WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Nordic Storage AB v. Q itgration AB, Thomas Felczac Case No. D2010-0855 1. The Parties
The Complainant is Nordic Storage AB of Göteborg, Sweden, represented by Domain and Intellectual Property Consultants Dipcon AB, Sweden.
The Respondent is Q itgration, Thomas Felczac, AB of Göteborg, Sweden. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2010. On May 27, 2010, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain name. On May 27, 2010, eNom, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 June 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 22, 2010. The Response was filed with the Center on June 23.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on July 7, 2010. 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 Complainant has submitted evidence demonstrating that it is the owner of the figurative Community Trademark (“CTM”) NORDIC STORAGE with registration number 003571461 for class 4, 37 and 39. The filing date is December 12, 2003 and the trademark registration date is May 18, 2005.
According to the submitted printouts from the concerned WhoIs databases, the disputed domain name was registered November 15, 2001. 5. Parties' Contentions A. Complainant
The Complainant is a public liability company incorporated in Sweden where it holds its principle place of business.
A WhoIs history search indicates that the disputed domain name was registered on November 15, 2001 to the company Scandinavian Tank Storage AB. When the Complainant performed a WhoIs database search on February 23, 2010 the Respondent was listed as holder of the disputed domain name. At some point between February 23 and March 25, 2010, the disputed domain name was placed in a WhoIs privacy protection service.
The previous holder of the disputed domain name, Scandinavian Tank Storage AB, is the former owner of the Respondent. The founder and the CEO of the company was Lars Jacobsson, a former marketing manager with the Complainant. Scandinavian Tank Storage AB is a competitor to the Complainant. Both companies are situated in Gothenburg and provide storage for petroleum products. Scandinavian Tank Storage AB has transferred the disputed domain name to the Respondent.
The Complainant sent a cease and desist letter to the Respondent on March 18, 2010 via post and e-mail. The Respondent replied that the Complainant could purchase the disputed domain name for EUR 25,000.
The Complainant maintains that it has used the trademark NORDIC STORAGE since 1999 when the company name was registered.
The Respondent has no rights in the trademark NORDIC STORAGE. The Respondent is not a licensee of the Complainant and the Complainant has not given the Respondent permission to register the trademark as a domain name.
The Respondent has been aware of the Complainant's business as both parties are domiciled in Gothenburg, Sweden. Since Lars Jacobsson, a former marketing director of the Complainant, was the CEO of Scandinavian Tank Storage AB at the time when the disputed domain name was registered, it is obvious that the registration was made primarily for the purpose of disrupting the business of the Complainant. The Respondent was a part of Scandinavian Tank Storage AB at the time of registration.
The disputed domain name has been redirected to a website of Scandinavian Tank Storage AB and to Dynamic Tank Storage, a company where Lars Jacobsson is the CEO. After the Complainant contacted the Respondent, the domain name was redirected to a hotel site in Prague. B. Respondent
The Respondent failed to submit a Response before the deadline June 22, 2010. On June 23, 2010, the Respondent contacted the Center via e-mail and claimed that a Response had been sent via e-mail on June 21, 2010. In the above-mentioned e-mail to the Center dated June 23, 2010, the Respondent attached the Response.
The Respondent argues that the disputed domain name was part of a transaction when the Respondent purchased the company Q itgration AB from Scandinavian Tank Storage and Mr. Lars Jacobsson. Scandinavian Tank Storage has a division called Nordic Storage division and this is the reason why Scandinavian Tank Storage registered the disputed domain name. The Respondent has been the holder of the disputed domain name since 2002.
A company called Dynamic Holding AB rents the disputed domain name from the Respondent. The Respondent claims that it has received an order to produce a website to the disputed domain name with a preliminary launch date of August 1, 2010.
The Respondent has not had any contact with the Complainant prior to receiving the cease and desist letter from the Complainant. The requested payment of EUR 25,000 for transferring the disputed domain name to the Complainant would be reimbursement for lost revenue.
The disputed domain name, which literally describes storage tanks in the north, is directed to Dynamic Tank Storage Ltd's operations in northern Scotland. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant is, according to the submitted evidence, the owner of the registered trademark NORDIC STORAGE.
The disputed domain name incorporates the trademark NORDIC STORAGE in its entirety.
Having the above in mind, the Panel concludes that the disputed domain name is identical to the Complainant's trademark NORDIC STORAGE and that the Complainant has proved the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(a) that it has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute; or
(b) that it is commonly known by the domain name, even if it has not acquired any trademark rights; or
(c) that it intends to make a legitimate, noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not licensed or otherwise consented to the Respondent's use of the trademark NORDIC STORAGE in connection with the disputed domain name which is identical to the Complainant's registered trademark.
The Respondent has not submitted any evidence in this case indicating that the Respondent is the owner of any trademark rights similar to the disputed domain name.
The Respondent argues that it has been the holder of the disputed domain name since 2002 but has not demonstrated any preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute.
Furthermore, the Panel has noted that there is no evidence in the case demonstrating or indicating that the Respondent is commonly known by the disputed domain name.
Although the Respondent claims that it has an order to produce a website for the disputed domain name with a launch date of August 1, 2010, the Respondent has not submitted any kind of evidence to support this claim.
Having the above in mind, the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:
(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or
(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.
According to the submitted historic copies of the WhoIs database, the disputed domain name was registered to Scandinavian Tank Storage AB on November 15, 2001. Neither of the parties has provided an exact date of when the disputed domain name was transferred from Scandinavian Tank Storage AB to Q-Itgration AB, although the Respondent maintains that it has been the holder of the disputed domain name since 2002. It is, however, certain that the Respondent's e-mail address has been reflected in the WhoIs database since November 15, 2001.
From the material submitted by the Complainant, it is evident that the application for the CTM trademark NORDIC STORAGE was filed on December 12, 2003 and registered on May 18, 2005. The panel has noted the Complainant's claim that the trademark NORDIC STORAGE has been used since the company was founded in 1999, but the Complainant has not submitted any kind of evidence of use at time of its registered name in commerce. Furthermore, the panel has noted that in the Complainant's cease and desist letter to the Respondent dated March 18, 2010, the Complainant has claimed that the trademark NORDIC STORAGE has been used for services in the travel business since 1981. Despite the Complainant's claims of use above there is no evidence in the case before the panel that demonstrates that the Complainant had an established right in the trademark NORDIC STORAGE prior to the registration of the disputed domain name . Furthermore, noting the present record, including the maintenance of the same email address in the WhoIs as above mentioned, and the relationship between the registrants as they appeared in the WhoIs, the Panel finds that the domain name has been held by the same underlying domain holder. See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281.
In the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview”), paragraph 3.1, consensus view, it has been stated that when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant's non-existent right.
Thus, on the basis of the submitted statements and documents, the panel is not able to conclude that the registration of the disputed domain name was made in bad faith. In order to meet the conjunctive requirements of paragraph 4(a)(iii) of the Policy, the Complainant must prove both of its required elements, i.e. registration and use in bad faith. Accordingly, the Panel concludes that the first condition of the third requirement of the Policy has not been established and the Complaint must therefore be denied. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Johan Sjöbeck
Sole Panelist
Dated: July 16, 2010
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