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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ullfrottй AB v. Bollnas Imports
Case No. D2000-1176
1. The Parties
The Complainant in this administrative proceeding is Ullfrottй AB, a joint-stock company incorporated under the laws of Sweden, and with its principal place of business in Östersund, Sweden.
Respondent is Bollnas Imports, North Hollywood, California, USA.
2. The Domain Name and Registrar
The domain name that is subject of this Complaint is "ullfrotte.com"
The registrar with which the domain name is registered is Network Solutions Inc, USA.
3. Procedural History
A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on September 6, 2000. The Complaint was later filed by fax and hard copy. The WIPO Center sent an Acknowledgment of Receipt of the original Complaint on September 8, 2000.
On September 12, 2000, a Request for Registrar Verification was transmitted to the Registrar. The Registrar confirmed on September 14, 2000, the information in the request and forwarded the requested WHOIS details, and stated that the domain name was on "active" status.
The policy in effect at the time of the registration of the domain name at issue is the Network Solutionsґ 5.0 Service Agreement.
The assigned WIPO Center Case Administrator completed a Formal Requirements Compliance Checklist on September 15, 2000.
The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the applicable requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy.
The required fee for a single-member Panel has been paid by the Complainant.
No formal deficiencies having been recorded, on September 15, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, the Registrar and ICANN), setting a deadline of October 4, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by the required means.
The Respondent did not file a formal response within the specified period. Accordingly, on October 5, 2000, the WIPO Center sent a Notification of Respondent Default to the parties. The Respondent has, however, sent an e-mail to the WIPO Center on October 10, 2000, explaining that he sells merchandise from Ullfrottй and is having talks with the official distributor in the US to get the distributorship in Southern California. The WIPO Center acknowledged the e-mail and asked the Respondent to file a formal response, which would then be decided by the Panel, whether or not to accept. The Respondent did not file such a formal response.
On October 6, 2000, in view of the Complainant’s designation of a single panelist the WIPO Center invited Mr. Knud Wallberg to serve as a panelist in Case No. D2000-1176, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.
Having received Mr. Knud Wallberg’s Statement of Acceptance and Declaration of Impartiality and Independence on October 11, 2000, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Knud Wallberg was formally appointed as the Sole Panelist. The Projected Decision Date was October 25, 2000.
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-mail from the Respondent, the Policy, the Uniform Rules and the WIPO Supplemental Rules.
4. Factual Background
The Complainant is the owner of the trademark ULLFROTTE. They own several trademark registrations and applications for the trademark ULLFROTTE and ULLFROTTE ORIGINAL in various countries of the world. Registrations predating the registration of the domain name "ullfrotte.com" have been obtained in Benelux, Switzerland, Denmark and France for various goods in International Class 25 such as clothing articles, particularly socks and underwear.
5. Parties’ Contentions
The trademark ULLFROTTE ORIGINAL was first applied for registration in 1986, well before the domain name "ullfrotte.com" was registered. Complainant’s registration certificates for the trademark ULLFROTTE ORIGINAL give evidence to the validity of Complainant’s trademark and the Complainant’s exclusive right to this trademark.
The domain name "ullfrotte.com" is confusingly similar to the trademark ULLFROTTE ORIGINAL. The Respondent has no rights to the trademark ULLFROTTE /ULLFROTTE ORIGINAL. The Respondent had knowledge of the Complainant and their products and trademark ULLFROTTE/ ULLFROTTE ORIGINAL when they registered the domain name. The respondent had bought a few products from the Complainant and wanted to act as their distributor. As they only managed to sell a small amount of products, they were not allowed to continue to sell the Complainant’s products. At first the Complainant had no knowledge of the fact that the Respondent had registered the domain name "ullfrotte.com". Based on the above, it is evident that the Respondent was aware of that the trademark was identical or confusingly similar to trademarks in which the Complainant had rights. The domain name has therefore been registered in bad faith.
Respondent also acted in bad faith by breaching its registration contract with NSI because it falsely represented that its registration of the domain name "ullfrotte.com" did not infringe the rights of any further party.
When the Complainant became aware of that the Respondent had registered the domain name "ullfrotte.com" they contacted the Respondent and urged them to transfer the domain name to them. The Respondent replied that they would be willing to do so if they received an amount of USD 100 000. The Complainant did not accept to pay such a large sum. Respondent’s registration of the disputed domain name "ullfrotte.com" therefore meets the bad faith element described in Section (b)(i) of the Policy. Respondent registered the domain name "ullfrotte.com" primarily to sell, rent, or otherwise transfer it back to Complainant (the trademark owner) for valuable consideration in excess of its documented out-of-pocket costs directly relating to the domain name "ullfrotte.com".
By registering the domain name "ullfrotte.com", the Respondent has prevented the Complainant from using the domain name, which seriously interferes with Complainant’s business. The Respondent has a homepage under the domain name "ullfrotte.com", where the Complainant’s trademark and photographs of the Complainant’s products are displayed. Some of the photographs are identical or closely similar to photographs included on the Complainant’s homepage, "ullfrotte.se". Many customers who have mistaken the Respondent’s homepage for the Complainant’s have contacted the Complainant. As the Complainant has customers from many countries including the US, it is natural that many of these believe that the Complainant would have a .com address. The domain name has therefore apparently been registered in order to prevent the Complainant from reflecting their trademark in a corresponding domain name. The Respondent’s homepage does not offer any products for sale under the homepage. In fact, the homepage does not hold any information at all except a possibility to contact the Respondent. A printout of the Respondent’s homepage as well as a printout of the first page of the Complainants homepage was attached to the complaint.
It would also seem as if the Respondent has registered the domain name for the purpose of disrupting the Complainant’s business. The Respondent and the Complainant are to a certain degree competitors.
By using the domain name "ullfrotte.com", the Respondent has intentionally attempted to attract for financial gain, Internet users to the Respondent’s web site, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or of a product on the Respondent’s web site. Respondent’s registration and use of the domain name "ullfrotte.com" therefore meets the bad faith element set forth in Section 4(b)(iv) of the Policy.
Respondent’s misappropriation of the domain name "ullfrotte.com" will irreparably injure Complainant’s reputation and hard-earned goodwill and its trademark ULLFROTTE ORIGINAL. If Respondent is allowed to retain ownership of the infringing domain name "ullfrotte.com", Complainant will be unable to use its well-known ULLFROTTE ORIGINAL name and mark to designate and identify a website by the domain name "ullfrotte.com", where Internet users most commonly assume Complainant’s site to be found.
Respondent has not filed a formal response but only a very short e-mail. The factual information in this namely that the Respondent has acted as a kind of agent for the Complainant is, however, confirmed by the Complainant, cf. above.
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.
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) that the domain name has been registered and used in bad faith.
i) Complainants rights
Complainant has furnished evidence that ULLFROTTÈ ORIGINAL is registered as a trademark in several countries. The dominant and distinctive part of that mark is the word ULLFROTTÈ and it is clear that the distinctive part of the disputed domain-name is identical to this word.
ii) Respondents legitimate interests
The Complainant has not licensed or otherwise permitted Respondent to use its trademark or to apply for any domain name incorporating the mark.
The Respondent has not furnished any specific evidence in support of their rights or legitimate interest in the name. The Panel notes that although the Respondent apparently legitimately sells or at least has sold goods originating from the Complainant and thus is entitled to use the mark ULLFROTTÈ in connection with the sale of these goods, this does not give him the right to register and the use the mark as a domain name without the consent of the holder of the trademark.
On this background the Panel finds that the Respondent has no prior rights or legitimate interests in the domain name.
iii) Bad faith
Paragraph 4(a)(iii) cf. 4(b) of the Policy further provides registration and use in bad faith.
It is undisputed that the Respondent through the business connections to the Complainant had knowledge of the Complainants rights to the mark. The Panel also finds that Respondent must have been aware of the risk of deception and confusion that would inevitably follow if he registered and used the domain name under the .com gTLD, since this could give the impression that the site and thus the Respondent was somehow endorsed by the Complainant. This risk of initial interest confusion is underlined by the fact that the Respondent uses the registered trademark of the Complainant on the top front page of the website. The Panel has also noted that Respondent has offered to sell the domain name to the Complainant for $ 100.000. This offer was done after contacts initiated by the Complainant.
On the basis of an overall assessment of these facts the Panel finds that also the rules in the Policy, Paragraph 4(a)(iii) cf. 4(b) are present in this case.
Consequently, all the preconditions for cancellation or transfer of the domain name according to Paragraph 4(a) of the Policy 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 Respondent is confusingly similar to the registered trademark ULLFROTTE ORIGINAL in which the Complainant has rights, and that the Respondent has no rights or legitimate interests in respect of the domain name, and that the domain name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy and 15 of the Rules, the Panel requires that the registration of the domain name "ullfrotte.com" be transferred to the Complainant.
Dated: October 23, 2000