WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Agabekov S.A., B-Light Branka Agabekov and Arlimina Agabekov v Sven Balslow
Case No. D2001-0675
1. The Parties
The Complainants are, Agabekov S.A. 6 Route de Compois, 1222 Geneva, Switzerland, B-Light, Branka Agabekov, 6 Route de Compois, 1222 Geneva, Switzerland and Arlumina, Agabekov, 73 Route de Thonon, Geneva, Switzerland represented by Simonsen Foyen Advokatfirma DA, St. Olavs plass, N 0129, Oslo, referred to as the Complainant
The Respondent is Sven Balslow, Fagerstrandvn. 41, N 1368 Stabekk, Norway
2. The Domain Name and Registrar:
The Domain Name at issue is . The Registrar is Internet names WorldWide (INWW), a Division of Melbourne IT Ltd, Level 2, 120 King Street, Melbourne Victoria, 3000 Australia.
3. Procedural History:
The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) by e-mail on May 18, 2001, and a hardcopy was received by the Center on May 23, 2001. The Center acknowledged the receipt of the Complaint on May 22, 2001.
On May 25, 2001, the Center sent to INWW a request for verification of registration data. On May 28, 2001, INWW confirmed to be the Registrar, that Sven Balslow is the Registrant of the domain name , and that the current status of the domain name is "active".
On May 29, the Center verified that the Complaint satisfies the Rules and the Supplemental Rules and that payment was properly made. The Panel is satisfied that this is the case.
On June 8, 2001, the Complaint was properly notified in accordance with the Rules, paragraph 2(a), and the administrative proceedings commenced. On the same day OMEX AS, the technical contact of the Respondent, informed the Center that the Respondent had asked it to have the domain name cancelled and suggested to put the case on hold until this decision had been carried out. On query of the Center, the Complainant responded on July 6, 2001 that it wished to continue with the Complaint.
Since no response to the Complaint was received from the Respondent within the time limit set, on June 29, 2001, the Center sent a default notification to the Respondent. The Respondent reacted to this default notification on July 2, 2001, asking the Center to cancel the name in dispute (for details of the contents of this email see below, section 6.3).
On July 11, 2001, the Center notified the Parties that an Administrative Panel, composed of a single member, Dr. Gerd F. Kunze, had been appointed and that the Panelist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
No further submissions were received by the Center or the Panel. The date scheduled for issuance of the Panel�s decision is July 24, 2001.
4. Factual Background
A. Complainant
The Complainant consists of a group of companies, which are manufacturing and selling products in the electrical lighting field. Mr. Yuri Agabekov founded the first company (Arlimina Agabekov) in 1969, a second company, B-Light Branka Agabekov was founded by his wife Branka Agabekov, and in 1995 Mr. Yuri Agabekov created a new company, Agabekov S.A. which is selling products of the Agabekov group. The contact person of the Complainant is Mr. Yuri Agabekov. The Complainant has been selling Agabekov products since 1991 internationally, including to Norway, either directly or trough local distributors.
The Complainant is marketing its products under different trademarks consisting of or containing the name "agabekov". In particular, the wordmark AGABEKOV is registered in Switzerland in the name of Mr. Yuri Agabekov (registration number 341 293, dated November 12, 1985, for lighting installations and articles in class 9) and a trademark consisting of a specific graphical representation of the words "AGABEKOV" and "LIGHTING COMPANY" (showing prominently the word AGABEKOV) is registered in the name of Agabekov SA in Switzerland and as international registration (no 708 723 dated April 6, 1999, with priority of February 2, 1999, for lighting installations and articles in classes 9 and 11) designating, amongst other countries, Norway.
In 1996, the Respondent and its company Interlight AS became the representative of the Complainant, acting in the name of Agabekov SA, in Norway. When in May 2000, the Complainant intended to create an Internet web site under the name "agabekov", it was informed that it could not use the domain name , since this name was already taken by the Respondent. At this time the domain name was linked to the home page of the respondent's company "Interlight AS" (as documented by annex 16 to the Complaint). The Complainant therefore has registered and is using the domain name .
The Respondent has chosen not to submit a Response and the Panelist is satisfied that the facts and the documents submitted by the Complainant are truthfully reflecting the factual circumstances of the case.
B. Respondent
The Respondent is an individual who registered on November 23, 1999, the domain name with INWW. The domain name is in active status. As said before, originally the Respondent used the domain name as link to the homepage of his company Interlight AS. At present the domain name is linked to OMEX AS, the technical contact of the Respondent, which is a professional web designer and Internet service provider (a printout of this web page was made by the Center on May 29, 2001; it is contained in the documentation sent to the Panelist).
5. Parties� Contentions
A. Complainant
Complainant submits that (1) the domain name 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; (3) the domain name was registered and is being used in bad faith.
B. Respondent
The Respondent has failed to submit a Response. He has therefore not contested the allegations of the Complaint.
6. Discussion and findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain name of the Respondent be transferred to the Complainant:
1) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2) the 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.
- Identity or confusing similarity with a mark in which the Complainant has rights
The domain name is identical with the registered trade mark AGABEKOV of the Complainant, since the generic tld indicator "com" cannot be taken into consideration when judging identity or confusing similarity. The domain name is also confusingly similar with other trademarks of the Complainant, containing as dominant distinctive element the name agabekov, in particular with the international registration 708 723, which amongst others is protected in Norway with priority of February 2, 1999. There is not only clearly a risk of confusion of Internet users who may try to find the Complainant's Website under its name " agabekov " in the .com gtld, and are directed to Norway, cases of confusion have actually occurred, as documented in Annex 11 to the Complaint.
- Legitimate rights or interests in respect of the domain name
When the Respondent registered the domain name , his business was known under the name of his company Interlight AS and Lysbutikken AS, but not under the name Agabekov. The firm name and trademark "agabekov" of the Complainant, and consequently also the Respondent's domain name is a personal name, in which the Respondent has no own right. The Complainant has not consented to the Respondent's use of its name as a domain name. On the contrary, as representative of the Complainant, the Respondent had the obligation, imminent to any agent's agreement, to respect the Complainant's name and trademark and to use it only as agreed with by the Complainant. It is one of the internationally recognized principles, as even laid down in Art. 6septies of the Paris Convention, that the owner of a trademark may take action against the registration or use of his mark by his agent or representative without authorization. With other words, the representative has no own right in the trademark of his principal, which would allow him to take any action, such as registration in his own name, or to use the principal's trademark, except the principal authorizes him to do so. This internationally recognized legal principle must also apply to the registration and use of the principal's trademark by a representative as a domain name, in whatever domain. Not only registered the Respondent the Complainant's trademark as a domain name without being authorized, he also used that domain name as a reference to the home page of his firm Interlight without reference to the Complainant as proprietor of the agabekov trademark (as evidenced by annex 16 to the Complaint). The Respondent therefore acted clearly in breach of his obligations to the Complainant and cannot demonstrate any right or legitimate interest in the domain name . Also he has not submitted any reason, which would hint to any of the circumstances listed under 4c of the Policy, possibly demonstrating rights or legitimate interests (neither before the initiation of this procedure nor during that procedure since he did not respond to the Complaint).
Therefore, the Panel concludes that the Respondent has no rights or legitimate interests in the domain name .
- Registration and use in bad faith
For a Complainant to succeed, the Panel must be satisfied that a domain name was registered and is being used in bad faith.
When the Respondent registered the domain name he had been the Complainant's representative in Norway for over four years. After having registered that domain name, he used it as a reference to the home page of his firm Interlight AS. As said before, he thus acted in breach of his obligations as a representative of the Complainant. He undertook this registration and use of the Complainant's trademark without even informing the Complainant. This alone is a strong indication of bad faith, the more as already in the past the Complainant had to intervene in the manner in which the Respondent was offering the Complainant's products. As evidenced by annex 9 to the Complaint, the Complainant had, in a letter dated December 23, 1996, criticized advertising for Complainant's products by the Respondent without mentioning that the products were those of the Complainant.
- Also, the Panelist considers the Respondent's registration of the domain name and its use made by the Respondent as an intentional attempt to attract, for commercial gain, Internet users, seeking for the Complainant's website, to his website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website. This is confirmed by complaints which the Complainant received from his customers. As evidenced by an annex to the Complaint, one of its customers wrote "your website is not functioning yet? The refers me to Norway!"
After the Complainant had contacted the Respondent, the link to the Interlight homepage was ceased and the domain name now refers to OMEX AS, an Internet Service Provider in Norway, who is the Respondent's technical contact.
- Despite several interventions of the Complainant's legal representative in Norway, the Respondent was not willing to transfer the domain name to the Complainant. Actually, he did not reply in writing to a letter requesting the transfer of that domain name to the Complainant. However, in a telephone conversation with the Complainant's legal representative, the Respondent said that the Complainant could buy back the domain name and that he would sell it "if the price was right". This is a further confirmation of the Respondent's registration and use of the domain name in bad faith, i.e. having registered it in order to sell it to the Complainant for valuable consideration in excess of his out-of-pocket costs. In that context it must be noted that according to the not contested submission of the Complainant the Respondent owed the Complainant money and stopped paying his debt to the Complainant at the same time when he registered the domain name in his own name.
Only after the Complainant had initiated the present procedure, Respondent's technical contact in a communication sent to the Center on June 8, 2001, informed the Center that its customer Sven Balslow had asked him to have the domain cancelled. Furthermore, after the time limit set for the Response had expired, the Respondent asked the Center to cancel the domain name in dispute. The Respondent went on: "For further information, we have transmitted all the mails which was intended for the p., without delay. I believe it amount to 3 in all, in the past". With this statement the Respondent admits that several clients of the Complainant were mistaken to his firm by addressing mail to the Respondent which they intended to send to the Complainant.
Applying a formalistic interpretation of the wording of the Policy one could derive from this communication that the domain name now (since July 2, 2001) is not any more "being used" by the Respondent in bad faith, as required by Paragraph 4a(iii) of the Policy. However, the domain name was registered and was clearly used in bad faith and after having ceased to link the domain name to his firm's website the Respondent made an offer for sale of the domain name to the Complainant "if the price was right". It would therefore amount to contradicting the purpose of the Policy if a domain name grabber, who realizes that he has no chance in the proceedings, could avoid the consequence of the transfer of his domain name to the Complainant by expressly requesting its cancellation.
In that context it must also be taken into account that the Respondent did not make an offer to the Complainant to transfer the domain name; he only proposed its cancellation and this only in his belated communication to the Center. Furthermore, he has not asked his technical contact to put the domain name on hold. On the contrary, that domain still links the user to the home page of OMEX SA which offers its services in Norway.
The Panel therefore concludes that the allegation of the Complainant that the Respondent has registered and is using the domain name in bad faith is sustained.
7. Decision
The Panel decides that the Complainant has proven each of the three elements of paragraph 4a of the Policy.
The Panel requires that the registration of the domain name be transferred to the Complainant.
Dr. Gerd F. Kunze
Sole Panelist
Date: July 24, 2001
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