WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lundbergs Produkter i Nyköping AB v. P D S
Case No. D2003-0730
1. The Parties
The Complainant is Lundbergs Produkter i Nyköping AB,of Sweden, represented by Mr. Jan Sjöbeck, Groth & Co. KB, of Sweden.
The Respondent is P D S, of Stockholm, Sweden.
2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 16, 2003. On that same day, the Center transmitted by email to Network Solutions, Inc. a request for registrar verification in connection with the domain name at issue. On September 24, 2003, Network Solutions, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 26, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was October 16, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on October 29, 2003.
The Center appointed Gunnar Karnell as the sole panelist in this matter on November 12, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The disputed domain name was registered on July 15, 1996.
5. Parties� Contentions
A. Complainant
The Complainant has acquired rights to the Swedish trademark LUNDBERGS due to extensive and persistent long term use of it in connection with interior and exterior building products. Almost 20 years before the registration of the disputed domain name, since the late 1970�s, the trademark LUNDBERGS was used to distinguish various goods produced by the Complainant. From 1994 to 1996, it invested more than SEK 4,163,000 in advertising of the trademark LUNDBERGS in Sweden. Long before the domain name registration, the Complainant continuously produced graphic promotion materials in various newspapers and brochures and it promoted its mark at hardware fairs and exhibitions (Köln 1994 is referred to as an example). It has continuously applied its trademark LUNDBERGS on all packaging materials and/or the actual products displayed and sold in hardware shops. It was also active in the Danish and Norwegian markets before the domain name registration took place. It now holds a trademark registration at OHIM, in Alicante, Spain.
The domain name is identical to the trademark LUNDBERGS (save for the TLD ".com").
The Respondent has no rights or legitimate interests in respect of the domain name. The Respondent has never indicated an intention to make use of the domain name. In 2001 a standardized web site stated that it was under construction and in 2003, the only message was that "page cannot be shown". The Respondent has failed to make good faith use of its domain name for its business for a substantial period of time. PDS stands for the registered firm PRO DIVE PDS owned by an individual who is a board member of CONTROL ALT DELETE STOCKHOLM AKIEBOLAG, who has a reputation in Sweden for being notorious cybersqatter. The Respondent has been subject to numerous UDRP proceedings using the names PDS, ProDive and Control Alt Delete, all having been decided in favour of the Complainants. The domain name at issue is solely one of many hijacked domain names consisting of famous Swedish trademarks. The Respondent was well aware of the Complainant�s trademark at the time of the domain name registration. It registered in order to prevent the Complainant from reflecting its trademark in a corresponding domain name or so as to disrupt the Complainant�s business. The primary purpose was to sell, rent or otherwise transfer the domain name to the Complainant or to a competitor of the Complainant for valuable consideration in excess of out-of-pocket costs directly related to the domain name. Even if the Respondent has not directly offered to sell, rent or transfer the domain name to the Complainant, bulk registrations of domain names consisting of famous marks and failure to make good faith use of them for a substantial amount of time indicate that the Respondent is acting in bad faith. Its inaction shall be regarded as within the concept of use.
B. Respondent
The Respondent did not reply to the Complainant�s contentions.
6. Discussion and Findings
The trademark LUNDBERGS was not registered before the registration of the domain name by the Respondent. However, certainly before that, the Complainant�s use of the trademark in its business activities corresponded to the prerequisite for trademark right based on use as stated in section 2, third paragraph, of the Swedish Trade Mark Act (1960:644). The fact that the Panel has had some difficulties in discerning from the material presented as evidence of use, to what extent certain elements have been intended to refer to the time before the registration of the domain name and others to a later period, is, considering the evidential weight of elements clearly belonging to the earlier period, of no consequence to the finding that LUNDBERGS is a trademark in which the Complainant has rights and that it has had so already before the registration of the domain name by the Respondent.
A. Identical or Confusingly Similar
The domain name is identical to the Complainant�s established trademark LUNDBERGS, protected under Swedish law. The added gTLD ".com" does not affect this assertion. The public to which the trademark LUNDBERGS is directed will clearly be confused to believe that the domain name refers to products and services of the Complainant or to someone authorised by the Complainant.
B. Rights or Legitimate Interests
Evidence provided by the Complainant shows that the Respondent has no rights, nor any legitimate interest, in respect of its domain name. Any use by the Respondent of the trademark would require permission by the Complainant. No such permission has been given and it is not a legitimate interest worthy of respect to be allowed to register a domain name "on expectation" that permission may one day for consideration or without be given to activate a "sleeping" domain name of confusing similarity to an established mark such as that of the Complainant.
C. Registered and Used in Bad Faith
The Respondent has been shown to have registered the domain name in bad faith and to misuse the domain name system to the detriment of a legitimate trade mark right holder, the Complainant. The Respondent�s continued possession of the registration of the domain name , characterised as described here above, constitutes, together with what has been made clear to the Panel about related acts by the Respondent, conclusive evidence that the domain name is being used in bad faith. Also, an attitude of "wait and see" or a policy of extended and current inactivity under the standard phrase "under construction" or "side cannot be shown" for the web site on the part of the Respondent � not responding to the formal Complaint now before the Panel � does not deserve legal recognition under the circumstances evidenced in the case.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Gunnar Karnell
Sole Panelist
Dated: November 14, 2003
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