WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SHL Medical AB v. Novel Enterprises Limited
Case No. D2006-0286
1. The Parties
Complainant is SHL Medical AB, Stockholm, Sweden represented by an internal representative.
Respondent is Novel Enterprises Limited, Novel Group, Hong Kong, SAR of China, represented by Woo, Kwan, Lee & Lo, Hong Kong, SAR of China.
2. The Domain Name and Registrar
The disputed domain name is registered with R.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2006. On March 8, 2006, the Center transmitted by email to R a request for registrar verification in connection with the domain name at issue. On March 8, 2006, R transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 17, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April�6,�2006. The Response was filed with the Center on March 31, 2006.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on April�18, 2006. 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
Complainant is the owner of the Swedish trademark SHL GROUP, registered for the classes 10, 20 and 42 (see Swedish trademark application no. 378998, registered March 3, 2006).
Respondent has registered the domain name on September 14, 2001.
5. Applicable rules
Paragraph 4(a) of the Policy directs that Complainant prove each of the following:
(i) the domain name at issue is identical or confusingly similar to a trademark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of the domain name in bad faith for the purpose of paragraph 4(a)(iii) above.
Paragraph 4(c) of the Policy sets out, by way of example, three circumstances, each of which, if proven by Respondent, shall demonstrate Respondent’s rights or legitimate interests to the domain name for the purpose of paragraph 4(a)(ii) above.
6. Parties’ Contentions
A. Complainant
Complainant was founded on April 2, 1996. Complainant is part of Scandinavian Health Limited. SHL has established itself as a leader in the development and manufacturing of high-end drug delivery devices, industrial and consumer products, and hospital and home health care equipment. Complainant has manufacturing facilities in Taiwan and China, and research and development centers in Sweden, Taiwan and the USA. Complainant is a truly global enterprise.
Complainant has trademark rights in SHL GROUP due to a Swedish trademark registration on March 3, 2006. Complainant is also the registrant of various domain names containing SHL-Group, of which the first one was registered on May 18, 2004.
The domain name in dispute is identical to the trademark and the registered domains in which Complainant has rights.
Respondent has no rights or legitimate interest in respect of the domain name. The domain name in dispute has been registered by Respondent since September 14, 2001, and there is no evidence of any use of this domain name or demonstrable preparations to use this domain name. Also, Respondent is not commonly known by the domain name, does not have any product or service corresponding to the domain name and has no trademark rights in SHL GROUP.
The domain name was registered and is being used in bad faith. The disputed domain name is not linked to a web site, and is not in use. Failure to make a bona fide use of the domain name for a long time following the registration constitutes a sign of bad faith and prevents Complainant from adequately reflecting its trademark on the internet. Complainant points out that in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, it was held that mere passive holding of a domain name may constitute bad faith use where the registrant has no legitimate interest in the trademarked term constituting the domain name.
B. Respondent
Respondent points out that it registered the disputed domain name on September�14,�2001, more than four years before Complainant registered its SHL GROUP trademark. At the time of the registration of the disputed domain name, Respondent had no knowledge, in fact, could not have any knowledge, of the existence of Complainant’s Swedish trademark. Also, all twelve domain names registered by Complainant are registered at a much later date than the registration of the disputed domain name by Respondent.
Respondent has rights and a legitimate interest in respect of the disputed domain name. Respondent is a company established on April 16, 1964, in accordance with the laws of Hong Kong. Respondent has an affiliated company, Sportsware Holdings Limited (SHL), which is a company incorporated under the laws of the British Virgin Islands on June 9, 1989. Respondent is a 100% wholly-owned subsidiary of Novel Holdings Limited, which in turn holds 50% of the shares in SHL. SHL has a 100% owned subsidiary, SHL Finance Limited, which in turn has another 100% wholly-owned subsidiary called SHL Investment Group (USA). Respondent is the chief operating company of Respondent’s group in Hong Kong, which undertakes most of the administrative and secretarial work of Respondent’s group. Therefore, the disputed domain name is registered in the name of Respondent. The disputed domain name was registered in 2001, in order to safeguard the interests of SHL. SHL is engaged in high-fashion industry. SHL had held a major stake in Tommy Hilfiger Corporation. SHL acquired the controlling shareholding of the world-renowned jeweler Asprey & Garrard.
Although Respondent’s group nor SHL is commonly known as the SHL Group, SHL are the initials for Sportsware Holdings Limited (i.e. SHL) and it is apparent from the above that SHL is an active company in the fashion and retail industry. Within Respondent’s group there are at least two other companies whose company names begin with SHL, namely SHL Finance and SHL Investment Group. The disputed domain name was registered and reserved for the use by the SHL group of companies. Due to the constant change in the investment portfolio and as each brand has its own website, Respondent’s group has not come up with a concrete plan on how to launch the website of the disputed domain name and its proper contents.
The domain name has not been registered and is not being used in bad faith. Respondent has not yet decided on the proper contents of the website for the disputed domain name and thus the website had remained inactive. The disputed domain name was registered with a view to be used by the group of companies with company names beginning with SHL.
Respondent is not a competitor of Complainant and does not have any intention to disrupt the business of Complainant.
Respondent has no intention to attract, for commercial gains, internet users to the website of the disputed domain name by creating confusion with Complainant’s trademark.
7. Discussion and Findings
Complainant must provide evidence of all elements of paragraph 4(a) of the Policy. As the decision to transfer or cancel a domain name may have serious consequences for the domain name holder, the evidence should be sufficient in all respects to support such a decision.
A. Trademark rights
Complainant has provided sufficient evidence of its right to the trademark SHL GROUP.
B. Identical or confusingly similar
The domain name is similar to Complainant’s trademark SHL GROUP, with the only difference being the addition of the suffix “.com” and the addition of a hyphen. The suffix only indicates that the domain name is registered in the “.com” gTLD. The addition of a hyphen does not prevent that the elements “SHL” and “group” still are the most prominent elements in this combination. From the above follows that the domain name is confusingly similar to Complainant’s trademark SHL GROUP.
C. Bad Faith
Respondent registered the domain name at issue in 2001, whereas Complainant’s trademark was only registered in 2006. Complainant, moreover, has not registered a domain name including SHL Group before 2004. It is established UDRP case law that in such a situation, the registration was not in bad faith, unless Complainant shows that Respondent was clearly aware of Complainant and aimed to take advantage of the confusion between the domain name and the trademark in question. (See, e.g. ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669, ; Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc), WIPO Case No. D2003-0320, ; Madrid 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598, ; General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Center Online, WIPO Case No. D2003-0845, , .
Complainant has presented no meritorious argument and submitted no evidence that Respondent was aware of Complainant and aimed to take advantage of possible confusion between Complainant’s trademark and the domain name. Neither has Complainant provided evidence in support of its contention that Respondent has registered the domain name in question in order to prevent Complainant to register the domain name. Complainant has failed to come forward with evidence to explain why a company established in Hong Kong, engaged in the fashion industry, would intend to target a Swedish company, active in health care equipment.
The fact that Respondent has not used the domain name since the registration thereof, does not in itself constitute bad faith. Respondent submits that it has reserved the domain name in question for a group of three affiliate companies that have the indication “SHL” in their company name.
Other circumstances need to be demonstrated by Complainant (such as its trademark being well-known, concealment of identity by Respondent or the impossibility to conceive of a good faith use of the domain name) in order to conclude that a passively held domain name was registered and is used in bad faith. See, e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, ; Transfer Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574 and ; Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131, .
Complainant has failed to provide such evidence. The Panel finds that the passive holding of a domain name under the circumstances of this case does not constitute bad faith in the sense of paragraph 4(b) of the Policy.
Complainant has not provided any other evidence of bad faith, e.g. that Respondent had the intention to attract, for commercial gain, internet users to its website by creating confusion with Complainant’s trademark, or that Respondent is a competitor of Complainant and has registered the domain name with the intention to disrupt Complainant’s business.
The Panel therefore concludes that the registration of the domain name at issue by Respondent was not in bad faith.
D. Rights or legitimate interests
The fact that Respondent has registered the domain name at issue so that it can be used by a group of companies with company names beginning with “SHL” within the company group of Respondent would appear to provide Respondent with a legitimate interest in respect of the domain name.
In view of the considerations above, it is however not necessary for the Panel to decide on this issue.
8. Decision
On the basis of the foregoing, the Complaint is denied.
Wolter Wefers Bettink
Sole Panelist
Dated: May 2, 2006
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