WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Skandia Insurance Company Ltd v. Nicoleae Ganea
Case No. DRO2008-0009
1. The Parties
The Complainant is Skandia Insurance Company Ltd, Stockholm, Sweden, represented internally.
The Respondent is Nicoleae Ganea, Husievagen, Malmoe, Sweden.
2. The Domain Name and Registrar
The disputed domain name is registered with National Institute of R&D on Informatics.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2008. On June 27, 2008, the Center transmitted by email to National Institute of R&D on Informatics a request for registrar verification in connection with the domain name at issue. On June 30, 2008, National Institute of R&D on Informatics 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”), 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 July 4, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 24, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 3, 2008.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on August 7, 2008. 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 of the following trademark registrations in relation to insurance and insurance related services:
Community trademark SKANDIA, class 36 with registration number 001075076 and registration date February 17, 2000.
Community trademark ROYAL SKANDIA, class 36, with registration number 001335439 and registration date November 16, 2000.
Community trademark SKANDIA (device), class 36, with registration number 000215434 and registration date, October 2, 1998.
Swedish trademark SKANDIA, class 36 with registration number 360075 and registration date March 14, 2003.
Bulgarian trademark SKANDIA (device), class 36, with registration number 6296 and registration date March 5, 1997.
Hungarian trademark SKANDIA (device), class 36, with registration number M9802923 and registration date July 21, 1998.
The disputed domain name was registered by the Respondent on January 1, 1996.
5. Parties' Contentions
A. Complainant
The Complainant is the owner of the registered trademark SKANDIA and maintains that the disputed domain name is identical to the trademark. The addition of the country code top level domain “.ro” to the trademark has no influence on the similarity consideration. The Complainant argues that it is highly unlikely that the trademark SKANDIA has a meaning in any language other than as a trademark identifying the Complainant as a source of origin. The Respondent is not a representative or licensee of the Complainant nor has the Respondent any kind of authorization to use the Complainant's registered trademarks. The Complainant notified the Respondent of its rights but did not receive any reaction from the Respondent.
The website to which the disputed domain name resolves does not display anything else than a network error message. There is no evidence of the Respondent's use of, or demonstrable preparations to use the disputed domain name, or a name corresponding to the disputed domain name, in connection with a bona fide offering of goods or services.
The Respondent is not and has not been making any legitimate non-commercial or fair use of the disputed domain name. Furthermore, the Respondent is not commonly known by the disputed domain name.
The Complainant's trademark SKANDIA is well-known and the registration of the disputed domain name was made with the knowledge of it with intent to take advantage of the trademark. The Respondent registered and is using the disputed domain name in bad faith.
The Respondent has been holding the disputed domain name passively since 1996. Such passive holding for more than 12 years implies bad faith registration and use.
According to previous UDRP cases, the Respondent has a reputation of registering trademarks as domain names in Romania. In at least one of the previous cases, the Respondent has stated his willingness to consider a payment exceeding the out-of-pocket costs for transferring a domain name to the owner of a trademark. Such circumstances in previous cases indicate that the Respondent has registered the disputed domain name in this case primarily for the purpose of selling, renting or otherwise transferring the domain name to the owner of a trademark, for valuable consideration in excess of the Respondent's out-of-pocket costs related to the domain name.
The Respondent's registration of the disputed domain name prevents the Complainant from registering and using the trademark in a corresponding domain name in Romania. Furthermore, the Respondent's registration has an unfavorable impact over the Complainant's business and name.
B. Respondent
The Respondent did not reply to the Complainant's contentions. However, it has been noted that the Respondent sent an e-mail to the Center on August 28, 2008, requesting more time to respond. Even though advised by the Center on further submissions, the Panel notes that the Respondent has not submitted any further communications or documents.
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
According to the submitted material, the Complainant is the owner of the registered trademark SKANDIA.
The disputed domain name incorporates the trademark SKANDIA in its entirety.
Having the above in mind, the Panel concludes that the disputed domain name is identical to the Complainant's trademark SKANDIA 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 he 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 he is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) that he intends to make a legitimate, non-commercial or fair use of the domain name 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 trademark SKANDIA in connection with the disputed domain name which is identical to the trademark.
From the submitted evidence in this case, it has been established that the disputed domain name is not actively resolving to any kind of website.
Although provided the opportunity, the Respondent has not submitted any evidence indicating that the Respondent is the owner of any trademark rights or that the Respondent is commonly known by the disputed domain name.
By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, 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 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:
(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.
The Complainant has submitted copies of various trademark registrations and referred to material on its websites, which the Panel has reviewed in accordance with the consensus view of Paragraph 4.5 in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions. Albeit the material submitted together with the material referred to on the Complainant's websites indicate that the Complainant's right in the mark SKANDIA was established when the Respondent registered the disputed domain name on January 1, 1996, the Panel would have appreciated a more substantial and detailed submission regarding the Complainant's trademark rights.
The Complainant maintains that the Respondent registered the disputed domain name with the Complainant's registered trademark SKANDIA in mind. The Complainant asserts that there are circumstances indicating that the domain name has been registered primarily for the purpose of selling or otherwise transferring the disputed domain name to the owner of the trademark or service mark (the Complainant) for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the domain name. Furthermore, it has been alleged by the Complainant that the Respondent's registration of the disputed domain name is preventing the Complainant from using its trademark SKANDIA in a corresponding domain name within the Romanian ccTLD.
The Complainant has provided evidence showing that the Respondent has been involved in previous UDRP proceedings such as Billa Aktiengesellschaft v. Ganea Nicolae,WIPO Case No. DRO2002-0001 regarding the domain name and Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L.,WIPO Case No. DRO2006-0001 regarding the domain name . The previous cases, together with the case before the Panel, suggest that the Respondent has been involved in a pattern of registering domain names in order to prevent trademark owners from reflecting their marks in corresponding domain names.
As set out in paragraph 4(b)(ii) of the Policy, evidence of bad faith registration and use include 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.
Having the above in mind, the Panel finds that the Complainant also proved the requirements under paragraph 4(a)(iii) of the Policy.
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
Johan Sjöbeck
Sole Panelist
Dated: September 1, 2008
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