Swedish Women's Educational Association International Inc. v. GMG
Claim Number: FA0807001213417
Complainant is Swedish Women's Educational Association International
Inc., (“Complainant”), represented by P-E
H Petter Rindforth, of Groth & Co KB,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <swea.us>, registered with Godaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 1, 2008; the Forum received a hard copy of the Complaint on July 1, 2008.
On July 1, 2008, Godaddy.com, Inc. confirmed by e-mail to the Forum that the domain name <swea.us> is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On July 8, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 28, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
A timely Response was received and determined to be complete on July 29, 2008.
On July 31, 2008, the Forum received a timely additional submission from Complainant. On August 5, 2008, the Forum received a timely additional submission from Respondent.
All submissions were considered by the Panel.
On August 6, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant is an international not-for-profit organization for
Swedish and Swedish-speaking women who are currently living or have lived
abroad. The Complainant was founded in
The Complainant is the owner of US Service Mark Registration No. 1,230,581 SWEA (word) first use in commerce on May 20, 1978, applied for on December 21, 1981 and registered on March 8, 1983.
The Complainant is also the holder of several domain name registrations, including <swea.org>.
Respondent’s domain name <swea.us> is identical or at least confusingly similar to Complainant’s registered trademark SWEA.
The Respondent has no rights or legitimate interests in respect of the domain name that is the subject of the complaint.
The Complainant has not authorized the Respondent to register a domain name including Complainant’s trade name and trademark. Respondent was, at the time of the registration of the domain name, not affiliated with the Complainant. The Respondent is not commonly known as SWEA, <swea.org> or anything similar.
The WHOIS information lists the Respondent as GMG, with a Marina Green as the contact person. Neither GMG, nor Marina Green have any similarities to Swea.
Respondent is based in
Marina Green was previously the vice president of the
SWEA sent a cease and desist letter to Ms. Green on January 22, 2008,
regarding GMG/Green’s registration and use of the domain name <sweaorna.com>
(Swedish for “the SWEA’s”) and e-mail address “email@example.com.” Ms. Green replied on March 3, 2008, stating
that she holds 130 active domain names and claiming that the
Respondent did nothing to decease the confusion, and did not stop using <sweaorna.com> for her commercial site. Instead, the Complainant discovered that Respondent had registered also the disputed domain name <swea.us> on December 21, 2007 and pointed it to the web site for her company Barcelonaspecialisterna (under the domain name <sweaorna.com>).
Respondent has re-directed the disputed domain name from the Spanish site to another commercial site owned by Respondent – this time for a nutrition preparation.
The Respondent clearly had knowledge about the Complainant’s registered name at the time of the domain name registration.
The Respondent seems to have registered the disputed domain name for the purpose of selling the same to the Complainant, for a valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name. One of the purposes of the domain name registration was simply to hijack the SWEA name for monetary purposes.
Respondent has intentionally attempted to attract, for commercial gain,
Internet users to Respondent’s web sites.
Internet users looking for information on the
Swedish Women's Educational Association International Inc. has the domain
name <swea.org>. They have Trademark classification for 16, 41 and 42. In the
On the Internet you find many active domain names for example:
<swea.com> – different company different business
<swea.dk> – different company different business
<swea.net> – a group of churches
<swea.nu> – a Swedish restaurant.
When you Google SWEA, you get 651,000 results today. Almost all “swea.something” names have been taken and are in use.
Swedish Women's Educational Association International Inc. is a non commercial organization. They have no right to make any profit; they don’t pay any tax anywhere in the world.
Respondent is trying to make a living with an Internet business. And the name SWEA is helpful with the business.
Respondent’s SWEA name stands for: Swedish Worldwide E-marketing. She is recruiting Swedish people around the world for Internet business.
The Complaint only has the trademark for the name SWEA in some areas. The name SWEA is used by several different companies
The domain name is not for sale and has never been.
C. Additional Submissions
Respondent claims to have filed a trademark application “awhile ago”
for SWEA in class 35 in
Respondent refers to other “active domain names” for SWEA and provides a list of those. Even here, Respondent is trying to confuse the Panel. Several of the listed domain names do not resolve to any active web sites. What is referred to as <swea.edu> is in fact – as shown by the screen-shot provided by Respondent – the domain name <sea.edu>.
In the Response, Respondent confirms a deep knowledge of Complainant and its trademarks prior to registering the disputed domain name. Respondent also confirms the conflict, resulting in Complainant’s decision to terminate Ms. Green’s assignment. That alone is a clear indication of bad faith filing and use of the domain name, or – as explained by Ms. Green in the Response, “This is personal – and nothing but.”
Respondent holds 130 active domain names and thus has plenty of other domain names to use.
<swea.com> i.e. SWEA A/S is a Danish Company since 1960. SVEA is almost the same name. The first trademark registration is dated
1889, 119 years ago. Another one 1943
and the latest approval dated 2007. The
name SWEA was not invented by the Complainant.
The old Swedish language used Swea Rike as the name for
The Complainant refers to trademark class 42 since 1978.
<swea.com> started their business in 1960. Long before Swedish Women’s Educational Association International Inc. was founded.
It is most likely that Respondent will get national approval for SWEA,
class 35. No one has the trademark for
this classification in
Mr. Andreas Flenby is Respondent’s son.
Andreas made the request only for practical reasons since Respondent is
not living in
<swea.edu> does not exist at this writing moment and therefore the change has been made after July 7, 2008. It is quite possible that <swea.edu> redirected their name to <sea.edu>.
As soon as Respondent can manage <swea.us> again, Respondent will build a suitable website for this business.
When Respondent says that this is personal and nothing but it simply means that Swedish Women's Educational Association International Inc. to my knowledge only has filed for a domain name dispute against Respondent and not against any other SWEA domain name users.
Respondent’s business can not be mistaken for Swedish Women's Educational Association International Inc.’s noncommercial activity promoting Swedish culture and traditions.
Swedish Women's Educational Association International Inc. is a nonprofit organization Respondent’s activities cannot take any business from them since they don’t have any.
SWEA for is short for
For the reasons set forth below, the Panel finds the domain name should remain with Respondent.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Identical and/or Confusingly Similar
Complainant asserts rights in the SWEA mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,230,581 issued March 8, 1983), the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA630,587 issued January 19, 2005), and the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 556,548 issued June 29, 1999). The Panel finds that Complainant has rights in the SWEA mark through registration of the mark with multiple trademark authorities pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country).
Complainant contends that Respondent’s <swea.us> domain name is identical to Complainant’s SWEA mark as it merely adds the country-code top-level domain (“ccTLD”) “.us.” The Panel finds that the addition of a ccTLD, such as the one in the present case, is not a relevant means of distinguishing a domain name from a mark for purposes of Policy ¶ 4(a)(i). See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark); see also Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails to distinguish the domain name from the mark pursuant to the [usTLD] Policy”).
Complainant has proven this element.
Rights or Legitimate Interests
The Panel finds that Complainant has failed to allege facts sufficient to create a prima facie case for lack of rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Lush LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001) (finding that even when the respondent does not file a response, the complainant must allege facts, which if true, would establish that the respondent does not have any rights or legitimate interests in the disputed domain name); see also Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that absent a showing of any facts by the complainant that establish the respondent lacks rights or legitimate interests in the disputed domain name, the panel may decline to transfer the disputed domain name).
Respondent submitted evidence of numerous uses of SWEA and active domain names using SWEA that are not connected with Complainant.
The Panel finds that Respondent’s <swea.us> domain name is comprised primarily of a generic term not exclusively associated with Complainant and Respondent has established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001) (finding that the respondent has rights and legitimate interests in the domain name where “Respondent has persuasively shown that the domain name is comprised of generic and/or descriptive terms, and, in any event, is not exclusively associated with Complainant’s business”); see also Tough Traveler, Ltd. v. Kelty Pack, Inc, D2000-0783 (WIPO Sept. 28, 2000) (finding that the respondent had a legitimate interest in the domain name, <kidcarrier.com>, as a generic term for a class of products that the respondent sells).
Complainant has not proven this element.
Registration and Use in Bad Faith
The Panel having found that Respondent has rights or legitimate interests in the <swea.us> domain name pursuant to Policy ¶ 4(a)(ii) and that Respondent’s domain name is comprised entirely of generic terms, the Panel concludes that Respondent did not register or use the domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lee Procurement Solutions Co. v. getLocalNews.com, Inc., FA 366270 (Nat. Arb. Forum Jan. 7, 2005) (“Respondent's rights and legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii), allow a finding that there was no bad faith registration or use under Policy ¶ 4(a)(iii).”); see also Pensacola Christian Coll. v. Gage, FA 101314 (Nat. Arb. Forum Dec. 12, 2001) (“Because the Panel has found that Respondent has rights and interests in respect of [sic] the domain name at issue, there is no need to decide the issue of bad faith.”).
Complainant has not proven this element.
Complainant having failed to establish all three elements required under the usTLD Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <swea.us> domain name remain with Respondent.
Honorable Karl V. Fink (Ret.), Panelist
Dated: August 20, 2008
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