Kärnhem AB v. Peter Ekman
Claim Number: FA1803001774646
Complainant is Kärnhem AB (“Complainant”), represented by Peter Savin of Advokatfirman Glimstedt, Sweeden. Respondent is Peter Ekman (“Respondent”), represented by Peter Ekman, Sweeden.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <karnhem.nu>, registered with AB Name ISP.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 6, 2018; the Forum received payment on March 6, 2018. The Complaint was received in both Swedish and English.
On March 10, 2018, AB Name ISP confirmed by e-mail to the Forum that the <karnhem.nu> domain name is registered with AB Name ISP and that Respondent is the current registrant of the name. AB Name ISP has verified that Respondent is bound by the AB Name ISP registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 16, 2018, the Forum served the Swedish language Complaint and all Annexes, including a Swedish language Written Notice of the Complaint, setting a deadline of April 5, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@karnhem.nu. Also on March 16, 2018, the Swedish and English language Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response in the English language was received and determined to be complete on April 5, 2018.
On April 6, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
The Panel notes that the Registration Agreement is written in Swedish, thereby making the language of the proceedings in Swedish.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Swedish language Complaint and Commencement Notification, and further that the Respondent has chosen to respond in English.
The Panel therefore determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant, a Swedish company, was founded 1987 and has since 2003 conducted business using the name “KÄRNHEM”. The main business conducted by the Complainant concerns development, building and management of real estate. Since 2003 the Complainant is in possession of the domain <karnhem.se> which is used to display information about the Complainant and its business. Complainant has rights in the KÄRNHEM trademark through its registration of the trademark with the Swedish Patent and Registration Office (“PRV”) (e.g. Reg. No. 510,531, application date Sep. 6, 2012).
Respondent’s <karnhem.nu> domain name is identical to Complainant’s mark as it simply adds the country code top-level domain (“ccTLD”) “.nu.”
Respondent has no rights or legitimate interests in the <karnhem.nu> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the trademark.
Respondent registered and uses the <karnhem.nu> domain name in bad faith. Respondent registered the domain name for the primary purpose of selling it to Complainant for an excess of out-of-pocket expenses. Further, Respondent uses the disputed domain to display personal and unilateral critic against the Complainant and the bought residence with the purpose to disrupt the Complainant’s business. Additionally, Respondent takes advantage of the reputation and goodwill associated with the KÄRNHEM mark in increasing the traffic to the site. Finally, Respondent was aware of Complainant’s trademark at the time of registration of the <karnhem.nu> domain name.
B. Respondent
Respondent argues that the disputed domain name is not identical to the Complainant’s KÄRNHEM trademark, as it is a figurative trademark, not a word trademark.
Even though the ccTLD .nu is considered a top-level domain, almost all businesses in Sweden use the ccTLD .se or the gTLD .com for their web sites. The risk of confusion should therefore be considered non-existent.
Respondent states that Respondent has a legitimate interest in the <karnhem.nu> domain name, as it doesn’t infringe on Complainant’s rights and is not used for marketing and/or business purposes.
Respondent did not register the domain name in bad faith, but rather as a part of Respondent’s effort to provide information to the public concerning its own experience as a consumer with Complainant’s business. Further, at no point have the parties discussed the transfer of the domain name at-issue – rather, the parties only discussed the potential sale of an apartment complex owned by Respondent.
The Panel finds that the Complainant has established trademark rights in the KÄRNHEM trademark, by the following National Swedish trademark registration:
Reg. No. 510,531 KÄRNHEM (fig), filed on September 6, 2012, in respect of services in classes 36 and 37.
The Respondent registered the disputed domain name <karnhem.nu> on January 5, 2018.
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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant claims rights in the KÄRNHEM trademark through its registration of the trademark with the PRV. The Panel notes that the printout provided by the Complainant does not show the date of registration, but a registration number. However, registration of a trademark with a trademark authority sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Glashütter Uhrenbetrieb GmbH v. li zilin / QQ869292929, FA 1575562 (Forum Sept. 23, 2014) (holding, “Trademark registrations with a governmental authority are sufficient to prove rights in a mark pursuant to Policy ¶4(a)(i)”). Accordingly, the Panel find that Complainant has established rights in the KÄRNHEM mark for the purposes of Policy ¶ 4(a)(i).
The Complainant next argues that Respondent’s <karnhem.nu> domain name is identical to Complainant’s trademark as the disputed domain name simply adds the ccTLD “.nu.”
The Panel notes that this is not 100% true: The trademark is written in the Swedish alphabet, using the local letter Ä. However, even if it is technically possible to register a domain name under the ccTLD .nu using local Scandinavian letters such as Å, Ä or Ö, it is still more common to use an English language version even in Sweden when technically translating a Swedish trademark version to a domain name.
Also, the addition of the ccTLD .nu makes no difference. Similar changes in a registered trademark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See CloudFlare, Inc. v. [Registrant], FA 1624251 (Forum Aug. 1, 2015) (holding, “The inclusion of a ccTLD does not alleviate the similarity between a mark and a disputed domain name as per Policy ¶ 4(a)(i).”).
In this respect, it can be further noted that although the ccTLD .nu is the official country code for Nieu, an island country in the South Pacific Ocean, it is also the second most common TLD in Sweden, as the “nu” means “now” in Swedish.
The Panel therefore find that the <karnhem.nu> domain name is confusingly similar to the KÄRNHEM trademark under Policy ¶4(a)(i).
The Complainant’s assertion that the Respondent lacks rights or legitimate interests in the disputed domain name establishes a prima facie case under the Policy. Once a prima facie case has been established, the burden shifts to Respondent to demonstrate that it does have rights or legitimate interests pursuant to Policy ¶ 4(c). See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Complainant states that the Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the trademark KÄRNHEM.
The Panel find no evidence or arguments provided by the Respondent, that contradicts Complainants conclusion that Respondent has no legal rights to <karnhem.nu>.
The question remains if the Respondent can have legitimate interests in the disputed domain name.
The Panel notes that none of the parties have provided screenshots or other type of evidence showing the web site connected to the disputed domain name. The Panel therefore has to make the conclusion based only on each party’s verbal description of the use.
Respondent describe the registration and use of <karnhem.nu> as a part of Respondent’s effort to provide information to the public concerning its own experience as a consumer with Complainant’s business. Further, there is no evidence provided to show that the web site is commercial, why the Panel will make the decision based on the conclusion that the connected web site as such is a non-commercial criticism site.
The Panel further notes that, in cases involving only US parties, panels tent to adopt the view that, irrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is fair and non-commercial.
However, in this case, both parties are Swedish based, and the European (including Sweden) view of this topic is traditionally different: The right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant's trademark. That is especially the case if the respondent is using the trademark alone as the domain name (i.e., <trademark.tld>) as that may be understood by Internet users as impersonating the trademark owner. On the contrary, where the domain name comprises the protected trademark plus an additional, typically derogatory term (e.g.,<trademarksucks.tld>), some panels have accepted this a legitimate interest.
The disputed domain name <karnhem.nu> is indeed confusingly similar to the Complainant’s trademark KÄRNHEM, and – as described above – more or less identical as the local Swedish letter “ä” is spelled in its English way and the connected ccTLD is very common on the Swedish market. See Aspis Liv Försäkrings AB v. Neon Networkd, LLC, Case No. D2008-0387 (WIPO June 2, 2008) “It is not the Panel’s role to pass comment on the content of a genuine criticism website. No matter how robust that content may be, that content is incidental to the consideration of the issue of bad faith. The bad faith that exists in this and similar cases arises not from any critical statement or alleged “smear” but from the fact that the Respondent has chosen a domain name that comprises without modification a mark used by the Aspis group and the misrepresentation and impersonation that this involves.” See also Anastasia International Inc. v. Domains by Proxy Inc./rumen kadiev, Case No. D2009-1416 (WIPO Jan. 18, 2010) “… the Respondent selected a domain name which is identical to the Complainant's trading name. It is evident from the original content of the Respondent's website that it did so deliberately and with the Complainant's rights in mind. The Panel considers that the Respondent cannot demonstrate rights and legitimate interests in such a domain name merely by virtue of the fact that the Respondent's intent was to use this to publish material that is or may be critical of the Complainant”.
The Panel concludes that Respondent does not have any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
The Complainant claims that Respondent offered to sell the <karnhem.nu> domain name to Complainant and registered the domain name for that primary purpose. However, the complainant has provided no evidence in support of that conclusion.
The Panel note from the arguments provided by both parties that there was a separate ongoing dispute, but the monetary damages claimed by the Respondent seems to be more directly related to the real estate dispute between the Complainant and Respondent, with no clear connection to <karnhem.nu>.
It is obvious, and confirmed by evidence and statements of both parties, that the Respondent was well aware of the Complainant, including knowledge of the Complainant’s prior trademark rights, at the time of registration of <karnhem.nu>, and that the disputed domain name was registered in order to refer to the business of the Complainant.
Everyone is free to express their personal non-commercial views on companies, etc online. However, it must be clear that such comments and related domain names and web sites have no relation to the other party. Registering a domain name that is identical or confusingly similar to another’s trademark, in order to use that domain name to criticize the trademark owner can not be accepted as use in good faith. See Anastasia International Inc. v. Domains by Proxy Inc./rumen kadiev, Case No. D2009-1416 (WIPO Jan. 18, 2010) “It is clear both from the Respondent's informal communication and from the content of the website associated with the disputed domain name that the Respondent's intention from the outset was to express on the Internet certain views that are critical of the Complainant's business practices… In so doing, the Respondent would also have been aware that the disputed domain name would be likely to make a misrepresentation to the typical Internet user that any associated website was owned and operated by the Complainant… the consequence is that the Respondent's actions are tainted, no matter whether it genuinely believed the criticisms or opinions expressed on the website associated with the disputed domain name and whether it was acting out of non-commercial or, as the Complainant asserts, commercial motives”.
The Panel concludes that Respondent registered and use the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ordered that the <karnhem.nu> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: April 17, 2018
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