The Complainant is Skandia Fastigheter AB of Stockholm, Sweden, represented by Nordisk Media Utveckling AB, Sweden.
The Respondent is Effekt Försäljning Ulla Olsson AB / Gunnar Falk, Effekt AB of Värmdö, Sweden, self-epresented. 2. The Domain Names and Registrar
The disputed domain names , , and are registered with eNom, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2017. On March 31, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 31, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of all four disputed domain names and providing the contact details.
The Center verified that 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 3, 2017. After transmitting the email notifying the Respondent’s default, the Center received an email communication from the Respondent on May 4, 2017, requesting an extension to file a Response, and two more email communications from the Respondent on May 9, 2017.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on May 11, 2017. 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 provided evidence that it is the owner of the following trademark registrations:
DANDERYDS CENTRUM (word) with Swedish registration No. 503423, filing date December 18, 2009 and registration date February 10, 2012.
DANDERYDSCENTRUM (device) with Swedish registration No. 416440, filing date December 12, 2010 and registration date February 11, 2011.
DANDERYDSCENTRUM (device) with Swedish registration No. 416441, filing date December 12, 2010 and registration date February 11, 2011.
DANDERYD CENTRUM (word) with Swedish registration No. 523289, filing date October 15, 2014 and registration date February 13, 2015.
The disputed domain names and were registered on February 8, 2008.
The disputed domain names and were registered on March 11, 2008.
At the time of filing, the disputed domain names resolved to registered-hosted parking pages. 5. Parties’ Contentions A. Complainant
The Complainant is a property owner that develops, manages and lets properties within four branches: office space, retail/commercial, residential and public use. The Complainant manages the Mörby Centrum mall in Danderyd, Sweden. The mall comprises 60 stores and had 6.7 million visits during 2015. As the Complainant is expanding the mall, the name will be changed to Danderyd Centrum.
Parallel to this proceeding, the Complainant has filed a Complaint against the Respondent in accordance with the Swedish alternative dispute resolution system regarding domain names , , and .
There is nothing that suggests that the Respondent has been using the disputed domain names in connection with a bona fide offering of goods or services. The disputed domain names were registered with the purpose of selling them to the Complainant and to prevent the Complainant from registering its trademarks as corresponding domain names. Nothing indicates that the Respondent has been commonly known by the disputed domain names. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain.
The disputed domain names were registered prior to the Complainant’s trademarks. There are however several facts that show that the Respondent was acting in bad faith, both when registering and using the disputed domain names. The plan to change the name of the shopping mall from “Mörby Centrum” to “Danderyd Centrum” was revealed to the public in an article published in the magazine “Fastighetsvärlden” on February 6, 2008. Between February 7, 2008 and April 10, 2012, the Respondent registered 24 domain names containing the words (and variations thereof) “danderyd” (a municipality close to Stockholm), “centrum” (center), “galleria” (mall) and “shopping”. It appears that the Respondent saw an opportunity for a lucrative domain name transaction by registering domain names corresponding with the new name of the mall and thereby preventing the Complainant from obtaining the relevant domain names.
On June 30, 2015, the Respondent’s domain name resolved to a website with the text “Danderyd Mörby Center. Domain for sale. Invest for the future”. The source code on the Respondent’s website contained the following keywords: “mörbycentrum, danderydcentrum, danderydscentrum, centrum, täbycentrum, stinsen, djursholm, vaxholm, danderydsjukhus, sjukhus, stocksund, ica, apotek hm, blommor, diligentia, Hennes & Mauritz”. The keywords: “mörbycentrum”, “danderydcentrum” and “danderydscentrum”.
On July 1, 2015, the Complainant sent a cease and desist letter to the Respondent. The Complainant suggested a solution in good faith, offering the Respondent reimbursement of SEK 6,400 to cover the out-of-pocket costs for the registration and renewal of the disputed domain names. On July 28, 2015, the Respondent replied via email and offered to sell the Swedish domain names , , and for SEK 220,000 + VAT. In the same reply, the Respondent stated that it also was the holder of the corresponding domain names in the generic Top-Level Domain (“gTLD”) “.com”, i.e., the disputed domain names , , and . B. Respondent
The Respondent did not reply to the Complainant’s contentions within the given deadline. On May 4, the Respondent sent a reply and on May 9, 2017 the Respondent sent a Response to the Center.
In the Response, the Respondent stated that it is a serious company with great goals, ambitions and good entrepreneurial spirit. The Respondent sells chemical products. The Respondent has broad competence and focus on developing ideas and products. Over the years, the Respondent has been busy in various fields, such as café, restaurants, hotels, consulting, tobacco stores, gift shops and salons. The disputed domain names were registered with the ambition to sell exclusive technical products online or through a store in Danderyd. The Respondent, who is a true entrepreneur, thinks big, is open-minded and sees opportunities where others may see adversities.
The Complainant has stated that the name change was announced in a publication in a property magazine on February 6, 2008. The Respondent states “It is unreasonable to expect that the Respondent should have insight in all trade journals that are published. If the Complainant was so sure about the name change, why did not the Complainant register the disputed domain names before the Respondent?” 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed 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 the disputed domain name; and
(iii) that the disputed 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 trademarks DANDERYDS CENTRUM and DANDERYD CENTRUM. The disputed domain names and incorporate the respective trademarks in their entirety. The disputed domain names and incorporate the respective trademarks in their entirety with the addition of a hyphen. The mere addition of a hyphen does little, if anything, to eliminate the confusing similarity between the Complainant’s trademarks and the disputed domain names.
Having the above in mind, the Panel finds that the disputed domain names are identical or confusingly similar to the Complainant’s trademarks and that the Complainant has proved the requirements 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 names. The Respondent may establish a right or legitimate interest in the disputed domain names by demonstrating any of the following non-exhaustive circumstances listed in paragraph 4(c) of the Policy:
(a) that it has made preparations to use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services prior to any notice of the dispute; or
(b) that it is commonly known by the disputed domain names, even if it has not acquired any trademark rights; or
(c) that it is making a legitimate, noncommercial or fair use of the disputed domain names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Complainant has not licensed or otherwise consented to the Respondent’s use of the trademarks DANDERYDS CENTRUM and DANDERYD CENTRUM in connection with the disputed domain name , , and which are confusingly similar to the Complainant’s trademarks.
Although the Respondent has argued that the disputed domain names were registered in order to sell exclusive technical products via a webstore or a store in Danderyd, the Respondent has not submitted any evidence in the case indicating that the Respondent has made any preparations to use the disputed domain names in connection with a bona fide offering of goods or services prior to the dispute. However, from the evidence, it is certain that the Respondent has offered the disputed domain names for sale in 2015.
The Respondent has not submitted any evidence indicating that it is the owner of any trademark rights or that the Respondent is commonly known by the disputed domain names. There is no evidence indicating that the Respondent intends to make a legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademarks.
The Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy or otherwise, any rights or legitimate interests in respect of the disputed domain name. Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also satisfied 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 disputed domain names were registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registrations 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 disputed domain names; or
(ii) circumstances indicating that the disputed domain names were registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided there is a pattern of such conduct; or
(iii) circumstances indicating that the disputed domain names were registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the disputed domain names have intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on that website or location.
In the final analysis, the ultimate burden of proof with respect to all three elements of paragraph 4(a) of the Policy remains with the Complainant. Furthermore, it is clear from the terms of paragraph 4(a)(iii) of the Policy and confirmed by numerous UDRP decisions that the two elements of the third requirement are cumulative. Thus, both registration and use in bad faith must be proved for a Complainant to be successful.
The disputed domain names and were registered by the Respondent on February 8, 2008 while and were registered on March 11, 2008. The Complainant filed a trademark application for DANDERYDS CENTRUM on December 18, 2009. Consequently, it is established that the disputed domain names were registered by the Respondent before the Complainant filed its trademark application.
The issues regarding bad faith when a domain name is registered before a trademark and when a domain name is registered in anticipation of trademark rights are addressed in paragraphs 3.8.1 and 3.8.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) which states: “Where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent.” However, “in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith. Such scenarios include registration of a domain name: (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent’s insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant’s filing of a trademark application.”
Paragraph 3.2.1 of the WIPO Overview 3.0 addresses additional bad faith consideration factors and states: “Particular circumstances panels may take into account in assessing whether the respondent’s registration of a domain name is in bad faith include: (i) the nature of the domain name (e.g., a typo of a widely-known mark, or a domain name incorporating the complainant’s mark plus an additional term such as a descriptive or geographic term, or one that corresponds to the complainant’s area of activity or natural zone of expansion), (ii) the chosen top-level domain (e.g., particularly where corresponding to the complainant’s area of business activity or natural zone of expansion), (iii) the content of any website to which the domain name directs, including any changes in such content and the timing thereof, (iv) the timing and circumstances of the registration (particularly following a product launch, or the complainant’s failure to renew its domain name registration), (v) any respondent pattern of targeting marks along a range of factors, such as a common area of commerce, intended consumers, or geographic location, (vi) a clear absence of rights or legitimate interests coupled with no credible explanation for the respondent’s choice of the domain name, or (viii) other indicia generally suggesting that the respondent had somehow targeted the complainant.”
Although there is no evidence before the Panel indicating that the Complainant used the term DANDERYDS CENTRUM in a trademark sense prior to the time of the registration of the disputed domain names, it is clear that the name change of the shopping mall name was revealed to the public on February 6, 2008 and that the disputed domain names were registered on February 8 and March 11, 2008. The Panel finds the timing and circumstances of the domain name acquisitions by the Respondent suspicious, especially when considering the Respondent’s absence of rights or legitimate interests coupled with no plausible explanation for the choice of the domain names. It has been demonstrated by the Complainant that the Respondent registered 24 domain names in total containing the words “danderyd”, “centrum”, “galleria” and “shopping” from February 7, 2008 to April 10, 2012, none of which appearing to be put to any use in connection with the Respondent’s allegations or otherwise.
The fact that the Respondent later offered to sell the disputed domain names for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain names indicates that the Respondent had the Complainant in mind when registering the disputed domain names and that the Respondent sought to take advantage of any confusion between the disputed domain names and the Complainant’s potential rights.
Thus, the evidence in the case before the Panel indicates on balance that the disputed domain names have been acquired by the Respondent primarily for the purpose of selling the disputed domain name registration to the Complainant for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain names.
The Panel concludes that the Complainant has proven the requirements under paragraph 4(b) of the Policy and that the disputed domain names , , and have been registered and used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names , , and be transferred to the Complainant.
Johan Sjöbeck
Sole Panelist
Date: May 30, 2017
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