Östgöta
Enskilda Bank v. Alex Ewaldsson
(Domain4Sale)
Claim
Number: FA0507000511079
Complainant is Östgöta Enskilda Bank (“Complainant”), represented
by Per Haakon Schmidt, of Plesner Svane Grønborg Law Firm, Amerika Plads 37, Copenhagen, 2100 Denmark, Denmark. Respondent is Alex Ewaldsson (Domain4Sale) (“Respondent”), Box 5555, Stockholm
11479, Sweden.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <ostgotaenskildabank.nu> and <östgötaenskildabank.nu>,
registered with .NU Domain Limited.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
11, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 18, 2005.
On
Jul 11, 2005, .NU Domain Limited confirmed by e-mail to the National
Arbitration Forum that the domain names <ostgotaenskildabank.nu>
and <östgötaenskildabank.nu> are registered with .NU Domain
Limited and that Respondent is the current registrant of the names. .NU Domain Limited has verified that
Respondent is bound by the .NU Domain Limited registration agreement and has
thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
July 25, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 15, 2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@ostgotaenskildabank.nu. Because Respondent’s <östgötaenskildabank.nu> domain
name is a Multi-Lingual Web Address, the Registrar, .NU Domain Limited,
provided the National Arbitration Forum with a decoded version of the domain
name, <xn--stgtaenskildabank-yzbd.nu>.
Subsequently, the Commencement Notification was transmitted to
Respondent at postmaster@xn--stgtaenskildabank-yzbd.nu. Furthermore, the National Arbitration Forum
has provided evidence that the Commencement Notification was transmitted to
Respondent via post. The Panel finds
that the National Arbitration Forum has sufficiently discharged its
notification requirements.
Having
received no Response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
August 22, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Sandra
Franklin as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
Complainant
requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <ostgotaenskildabank.nu>
and <östgötaenskildabank.nu> domain names are identical to
Complainant’s ÖSTGÖTA ENSKILDA BANK mark.
2. Respondent does not have any rights or
legitimate interests in the <ostgotaenskildabank.nu> and <östgötaenskildabank.nu>
domain names.
3. Respondent registered and used the <ostgotaenskildabank.nu>
and <östgötaenskildabank.nu> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Östgöta Enskilda Bank, was founded by Bishop Johan Jacob Hedrén in 1837 and has
continuously provided banking services since this date. Complainant currently operates twenty-five
bank branches in Sweden and has established a significant Internet
presence.
Complainant has
registered its ÖSTGÖTA ENSKILDA BANK mark in the Kingdom of Sweden with the
Swedish Patent and Registration Office (Reg. No. 210 270; issued April 29,
1988).
Respondent
registered the <ostgotaenskildabank.nu> domain name on January 2,
2000 and the <östgötaenskildabank.nu> domain name on November 24,
2003. The disputed domain names are
being used to redirect Internet traffic to Respondent’s website at the
<bredband.nu> domain name, where Respondent sells electronic equipment
and computer software.
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."
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules. The Panel is entitled to
accept all reasonable allegations and inferences set forth in the Complaint as
true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc.,
FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent's failure
to respond allows all reasonable inferences of fact in the allegations of the
complaint to be deemed true); see also Talk City, Inc. v. Robertson,
D2000-0009 (WIPO Feb. 29, 2000) ("In the absence of a response, it is
appropriate to accept as true all allegations of the Complaint.").
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 has
established rights in the ÖSTGÖTA ENSKILDA BANK mark through registration of
the mark in with the Swedish Patent and Registration Office. See Janus Int’l Holding Co.
v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have
held that registration of a mark is prima
facie evidence of validity, which creates a rebuttable presumption that the
mark is inherently distinctive."); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7,
2001) (finding that the Policy does not require that the mark be registered in
the country in which the respondent operates and therefore sufficient that the
complainant can demonstrate a mark in some jurisdiction).
Respondent’s <ostgotaenskildabank.nu>
and <östgötaenskildabank.nu> domain names are identical to
Complainant’s ÖSTGÖTA ENSKILDA BANK mark.
Neither the addition of the country code top-level domain “.nu” nor the
deletion of the spaces between the terms of Complainant’s mark is enough to
distinguish the disputed domain names from the mark. Similarly, Respondent’s removal of the umlauts from Complainant’s
mark in the <ostgotaenskildabank.nu> domain name is insufficient
to distinguish the domain name from the mark pursuant to Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu,
FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be
identical to HANNOVER RE, “as spaces are impermissible in domain names and a
generic top-level domain such as ‘.com’ or ‘.net’ is required in domain
names”); see also Daedong-USA, Inc.
v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29,
2003) (“Respondent's domain name, <kioti.com>, is identical to
Complainant's KIOTI mark because adding a top-level domain name is irrelevant
for purposes of Policy ¶ 4(a)(i).”); see also Mrs. World Pageants, Inc. v.
Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that
punctuation is not significant in determining the similarity of a domain name
and mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
asserted that Respondent has no rights or legitimate interests in the <ostgotaenskildabank.nu>
and <östgötaenskildabank.nu> domain names and Respondent, in not
submitting a response, has failed to rebut Complainant’s assertion. Thus, the Panel may interpret Respondent’s
failure to respond as evidence that Respondent lacks rights and legitimate
interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a response, the respondent has failed to invoke
any circumstance which could demonstrate any rights or legitimate interests in
the domain name); see also Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that the respondents’ failure to respond can be construed as an
admission that they have no legitimate interest in the domain names. The Panel will analyze whether Respondent
could meet its burden of establishing rights or legitimate interests for
purposes of Policy ¶ 4(a)(ii)).
Respondent is
using the disputed domain names, which are identical to Complainant’s ÖSTGÖTA
ENSKILDA BANK mark, to divert Internet users to its websites, where various
electronics products are offered for sale.
The Panel finds that such diversionary use is neither a use in
connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy
¶ 4(c)(iii). See Golden Bear
Int’l, Inc. v. Kangdeock-ho, FA
190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name
confusingly similar to Complainant’s mark to divert Internet users to websites
unrelated to Complainant's business does not represent a bona fide offering of
goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair
use under Policy ¶ 4(c)(iii).”); see also U.S. Franchise Sys.,
Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that the respondent’s use of the
complainant’s mark and the goodwill surrounding that mark as a means of
attracting Internet users to an unrelated business was not a bona fide offering of goods or services).
Furthermore, nothing in the record indicates that Respondent is
commonly known by the disputed domain names.
Rather, the WHOIS information for the disputed domain names reflects
Respondent’s identifies Respondent as “Alex Ewaldsson.” Thus, the Panel finds that Respondent has
not established rights or legitimate interests in the disputed domain names
pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Am. W. Airlines, Inc. v. Paik, FA 206396
(Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain
name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration
information, Respondent is not commonly known by the [<awvacations.com>]
domain name.”).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using
the <ostgotaenskildabank.nu> and <östgötaenskildabank.nu>
domain names, which are identical to Complainant’s ÖSTGÖTA ENSKILDA BANK mark,
to divert Internet users to its commercial website. The Panel finds that Respondent is capitalizing on Internet user
confusion and that such diversionary use is evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iv). See
G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum
Nov. 21, 2002) (finding that the respondent registered and used the domain name
in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website); see also State Fair of Texas v. Granbury.com, FA
95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent
registered the domain name <bigtex.net> to infringe on the complainant’s
goodwill and attract Internet users to the respondent’s website).
Respondent, a
resident of Sweden, is deemed to have constructive knowledge of Complainant’s
rights in the ÖSTGÖTA ENSKILDA BANK mark due to Complainant’s registration of
the mark with the Swedish Patent and Registration Office. See Orange Glo Int’l v. Blume, FA
118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed
on the Principal Register of the USPTO, a status that confers constructive
notice on those seeking to register or use the mark or any confusingly similar
variation thereof.”). Registration of domain names that are
identical to another’s mark, despite actual or constructive knowledge of the
mark holder’s superior rights, is evidence of bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See
Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here
is a legal presumption of bad faith, when Respondent reasonably should have
been aware of Complainant’s trademarks, actually or constructively.”); see
also Samsonite Corp. v. Colony
Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of
bad faith includes actual or constructive knowledge of a commonly known mark at
the time of registration).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <ostgotaenskildabank.nu> and <östgötaenskildabank.nu>
domain names be TRANSFERRED from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
September 6, 2005
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