complainant insurance company. This administrative proceeding is not the forum for a challenge to the validity of that service mark.

7.3 The Respondent refers to the Decision in Bosco Products Inc .v. Bosco E-Mail Service, The National Arbitration Forum [NAF], Case FA94828] In that case, the Complainant owned the trademark BOSCO used since 1928 in connection with chocolate syrups and chocolate flavoured milk. The Respondents were in the vanity e-mail business, which entails the leasing of individual use in a shared email service, such that its customers include "John@bosco.com" and "Marianne@bosco.com". The Panel held that use made by the Respondents' vanity email service was not a trademark use of the word BOSCO. The Respondent here, presumably, compares its business involved in supplying e-commerce and general IT solutions - albeit not under or by reference to the domain name in issue (which is not used) - with the insurance business of the Complainant.

7.4 With respect to the Panel in the BOSCO case, this Panel does not consider that paragraph 2a (i) of the Policy requires a Complainant to make out a case of trademark infringement. The Policy could quite easily have stated that to be a requirement in plain and direct terms. It does not. The Policy requires the Complainant to establish rights in the trademark being asserted. If the domain name is identical to that trademark, then the holder of the anterior trade mark has met the requirement of paragraph 4a(i) of the Policy. In this case the Respondent contends that the additions of "www" and ".com" differentiate the domain name in issue from the Complainant's trade mark. This Panel, in common with many other Panels rendering decisions under the Policy, disregards those additions. In substance, the domain name in issue and the Complainant's trademark are identical.

7.5 As to delay in bringing this Complaint, the UDRP has only been in operation since the beginning of this year. In March 2000, the Complainant's Danish Counsel, Hofman-Bang A/S, offered to buy the domain name in issue. The Respondent replied that it was not interested in selling and in June 2000, this Complaint was brought. There has been no delay such as to preclude the Complainant from succeeding in satisfying the requirements of paragraph 4a(i) of the Policy. The Decision in the BOSCO case was based on an entirely different fact set to this administrative action. In that case, the Respondent had been trading using the BOSCO name and mark for nearly 4 years and it was held that the Respondent had rights and a legitimate interest in the domain name by virtue of that trading. Here, there has been no use by the Respondent of the domain name in issue and delay by the Complainant does not arise for consideration. Further, it was not until November 1999 that the Appeal Court in Denmark affirmed the finding that the Respondent was involved in the registration and subsequent sale of domain names incorporating the trademarks / names of a number of Danish companies and, hence, provided the Complainant with evidence of a patent of conduct upon which to bring this Complaint.

7.6 In the light of the foregoing, and of the fact that the Respondent is not licensed or otherwise authorised to use the Complainant's mark(s) the Panel finds that the Complainant succeeds in satisfying the requirements of paragraph 4a(i) of the Policy.

7.7 Rights or Legitimate Interests

Paragraph 4c of the Policy sets out circumstances which, if found the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to the domain name for the purposes of paragraph 4a(ii). These are not exclusionary of other circumstances which may show such rights or legitimate interests.

7.8 The Respondent's case under paragraph 4a(ii) of the Policy is summarised in paragraph 5.2.2. above. First, the Respondent seeks to being itself under paragraph 4c(i) of the Policy by asserting

"(i) before any notice to it of the dispute, its use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services".

The Respondent admits that no actual use of the domain name in issue has been made. In fact, the Respondent states:

"The disputed domain name has all along been parked and reserved for later use by the Respondent" (see, paragraph 5.2.4. above).

As to demonstrable preparation to use, the Respondent states that it registered the domain name in issue in October 1996, "… with a very specific project in mind. This project is still being seriously developed by the Respondent and its partners" (see, paragraph 5.2.3. above). However, the Respondent gives no indication of what that project is, save to say that its "range of ideas and projects" are secret. By contrast, the Response also asserts to the contrary that it is, in fact, using the domain name in issue which "… we have used in a serious and positive manner for four years and to no detriment to anybody else" (see, paragraph 5.2.2. above). Such use would appear to be by reason of

"… the continued registration, maintenance and recurring fees paid as well as in the non-infringing "under construction" web page associated with the domain name owned by the Respondent". (See, paragraph 5.2.2. above).

The Rules provide that the Panel shall determine "the relevance, materiality and weight of the evidence" [Rule 10(d)]. The Panel finds nothing in the evidence which satisfies it that the Respondent has either used or made demonstrable preparations to use the domain name in issue and, therefore, fails to bring itself within the circumstances set out in paragraph 4c(i) of the Policy.

7.9 The Panel rejects the Respondent's case that the Complainant is adequately served by other domain names as not relevant to paragraph 4a(ii) of the Policy.

7.10 The Respondent's assertion that continued maintenance etc of the domain name (see, paragraphs 5.2.2. and 7.8 above) constitute legitimate interests is also rejected by the Panel.

7.11 For the reasons already stated, the Panel further rejects the Respondent's case of abandonment by the Complainant.

7.12 In summary, the Panel finds that the Respondent has advanced no evidence to bring itself within the circumstances set out in paragraph 4c(ii) or (ii) of the Policy. Finally, the Respondent's theory that by connecting to the domain name two or more servers that are in active use and are connected to the Internet is without relevance to paragraph 4a(ii) of the Policy. The Panel, therefore, finds that the Complainant succeeds in meeting the requirements of paragraph 4a(ii) of the Policy.

7.13 The Respondent also relies on the Decision in Bridgestone Firestone Inc & Others .v. Jack Myers [Case D2000-0190]. That case dealt with paragraph 4c(iii) of the Policy - "making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark in issue"!. On the facts, that decision cannot be applied in this case. In Firestone Mr Myers was a former Firestone employee who created a website under the "bridgestone-firestone.net" domain name in issue for the purpose of criticism and commentary about the Complainants. The Panel applied a fair use doctrine and the US right of free speech. By contrast, in this case these facts do not arise: the domain name in issue here is not and has never been used. Nor is there any suggestion that it is intended to be used for such purposes. In any event, the Panel by way of comparison refers to its own decision in Case D2000-0038 The Channel Tunnel Group Limited .v. John Powell.

7.14 Registered in Bad Faith

The Respondent's case is summarised in paragraph 5.2.3. above. Paragraph 4b of the Policy sets out circumstances which, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

7.15 The Complainant points to the Beologic decision of the Danish Courts (see, paragraphs 6.1 to 6.4 above) as indicating a pattern of conduct by the Respondent of registering over 300 domain names, the majority of which incorporate well known Danish Company names and trademarks. The Danish Court found on the facts a connection in that respect between a Mr Zewillis and the respondent and held that the Domain in issue in that case had been registered (in the name of the Respondent with Mr Zewillis as the Administrative contact) for the purpose of offering it to the trademark owner at an overprice in contravention of fair trading practices under Danish law.

7.16 The Respondent here makes a bare denial of any involvement in that case, also suggesting that the English translation of the judgement is false or improperly notarised. The Respondent's denials are not persuasive. It is true that it was not a party to the Danish case against Mr Zewillis. But, the Danish Court had jurisdiction since Mr Zewillis was the Administrative Contact for the domain name in issue and a Danish national: the need to join the Respondent did not, therefore, arise. Next, the fact, if it be the case, that the Respondent has neither done business in Denmark nor does it employ Scandinavians is not, in this Panel's opinion, persuasive to rebut the pattern of conduct found by the Danish Court. Whether or not Mr Zewillis had a brother who was employed by the Respondent was not material to the decision of the Danish Court, nor is it of any evidential value here.

The Respondent has failed to produce in the Response a convincing explanation to rebut the finding of the Danish Court. The Panel concludes, on the balance of the similar fact evidence presented by the Complaint and not convincingly rebutted by the Respondent, that the domain name in issue was registered in bad faith. Further, it is just not credible that the Respondent, who professes ignorance of all things Danish, should register as a domain name either the name of well known Danish Insurance Company or the Danish language equivalent of "safe Baltic Area".

7.17 Used in Bad Faith

The domain name in issue has not been used, nor does it appear to have been offered for sale to the Complainant, whether at an overprice or at all. How then can there have been used in bad faith? In the Panel's view such use is demonstrated by the Respondent's lack of rights or legitimate interests in the domain name in issue, by the pattern of conduct established by the judgement of the Danish Court and by the contradictory assertions made in the Response (identified in this Decision). It has repeatedly been held by WIPO Panels that inaction can constitute use in bad faith for the purposes of paragraph 4a(iii) of the Policy, provided that there are convincing indicia of bad faith by the Respondent.

7.18 The fact that the Complainant has other domain names incorporating its name and/or trademark is irrelevant.

7.19 There is no evidence to support the suggestion that the Complainant is "a domain name buyer, seller, broker or reseller". If this is intended to suggest reverse domain name hijacking by the Complainant, the Panel rejects such suggestion.

7.20 In the circumstances, the Panel is satisfied that on the evidence the Complainant succeeds in establishing both registration and use in bad faith.

 

8. Decision

For all the foregoing reasons, the Panel decides that the Complainant has succeeded in satisfying the three requirements of paragraph 4a(i) to (iii) of the Policy and directs that the domain name "tryg-baltica.com" be transferred to the Complainant.

 


 

David Perkins
Sole Panellist

Dated: November 7, 2000

 

Источник информации: http://www.internet-law.ru/intlaw/udrp/2000/d2000-0645.html

 

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