The Complainant is Elkjøp Nordic A/S of Lørenskog, Norway, represented by Cedel AB, Sweden.
The Respondent is Svenska Datorsystem AB, Hultgren Johan of Värnamo, Sweden. 2. The Domain Name and Registrar
The disputed domain name is registered with .NU Domain Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2010. On June 8, 2010, the Center transmitted by email to NU Domain Limited. a request for registrar verification in connection with the disputed domain name(s). On June 11, 2010, .NU Domain Ltd. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 11, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 14, 2010.
The Center appointed George R. F. Souter as the sole panelist in this matter on July 29, 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.
In its reply of June 11, 2010 to the Center, NU Domain Limited confirmed that the specific language of the registration agreement was English. The Policy provides, and it appears to be the consensus view of Panels under the Policy, that the language of proceedings should be the language of the registration agreement unless the Panel in its discretion determines otherwise, in view of the particular circumstances of the case, and having regard to the need for both fairness and expedition. The Panel in the present case agrees with this consensus view, and decides that the language of these proceedings shall be English. However, the Complainant has drawn the Panel’s attention to the fact that the Respondent is Swedish, which justifies its use of Swedish as the language of the Complaint. The Panel accepts this justification, and accepts Swedish as the language of the Complaint. This does not disadvantage the Respondent, which is a Swedish company. However, the Panel will issue its decision in the language of the registration agreement, which is English. 4. Factual Background
The Complainant’s Danish subsidiary company, Elgiganten A/S, is the proprietor of European Community Trade Mark Registration No. 005908678, dated May 30, 2010, of the trade mark ELGIGANTEN, in Classes 7, 8, 9, 11, 21, 35, 36 and 37.
The Complainant has shown the Panel a copy of a licence agreement, between Elgiganten A/S and itself, which gives it the unlimited right to use the trade mark for any business purpose, and also authorizes it to be the owner of any domain name in this relation.
The disputed domain name, was registered on February 1, 2010. 5. Parties’ Contentions A. Complainant
The Complainant claims to be the biggest supplier of home electronic and electrical appliances and related services, with the most effective distribution channels, in the Nordic countries, with 251 stores and shops across Norway, Sweden, Denmark, Finland, Iceland and the Faroe Islands. In 2007/2008 its turnover was 17.6 milliards of Norwegian crowns (NOK).
In Sweden, its subsidiary, Elgiganten AB was established in 1994, and now has 61 stores and shops, and circa 1,600 employees across the country. Weekly, some 300,000 shoppers visit its stores, from Kiruna in the north to Ystad in the south, and there are some 1,300,000 visitors per month to its website at .
The Complainant alleges that that the disputed domain name is identical or confusingly similar to the trade mark ELGIGANTEN.
The Complainant further alleges that neither it nor any company within its group has licensed or given permission to the Respondent to use the trade mark ELGIGANTEN, or any similar trademark, and that, so far as it is aware, the Respondent has not registered or adopted any trade mark identical or similar to the disputed domain name; nor, prior to notice of the Complainant’s objections, made any preparation to use the domain name; neither is there any evidence that the Respondent has been or is commonly known by the domain name; consequently, the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant contends that, in the light of the above, and due to the well-known nature of its ELGIGANTEN mark, the disputed domain name has been registered in bad faith.
The Complainant also contends that the disputed domain name has never been used, only parked, and draws the Panel’s attention to the decision in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, where it was held that, in the case of a well-known mark, “passive holding” of an identical or confusingly similar domain name could be regarded as use in bad faith. The Complainant alleges that the fact that the Respondent, a full service company in the IT sector, operates largely within the same product and service sector as itself, and that the risk of damage to its own reputation is likely if the Respondent started using the disputed domain name within its own area of activity, should be enough to justify a finding of use in bad faith.
Additionally, the Complainant has shown the Panel details of its correspondence with the Respondent, in which, having been asked by the Complainant what it would consider a fair price to be for transferring the disputed domain name to the Complainant, the Respondent gave the figure of 500,000 Swedish crowns (SEK). The Complainant contends that this suggested figure, being far in excess of reimbursement of registration expenses relating to the disputed domain name, by itself justifies a finding of use in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that a complainant must prove to merit a finding that the disputed domain name be transferred to the complainant or be cancelled:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark (“mark”) in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
It has been the consistent approach of panels in proceedings under the Policy to ignore the “identifier” (in this case, .nu) when comparing a disputed domain name with a trade mark in which a Complainant has rights. The Panel follows this approach and, accordingly finds that the disputed domain name and the trade mark ELGIGANTEN are confusingly similar. Accordingly, he finds that the Complainant has satisfied the requirements of Paragraph 4(a)(i). B. Rights or Legitimate Interests
The Respondent did not take advantage of the opportunity presented in these proceedings to advance any justification of a claim to rights or legitimate interests in the disputed domain name in these proceedings, and the Panel draws the appropriate conclusion. There appear to be no circumstances attached to the Respondent’s name or address which might lead to a finding of legitimate interest. Taking into account the Panel’s satisfaction that the Complainant’s presented a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent has not rebutted this, the Panel decides that the Complainant has satisfied the requirements of Paragraph 4(a)(ii). C. Registered and Used in Bad Faith
In Nokia Corporation v. N a.k.a IBCC,WIPO Case No. D2000-0102 the Panel concluded: “The trademark NOKIA is currently enjoying such fame internationally that it cannot reasonably be argued that Respondent … could have been unaware of the trademark rights vested therein when registering the Domain Name”, and decided that there had been registration in bad faith in that case.
The Panel in the present case agrees with the Panel in that case, and, applying the same test to the present case, finds that the Complainant has presented a sufficiently compelling case to justify a decision that the domain name in dispute was registered in bad faith.
In connection with use in bad faith, the Panel unreservedly accepts the reasoning of the Panel in Telstra Corporation Limited v. Nuclear Marshmallows, referred to above, and in subsequent cases in which “passive holding” has been deemed to constitute use in bad faith. The circumstances advanced by the Complainant in this case, are sufficient, in the Panel’s view, for him to decide that the Complainant has also satisfied the requirement that the disputed domain name was used in bad faith. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
George R. F. Souter
Sole Panelist
Dated: August 12, 2010
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