The Complainant is Swedavia AB, Sweden, represented by Ports Group AB, Sweden.
The Respondent is Joshua Enbuske, Grodis Trading AB, Sweden.
2. The Domain Names and RegistrarThe disputed domain names
The disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2021. On October 4, 2021, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On October 5, 2021, the Registrars 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 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 October 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 7, 2021. The Respondent submitted a Response on October 19, 2021. Based on the Respondent’s response, the Center noted that the Respondent appeared to be willing to explore settlement with the Complainant. Therefore, the Center notified the parties, in case they wished to explore settlement options, that the Complainant should submit a request for suspension by October 24, 2021. The parties were also notified that the proceedings would continue if such a request was not submitted to the Center. The Complainant did not submit such a request. The Respondent sent further emails to the Center on November 15, 2021 and November 16, 2021.
The Center appointed Jonas Gulliksson as the sole panelist in this matter on November 24, 2021. 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 BackgroundThe Complainant is a Swedish company that owns, operates and develops infrastructure of airports. The Complainant is the proprietor of the following trademark registrations:
- Swedish trademark registration no. 266172 for ARLANDA, registered May 5, 1995; and
- Swedish trademark registration no. 374171 for STOCKHOLM ARLANDA AIRPORT, registered August 26, 2005.
The disputed domain names
The disputed domain name
The websites to which the disputed domain names resolve are parked pages hosted by one.com.
5. Parties’ Contentions A. ComplainantThe Complainant asserts, substantially, the following:
The disputed domain names are confusingly similar to the Complainant’s ARLANDA trademark.
The Respondent does not have any rights in the ARLANDA trademark, nor is the Respondent a licensee of the Complainant. The Complainant has not given the Respondent any permission to register the ARLANDA trademark as a domain name or to use or present an offering of goods and services on the domain names under the trademark. The websites to which the disputed domain names resolve makes clear connections to the Complainant’s goods and services. The usage of the disputed domain names strongly suggests that they were registered with the Complainant’s ARLANDA trademark in mind and to commercially profit from mislead consumers searching for information about the Complainant’s business. There is no evidence that the Respondent has been commonly known by the disputed domain names or is making a legitimate noncommercial or fair use of the domain names.
The disputed domain names were registered and are being used in bad faith. The Complainant’s ARLANDA trademark registrations were obtained, and the Complainant has been using them, well before the Respondent became the owner of the disputed domain names. It is obvious that the Respondent was aware of the Complainant’s ARLANDA trademark and its business when registering the disputed domain names. Also, the fact that the website to which the disputed domain names resolve misleads Internet users not only to believe that the Respondent is the owner of the Complainant’s ARLANDA trademark, they also take advantage of the Complainant’s goodwill and draws consumers’ attention to a competitor which will cause a profit loss for the Complainant.
The Complainant sent a cease and desist letter to the Respondent on July 5, 2021 to which it received a reply from the Respondent, where it suggested that a transfer of the disputed domain names would take place. However, no action was taken in the months that followed the reply. Considering that the Complainant gave the opportunity to the Respondent to solve the matter amicably, and it actively chose not to reply, the Complainant had no other choice but to initiate the present UDRP proceeding.
B. RespondentThe Respondent asserts, substantially, the following:
The Respondent has not acted in bad faith. The disputed domain names have not been used for any commercial purpose, nor to take advantage of any trademark or goodwill or to harm anybody whatsoever. The disputed domain names are all being parked at one.com. The disputed domain names were a small part of a large quantity order. Some of these domain names have been cancelled by the Respondent after they had been purchased, before contact was taken by the Complainant. In email correspondence with the Complainant the Respondent was granted “permission” from the Complainant to re-activate the cancelled domain names. A request from the Respondent has since then been sent to one.com regarding the re-activation of domain names.
Further, the Complainant asserts that it gave the opportunity to the Respondent to solve the matter amicably, and that the Respondent actively chose not to reply. The Respondent never actively chose not to reply. All emails, without exception, from the Complainant have been answered promptly. Emails between the parties have intentionally been left out by the Complainant in Annex 6 of the Complaint and the evidence is therefore misleading.
The Respondent offered the Complainant to buy all of the disputed domain names free of charge. The Respondent also suggested to the Complainant to make its own valuation of the disputed domain names and stated that the Respondent would appreciate if the Complainant would like to pay the Respondent 5-10 % of the total value. The Respondent has still not received any offer for the disputed domain names. When the Respondent offered the Complainant 90-100% discount from their own valuation and to set the price themselves it did not expect the Complainant to start a dispute like this.
The Respondent has legally bought the disputed domain names with no bad intentions. Therefore, the Respondent is the rightful owner of the disputed domain names.
The Complainant asserts that the websites to which the disputed domain names resolve are used to make clear connections to the Complainant’s goods and services. The Respondent lacks to see how such a connection is made out of the source code and screenshots of parked websites found in Annex 5 of the Complaint.
Considering that the Respondent has not had a website online at any of the disputed domain names, it has not taken advantage of the Complainant’s trademarks to draw traffic to the website to which the disputed domain names resolve, nor does the disputed domain names interfere with the Complainant’s trademarks in any other way. The Respondent believes that the Complainant’s actions constitute reverse domain hijacking.
The disputed domain names have been registered in different countries and therefore the laws (and trademarks) of such a specific country applies for each of the disputed domain names respectively.
The Respondent understand there is an interest in the disputed domain names. It asked the Complainant to make a fair offer based of the own valuation to settle the dispute and become the rightful owner to the disputed domain names.
6. Discussion and FindingsFirstly, the Panel addresses that the Respondent submitted additional arguments after the response due date of November 7, 2021 had passed. The Panel, in its sole discretion, finds the arguments admissible.
Considering the Respondent’s assertions, the Panel also addresses that the Respondent, when registering the disputed domain names, has agreed to be bound by the Policy in relation to the disputed domain names.
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no right or legitimate interest in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
It is established that the Complainant is the proprietor of trademark registrations for trademarks consisting of, or including, ARLANDA, which were obtained prior to the registration of each of the disputed domain names.
The disputed domain names all include the trademark ARLANDA in its entirety. In eight of these domain names, the trademark ARLANDA is followed by a Top-Level Domain (“TLD”) suffix consisting of the name of a city, country or continent. In three of the disputed domain names the trademark ARLANDA is followed by the TLD suffixes “.express”, “.cab” and “.info” respectively. It is well established that TLD suffixes are disregarded in the assessment of identity or similarity between a disputed domain name and a complainant’s mark, see section 1.11.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”).
Therefore, the Panel finds that the disputed domain names are identical to the Complainant’s ARLANDA trademark.
B. Rights or Legitimate InterestsUnder paragraph 4(a)(ii) of the Policy, a complainant must first make out a prima facie case showing that the respondent lacks rights or legitimate interests in respect of a disputed domain name and then the burden, in effect, shifts to the respondent to come forward with evidence of its rights or legitimate interests. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see WIPO Overview 3.0, section 2.1).
The Complainant has provided evidence showing that the Complainant is the proprietor of a trademark that is identical to the disputed domain names. The trademark registrations held by the Complainant predates the registration of the disputed domain names. The Complainant contends that the Respondent has not been authorized to use the ARLANDA trademark. The Complainant owns, operates and develops infrastructure of airports and, as the Panel understands the Complainant’s contentions, the ARLANDA trademark is used within such business.
The Complainant has not asserted, nor does any material in the case indicate, that the Respondent has acquired any rights to a sign or trade name that corresponds with any of the disputed domain names nor that the Respondent is commonly known by any of the disputed domain names. The Complainant has not asserted, nor does any material in the case indicate, that the Respondent has used or intends to use the disputed domain names in connection with a bona fide offering of goods or services. In this regard, the Respondent has asserted that the disputed domain names were part of a large domain name order and that it is the rightful owner of the disputed domain names. Such circumstances do not prevent a finding of lack of right or legitimate interest in respect of a disputed domain name.
The Respondent has asserted that the Respondent was granted permission from the Complainant to re-activate some of the disputed domain names that were cancelled. No evidence supporting such assertion has been submitted by the Respondent.
The term “arlanda” does not have a dictionary meaning in neither Swedish nor in English. It is therefore unlikely that the Respondent, without having the Complainant’s trademark in mind, would have registered the disputed domain names. The combination of the trademark ARLANDA with TLD suffixes consisting of the name of a city, country or continent, strengthens this notion considering that such disputed domain names could be interpreted as being connected to websites with information for Internet users that are interested in travelling to such destinations from the Complainant’s airports. The disputed domain names
Given the nature of the disputed domain names and being identical the Complainant’s trademark, it carries a high risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0.
Considering what has been stated above, the Panel finds that that the Complainant has establish that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
C. Registered and Used in Bad FaithThe Complainant has asserted that the Respondent was aware of the Complainant’s ARLANDA trademark and its business when registering the disputed domain names. Further, the Complainant has asserted that that the websites to which the disputed domain names resolve mislead Internet users to believe that the Respondent is the owner of the Complainant’s ARLANDA trademark and that the Respondent also takes advantage of the Complainant’s goodwill and draws the Internet users’ attention to a competitor which will cause a profit loss for the Complainant.
As has been asserted by the Respondent, the websites to which the disputed domain names resolve are parked pages and do not make reference to the Complainant or its ARLANDA trademark as such. However, non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding.
As has been addressed above, the disputed domain names are identical to the Complainant’s ARLANDA trademark, registered in the domicile of the Respondent. The term “arlanda” does not have a dictionary meaning in either Swedish nor in English. Further, the TLD suffixes of the disputed domain names in combination with the trademark ARLANDA clearly indicates that Respondent registered the disputed domain names having the Complainant’s ARLANDA trademark and the Complainant’s business in mind.
Of the material submitted in the case it is evident that the Complainant sent a cease and desist letter to the Respondent with respect to the disputed domain names on June 5, 2021. The Respondent replied to such letter later the same day explaining, in essence, that the disputed domain names were part of a large order of domain names and that a majority of the order was cancelled because the Respondent realized there could be a conflict, which was not its intention. Four of the disputed domain names were, according to the Respondent, not cancelled and the Respondent explained that it was willing to transfer these domain names to the Complainant. On June 6, 2021, the Complainant replied the Complainant requesting the authorization codes to all of the disputed domain names in order to make the transfer of the disputed domain names. The Respondent replied to such message later the same day explaining that it considered consulting a legal professional. The Respondent requested the Complainant to explain the terms of the transfer in order for the Respondent to assess if it required legal assistance or not. The Complainant replied on June 7, 2021 and requested once again the authorization codes for all of the disputed domain names. The Respondent answered later that day and explained that most of the disputed domain names had been cancelled, that the Respondent is the rightful owner of the disputed domain names and that it had no intention of just giving the disputed domain names away to anyone that demanded it. The Respondent has asserted that the copy of the correspondence between the parties is incomplete. However, copies of additional correspondence between the parties have not been submitted by the Respondent. The Respondent has asserted that it offered the disputed domain names free of charge. The Complainant has also asserted that it asked the Complainant to make a fair offer based on the Complainant’s own valuation.
Considering the submitted copy of the correspondence between the parties and the Respondent’s own assertions, the Panel finds that it was not clear whether the Respondent was willing to transfer the disputed domain names to the Complainant without making any profit. The nature of the disputed domain names, the evidence submitted in the case and the parties’ assertions clearly indicate that the Respondent registered the disputed domain names, having the Complainant’s ARLANDA trademark and the Complainant’s business in mind, in order to take advantage of the Complainant’s trademark,.
Considering what has been stated above, the Panel finds that the disputed domain names were registered and are being used in bad faith. Thus, the Panel rejects the Respondent’s assertion that the Complainant’s actions constitute reverse domain name hijacking.
7. DecisionFor 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,
Jonas Gulliksson
Sole Panelist
Date: December 8, 2021