WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Vattenfall AB v. Roger Lundmark Case DCH2009-0021 1. The Parties
The Claimant is Vattenfall AB of Stockholm, Sweden, represented by Nihlmark & Zacharoff Advokatbyra AB, Sweden.
The Respondent is Mr. Roger Lundmark of Füllinsdorf, Switzerland. 2. Domain Name
The dispute concerns the following domain name: 3. Procedural History
The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2009, by e-mail and in hardcopy on September 24, 2009. On September 17, 2009, the Center transmitted by email to SWITCH a request for verification in connection with the domain name at issue. On September 21, 2009, SWITCH transmitted by email to the Center its verification response confirming that the Respondent is listed as the holder of the domain name and providing the relevant contact details. The Center verified that the Request satisfied the formal requirements of the Rules of procedure for dispute resolution proceedings for .ch and .li domain names (the “Rules of Procedure”), adopted by SWITCH, the .ch and .li registry, on March 1, 2004.
In accordance with the Rules of Procedure, paragraph 14, the Center formally notified the Respondent of the Request, and the Dispute resolution proceedings commenced on September 29, 2009. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was October 19, 2009 and the Respondent filed a Response on that date.
A telephone conciliation conference has taken place within the deadline specified in paragraph 17(b) of the Rules of procedure as the Respondent sent an email, dated October 29, 2009, declaring his willingness to participate in a Conciliation in accordance with paragraph 15(d) of the Rules of Procedure.
The telephone conversation took place on November 20, 2009. On the same day, the Conciliator informed the Center that the telephone conciliation was not successful. On November 20, 2009, the Claimant then made an application for the continuation of the Dispute resolution proceedings in accordance with paragraph 19 of the Rules of procedure.
On December 1, 2009 the Center appointed Prof. François Dessemontet as Expert in this case. The Expert finds that he was properly appointed. In accordance with Rules of Procedure, paragraph 4, the above Expert has declared his independence of the parties. 4. Factual Background
A. The Claimant is one of Europe's largest supplier of electricity and the largest generator of heat. It has been active in Sweden since 1909 and during the last 10 to 15 years its business has expanded to other parts of Europe. It has used the trademark VATTENFALL, which means “waterfall”, ever since it started its business. The Claimant holds several domain registrations and trademarks registrations for the word “vattenfall” and misspelling of this word, inter alia , , , , , .
B. In Switzerland the mark VATTENFALL is protected through the International Trademark 756 155 VATTENFALL registered on November 29, 2000.
C. The Respondent is a trained physicist and works as a professional consultant for power supply. He has lived since 1995 in Switzerland; he is a Swedish citizen and has studied and worked in Sweden before 1995.
D. On November 30, 2001, the Respondent registered the domain name which is in dispute. This domain has never been in use and is currently not in use, with the exception of a notice in writing which states that the domain is under construction and displays two links.
E. Parties have been in contact to solve this matter amicably. The Respondent stated that he would be willing to transfer the domain name to the Claimant if the Claimant would purchase from him consultancy services in the amount of CHF 60'000.-. The Claimant declined this offer and started the present dispute resolution proceeding. 5. Parties' Contentions A. Claimant
The Claimant contends that the trademark VATTENFALL is extremely well known in Sweden and is also known in Northern Europe by reason of the long use of the mark in Sweden and of the “gigantic” sales of power and heat under the trademark. The Claimant would have a strategy concerning domain name registrations and would intend to register the mark VATTENFALL under all country top level domains where the company has an ongoing business activity as well as where it owns registered trademarks for its name.
According to the Claimant, it should be “completely ruled out that the [R]espondent should not have had knowledge of the Swedish company Vattenfall AB (publ.) and the trademark vattenfall. Thus it is unquestionable that the [R]espondent has registered the domain with knowledge of the Swedish trademark VATTENFALL. The registration of the domain must therefore [have] been made in bad faith” (p. 6 of the request). Further, the domain is under construction since 2001, which would show that the Respondent has no legitimate interest in it. Nevertheless, there are links on the website to “Zertifikatehandel” and “Zertifierung” and a German notice stating in translation “We build for the future; the market for green certificates. We build on the natural primitive force, the force of falling water. Vattenfall – Waterfall”.
From a legal point of view, the Claimant argues that according to the decision of the Swiss Federal Tribunal of March 6, 2007 in the case (annex 8 to the request), domain names must maintain a sufficient distinction from protected signs to prevent confusion. The Claimant also cites a WIPO Domain Name decision in a Swiss case Tamedia AG v. Rocha Maria Elini,WIPO Case No. DCH2007-0018, stating that the “mere danger of a preliminary misappropriation [sic] is sufficient, since the danger of confusion already arises in the moment an Internet used expects certain information and such danger cannot be removed by the design of a site” (see annex 9 of the request).
The Claimant considers therefore that “the Respondent's use of the domain name for a website without any commercial—or non-commercial—activity except the information notice mentioned above should be deemed to be a violation of the Claimant's trademark rights according to Art. 13 Swiss Trade Mark Act.” (p. 8 of the request). B. Respondent
The Respondent maintains that he registered the domain name at issue with the “sincere intention of running his own consultancy company”, while he was following a program on “Marketing Principles on a Deregulated Swiss Electricity Market” at the Fachhochschule Aargau.
The first contact between Parties took place in 2004. Up to that time there would have been no interest of the Claimant to register a domain name in Switzerland, in spite of the expansion of its activities in Germany, Poland, Finland, Denmark and Great Britain. Then the Respondent offered to the Claimant his consultancy services at the rate of CHF 1'000 a day for sixty day, including the transfer of the domain name. He now seems to offer in his response of October 19, 2009 (p.3 § 5) the transfer of the domain name for CHF 10'000 without any consultancy services. He mentions that the “value of the domain name to the [C]laimant seems to be negligible” (p. 3 § 5 in fine).
From a legal viewpoint the Respondent argues that the applicable rule for domain names is “first come first served”. That means, according to him, that the “choice of a domain name is free, as long as it has not been registered by somebody else and no one else's rights have been infringed” (p. 3 § 6). The Claimant would not be well known on the Swiss market. The size of the Claimant company is irrelevant. Further, the Respondent asserts that he has paid his annual fees with the intention of building and developing his consultancy on the green electricity market using his platform under the domain name at issue. Thus he has registered the domain name in good faith.
The Respondent denies that there could be confusions for customers because of the different designs of the two websites, the absence of the Claimant's logo on his website and the translation into German of the word “vattenfall” in his website. The content of the activities advertised is different, one being a power and heat supply company, the other one a consultancy firm certifying green electricity.
Finally the Respondent stresses that “the [C]laimant has not been active on the Swiss market, even though the trademark was registered in 2000. Ne(i)ther does it appear that the [C]laimant has been doing much business in Li[e]chtenstein, where the domain name cannot be accessed online”. The Respondent further mentions that “if the trademark is not used within five years of registration, the owner of the trademark may loose his right altogether according to Art. 12 [Law on the Protection of Trademarks, below: “MSchG.”]. Art. 3 Act against Unfair Competition (below: UWG) would not apply, as the Respondent has not been competing in any way with the Claimant. According to the Respondent, the Claimant would have no better right to the domain name than the Respondent, as the Claimant is not suffering from any disadvantage. 6. Discussion and Findings A. The Claimant owns a right in a distinctive sign
The Claimant has registered the trademark VATTENFALL with designation for Switzerland in November 2000. The Claimant does not show that it has used this trademark in Switzerland, and the Respondent claims that the Claimant enjoys no trademark right either in Switzerland or in Liechtenstein, by reason of lacking use of the sign “vattenfall” in Switzerland.
Were it only for the use on the market in Switzerland, the prayer for transfer filed by the Claimant might actually be denied in the absence of any relevant use of the trademark in Switzerland. However, by application of the principle “jura novit curia”, the Expert states that any and all use of the trademark vattenfall in Germany is to be assimilated to a use of that trademark in Switzerland, because of Art. 5 par. 1 of the Treaty of 1892 between Germany and Switzerland on the reciprocal protection for patents, models and trademarks (Übereinkommen vom 13. April 1892 zwischen der Schweiz und Deutschland betreffend den gegenseitigen Patent-, Muster- und Markenschutz, Sytematic Collection of Swiss Laws 0.232.149.136). As it is well known and admitted by both Parties that the Claimant is operating power plants in Germany under its trademark, the Respondent's defense based on non-use or little use of the trademark in Switzerland cannot be accepted.
Further, “vattenfall” is also the central element of the trade name of the Claimant. As such, it is protected under Art. 8 of the Paris Convention of 1883 on the Protection of Industrial property:
“Trade Names
A trade name shall be protected in all the countries of the Union without the obligation of filing or registration, whether or not it forms part of a trademark.”
The protection of the trade name of the Claimant must also be afforded against the misappropriation by the registration of a domain name identical to or similar to it. Assuredly, in the absence of a registration at the Swiss registry of commerce, the protection for the foreign trade name will derive from the Act against unfair Competition of 1986, most probably its Article 3 litt. d UWG or, perhaps, Art. 3 litt. B UWG or Art. 2 UWG, the so-called “general clause against unfair competition”. It should be noted in this respect that the Respondent erroneously rejects the application of that Law by maintaining that there would be no competition between his consultancy services and the power and heat supply offered by the Claimant. Under Swiss law, no competition must exist between the Parties for that Act to be applicable. It is sufficient that the conduct of the respondent be of a nature to affect the market of goods and services in the area of electricity and power supply. There is no doubt that this requirement is satisfied here, as the misappropriation of the trade name of the Claimant is of a nature such as to influence the functioning of the market of power supply and sale in Switzerland. B. The registration or use of the Domain Name at issue constitutes a clear infringement of the Claimant's right
The Claimant registered its trademark with designation of Switzerland in November 2000. More than one year later the Respondent registered the domain name at issue. The second registration, taking up the sole and distinctive element of the Claimant's trademark, is a clear violation of the Claimant's trademark. Further, it is also a violation of its trade name.
The Respondent makes reference to the principle “first come first served” a principle mostly brought in UDRP proceedings. Even at the time of the registration of the disputed domain name the attention of the public was already drawn to the fact that this principle would not allow cybersquatting, as the UDRP Policy went into effect at the beginning of 2000. Leaving the UDRP aside, there could be no good faith in violating trademark rights existing in Switzerland, as the Swiss doctrine and case law was already bent on preserving the trademark and trade names rights of the owners of distinctive signs that would be misappropriated on the Net (see for example François Dessemontet, La propriété intellectuelle, Lausanne 1999, no. 583-597 with citations).
The Respondent contends that the Claimant would suffer little or no harm because of this misappropriation. This contention is plainly wrong in fact, because confusion on the market of goods or services is always harmful to some extent to any going concern. Further the argument cannot be admitted as a matter of law: the Claimant has the right to be protected against any misuse of its trademark right and trade name as a distinctive sign by someone who is not authorized as a sales agent by the Claimant or otherwise making an acceptable use of the distinctive sign, such a reference for ordering spare parts, comparison of prices or characteristics etc.
The Respondent has given too little heeding to a difference between the general UDRP provisions and the Rules of Procedure of 2004 applicable to .CH. The finding of “bad faith” is under the UDRP an essential element of the adjudication because the UDRP fights against cybersquatting. The Rules of Procedure do not imply a finding of “bad faith” in order to accept the request to transfer the domain name at issue. It is sufficient that the right of the Claimant exists and be injured. Besides, the knowledge by the Respondent of the existence of the Claimant and its trade name at the time of the registration in 2001 is highly likely as he studied and then lived as a trained physicist in Sweden. Further, offering his services as consultant in the area of power supply, the Respondent cannot ignore one of the main producers in this field. His first offer of trading it for CHF 60'000, followed by a late hour offer of selling it for CHF 10'000 is proof enough of his true intentions.
In a way, the circumstances of that case are similar to the Gmail case that the Federal Tribunal decided on May 30, 2008 in favor of Google Inc. (sic ! 2008 pp. 732 ss = Journal des Tribunaux 2008 I 396-399). In the Gmail case the misuse had been to register in Switzerland a trademark not yet registered by the rightful owner abroad, while in the present case the Swiss domain name appears to have been registered in an abusive manner in order to try and sell it later to the foreign rightful owner. The same protection of the foreign entity should prevail in both instances. The commentary already stated that the circumstances of the case are paramount in determining whether the registration of a distinctive sign is to be deemed to have been made in an abusive manner (F. Dessemontet, Droit à la marque, in La nouvelle loi fédérale sur la protection des marques, Lausanne 1994, p. 54, cited with approval in the Gmail decision of the Federal Tribunal, cons. 2.1.4). On the strength of the file there is little doubt that the Respondent, ascertaining that was not registered in Switzerland, decided to register the domain name in order to use it at the earliest opportunity, not through building it—which he never did—but trading it. This is constitutive of an abuse and it justifies ordering the transfer of the domain name to the Claimant. 7. Expert Decision
For the above reasons, the Request is granted and the domain name is transferred to the Claimant.
Prof. François Dessemontet
Expert
Dated: December 3, 2009
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