ADMINISTRATIVE PANEL DECISION
SJ AB vs. Control Alt Delete AB
Case No D2001-0338
1. The Parties
Complainant is SJ AB, SE-105 50 Stockholm. Complainant’s authorised Representative in this case is L.A. Groth & Co. KB, attention Johan Sjöbeck, Box 6107, SE 102 32 Stockholm, Sweden.
Respondent is Control Alt Delete AB (according to the InfoTorg printout submitted by Complainant Respondent´s company name is “CONTROL ALT DELETE STOCKHOLM AKTIEBOLAG”), represented by Carl Gustav Robert Boström and Rolf Tony Lennartsson, Box 260 10, Rådmansgatan 7, SE 100 41 Stockholm, Sweden.
2. Domain Name and Registrar
The domain name at issue is . The Registrar is Network Solutions, Inc., Herndon, Virginia, United States.
3. Procedural History
The World Intellectual Property Organization Arbitration and Mediation Center (the Center) received a Complaint from Complainant by e-mail on March 8, 2001 and in hardcopy form on March 12, 2001. The Center acknowledged receipt of the Complaint on March 13, 2001.
Having verified that the Complaint complied with the formal requirements, the Center issued, on March 16, 2001, a Notification of Complaint and Commencement of Administrative Proceeding, which was notified to Respondent and to Complainant as well as to the Registrar and to ICANN. The notification to Respondent was effected through Post/Courier (with enclosures) and by facsimile and by e-mail (without enclosures).
On March 13, 2001, the Center issued a Request for Registrar Verification and received such a Verification on March 15. According to that Response:
- Network Solutions is the Registrar of the domain name registration at issue.
- The current Registrant is: “Control Alt Delete (X35-DOM), Radmansgatan 7, Stockholm, Sweden”.
- The domain name at issue is: .
- Administrative Contact, Billing Contact is: “Lennartsson, Toni (TL855) robert bostrom@MAILBOX.SWIPNET.SE, Control Alt Delete, Radmansgatan 7, Stockholm, SE +46-8-679 78 19”
- Technical Contact is: Hostmaster, TABNet (TH 941) VerioHostmaster@VERIO.NET, 5 Financial Plaza, Napa, CA 94558, 707 256-1999 (FAX) 707 256-1997”
- Network Solutions´ 4 Service Agreement is in effect, and
- The domain name registration status is. “Active”
Having received no Response from Respondent the Center issued, on April 6, 2001, a Notification of Respondent Default.
The Center then invited Mr. Henry Olsson to serve as Sole Panelist and received on April 19, 2001, Mr Olsson´s Statement of Acceptance and Declaration of Impartiality and Independence. The same day the Center appointed Mr Olsson as Sole Panelist and issued a Notification of Appointment of Administrative Panel and Projected Decision Date, which was duly communicated to the Parties. The Projected Decision date was May 2, 2001.
The Sole Panelist considers that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the WIPO Supplemental Rules.
4. Factual Background
Complainant was formerly known as “Statens Järnvägar” (Swedish Railways) and develops, sells and produces journeys, mainly by train. It sells more than 25 million journeys annually. Complainant’s turnover was in the year 2000 about 5 100 million Swedish Crowns (SEK). In 1990 Complainant introduced a high speed tilting train, called X2000, which travels at a speed of more then 200 km/h. More information about Complainant´s activities appears below under Parties´ Contentions.
According to the above-mentioned printout of the information under InfoTorg, Respondent’s area of business is data consulting activities.
In accordance with Paragraph 3(b)(xiii) of the Rules, Complainant agrees to submit, only with respect to any challenge that may be made by Respondent to a decision by the Administrative Panel to transfer or cancel the domain name that is the subject of the Complaint, to the jurisdiction of the courts where Respondent is located, as shown by the address given for the domain name holder in the concerned Registrar’s Whois database at the time of the submission of the Complaint to the WIPO Center.
5. Parties Contentions
As a general background Complainant indicates that it is, through the division “Personaltrafikdivisionen” within SJ AB, the owner of trademark registrations for the marks “X2000” and “X 2000” in a number of countries. Thus the mark first mentioned is registered in Sweden (under number 261 635) for subject matters in classes 6, 12, 39 and 42, and the mark “X 2000,” also in Sweden, (under number 262 57) in classes 12, 14, 16, 18, 25, 28 and 39. Complainant has submitted registration certificates relating to those registrations. Likewise, Complainant has submitted registration certificates relating to registration of the mark “X2000” in Denmark, Norway, Germany, Portugal (also a registration of the mark “X 2000”), Canada and China.
Identity or Confusing Similarity
Complainant contends that the trademark “X2000” is identical with the domain name the only difference being the TLD notion “.com” Also the trademark “X 2000” and the domain name are in the opinion of Complainant identical, because space characters are not allowed in domain names for technical reasons and thus the domain name that best reflects the trademark is “X2000.any TLD”
Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the domain name at issue; to the best of Complainant’s knowledge Respondent has no trademark, service mark, company name or any other right or legitimate interest in any name similar to that of the domain name. Complainant adds that Respondent has never indicated that it intends to make use of the domain name in any way and is not commonly known by the name in question. According to Complainant, the domain name was registered on July 16, 1996 and still is used only with a message: “This site is currently under construction.” To support this Complainant has referred to a printout of the website of March 5, 2001. Therefore, Complainant is of the opinion that Respondent not only is lacking rights or legitimate interests in the domain name but has also failed to make good faith use of the domain name for its business for a substantial period of time.
Registration and Use in Bad Faith
Complainant contends that Respondent, the company “Control Alt Delete”, according to a printout from the Swedish Company data base “InfoTorg”, consists of Messers Lennartsson and Boström and has organisation number 556518-7837. Complainant contends that Respondent has for years systematically registered numerous famous trademarks as domain names in order to make profit by renting them or by demanding money for transferring them to the trademark owners. Complainant cites in this context earlier Panel decisions where disputed domain names were transferred from Respondent. Complainant refers in this context to a list of a number of other domain names belonging to Respondent and containing inter alia, the names of Swedish well-known companies, something that, according to Complainant, clearly demonstrates a certain patters by Respondent. Complainant alleges that Respondent’s repetitive pattern of registering numerous domain names consisting of registered trademarks clearly indicates that the domain name at issue in this case has been registered and used in bad faith.
In this context Complainant adds that, in its view, the domain name at issue was registered in order to prevent the Complainant, which is a major Swedish company in the travelling, railway and train business, from reflecting its trademarks in a corresponding domain name. Complainant contends that the domain name was registered primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the trademark owner or to a competitor of Complainant in order to attract financial gain or alternatively disrupting the business of Complainant. Respondent must, according to Complainant, have been well aware of the value of Complainant’s trademarks as the famous train X2000 was in active use and as the trademarks in question had been registered and displayed in public several years before Respondent’s registration of the domain name at issue. According to Complainant the domain name was thus registered in bad faith. Since Respondent is lacking rights and legitimate interests in the name “X2000” Complainant believes that the primary purpose of the registration was, as mentioned, to sell, rent or otherwise transfer the domain name to the Complainant or any of its competitors for valuable consideration in excess of out-of-pocket costs directly related to the domain name. Even if Respondent has not directly offered to sell etc. the domain name to Complainant, all the circumstances, such as the pattern of multiple domain name registrations of registered trademarks and the failure to make good faith use of the domain name for a substantial period of time, suggest, according to Complainant, that Respondent is acting in bad faith. Complainant refers in this context to other Panel decisions where the concept of use of a domain name in bad faith has been found not to be limited solely to positive actions but where also inaction has been regarded as being within the scope of the concept of use.
In accordance with Paragraph 4(b)(i) of the Policy and for the reasons stated Complainant requests that the Administrative Panel issue a decision that the domain name at issue be transferred to Complainant.
Respondent has not submitted any Response and is thus in Default.
6. Discussions and Findings
Rule 15 of the Rules prescribes that the Panel shall decide a Complaint on the basis of the statements made and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that that it deems applicable.
In the case of a Default by a Party, Paragraph 14 of the Rules prescribes that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or a requirement under, these Rules, the Panel shall draw such inferences therefrom as it considers appropriate. In this case the Panel notes that both the Complaint and the Notification of Respondent Default have been duly notified to Respondent. Respondent has, however, not submitted any Response and has consequently not, despite the opportunity given, contested any of the contentions by Complainant. The Panel will therefore have to operate and consider the case on the basis of the factual circumstances contained in the Complaint and the documents available to support those contentions.
The Service Agreement relating to the domain name registration at issue incorporates the Policy which is consequently applicable to this case.
Paragraph 4.a. of the Policy directs that Complainant must prove each of the following:
- That the domain name registered by Respondent is identical or confusingly similar to a trademark or a service mark in which Complainant has rights
- That Respondent has no rights or legitimate interests in the domain name, and
- That the domain name has been registered and is being used in bad faith.
In the following parts of this decision, the Panel discusses each of those elements.
Identity or Confusing Similarity
In this respect Complainant has, according to Paragraph 4.a.(i) of the Policy, to prove that the domain name at issue is identical or confusingly similar to a trademark or a service mark in which Complainant has rights.
The domain name at issue is .
Complainant is, as established through the registration certificates submitted by it, the owner of the trademarks “X2000” and “X 2000” in, among other countries, Sweden and also some other Nordic countries. The trademarks and the domain name differ only in that the notion “.com” forms part of the domain name and that one of the trademarks contains a space between “X” and “2000.” In the view of the Panel there exists a clear confusing similarity between the trademarks in question and the domain name at issue.
Rights or Legitimate Interests
In this respect, Complainant has, according to paragraph 4.a.(ii) of the Policy, to prove that Respondent has no rights or legitimate interests in the domain name.
From the documentation submitted by Complainant – which has not been contested or commented upon by Respondent – it appears that the domain name at issue was registered on July 16, 1996, and that the website to which the domain name is linked contains only an “under construction” message. Furthermore, Respondent has not contested Complainant’s allegation that Respondent has no trademark, service mark, company name or any right or legitimate interest in any name similar to that of the domain name and that Respondent has not shown any intention to make use of the domain name or is commonly known by the domain name at issue.
The Panel finds the circumstances submitted by Complainant and uncontested by Respondent prove that Respondent has in fact no rights or legitimate interests in the domain name at issue.
Registration and Use in Bad Faith
In this respect, Complainant has, according to Paragraph 4.a.(iii) of the Policy, to prove that the domain name has been registered and is being used in bad faith.
Complainant has made essentially two contentions. First, Respondent has, according to Complainant, systematically registered famous trademarks as domain names in order to make a profit from selling or renting them to the trademark owners. Secondly, Complainant alleges that the trademarks “X2000” and “X 2000” were well known at the time of the registration of the domain name and that the domain name was registered primarily for the purpose of either transferring it for a profit to Complainant or one of its competitors or, alternatively, disrupting the business of Complainant. Complainant has furthermore stated that, while Respondent has not directly offered to sell the domain name, the circumstances, such as the pattern of registering multiple trademarks as domain names and the failure to make good faith use of those for a substantial period of time, suggest that Respondent is acting in bad faith.
To support those contentions, Complainant has submitted certain documentation, including a list of domain names belonging to Respondent and to some earlier Panel decisions in which domain names containing well-known trademarks have been transferred from Respondent to the trademark owners. Complainant refers also in this context to earlier Panel decisions where failure to use for a certain period of time has been found to amount to use in bad faith.
Respondent has not contested the statements by Complainant nor has it commented upon the documentation submitted by Complainant to support its contentions.
On the basis of the circumstances thus referred to, the Panel concludes that Respondent must have been aware of Complainant’s trademarks at the time of registration of the domain name. In combination with Respondent’s later failure to make active use of the domain name, this leads the Panel to the conclusion that the domain name was in fact registered in bad faith. This Panel considers, like Panels have done in some cases referred to by Complainant, that Respondent’s inaction for a substantial period of time, in view of the circumstances in the case, amounts to use in bad faith.
On the basis of these considerations the Panel concludes that it has been established that Respondent has, as indicated in Paragraph 4.b (i) of the Policy, registered the domain name at issue primarily for the purpose of selling, renting or otherwise transferring it to Complainant or possibly to a competitor of Complainant for a valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name. The Panel also concludes that the registration of the domain name was, in accordance with Paragraph 4.b(ii) of the Policy, made in order to prevent the owner of the trademarks from reflecting the mark in corresponding domain names and that evidence available shows that Respondent has engaged in a pattern of such conduct.
On the basis of the foregoing, the Panel considers that Respondent’s domain name is confusingly similar to Complainant’s trademarks, that Respondent has no rights or legitimate interests in the domain name and that the domain name at issue has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4.i of the Policy and in accordance with the request by Complainant, the domain name at issue shall be transferred to Complainant.
The Administrative Panel directs that the domain name be transferred to Complainant.
Dated: April 26, 2001