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Sveriges Television AB v. Lars Bergqvist [2004] GENDND 790 (7 June 2004)

1. The Parties

The Complainant is Sveriges Television AB, Stockholm, Sweden, represented by Groth & Co KB, Sweden.

The Respondent is Lars Bergqvist, Bromölla, Sweden.

2. The Domain Names and Registrars

The disputed domain names <bolibompa.tv> and <melodifestivalen.net> are registered with Go Daddy Software Inc. (the “Registrar”).

3. Procedural History

The WIPO Arbitration and Mediation Center (the “Center”) received the Complaint on April 22, 2004, (electronic version) and on April 23, 2004, (hard copy). On April 22, 2004, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain names at issue. On April 22, 2004, the Registrar transmitted by email to the Center its verification response and confirmed that it was in receipt of the Complaint, it was the Registrar for <bolibompa.tv> and <melodifestivalen.net> and the Respondent is listed as the registrant. Further, the Registrar provided contact details for the administrative, billing, and technical contact and confirmed that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applied to the disputed domain names. The Center verified that the Complaint satisfied the formal requirements of 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”). The Complainant made the required payment to the Center.

In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the administrative proceedings commenced on April 26, 2004. In accordance with paragraph 5(a) of the Rules, the due date for Response was May 16, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 17, 2004.

The Center appointed Markus S. Hellgren as the sole panelist in this matter on May 25, 2004. 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 paragraph 7 of the Rules.

The language of the proceeding is English.

4. Factual Background

The Complainant has broadcasted TV programs in Sweden since 1956. The Complainant operates six TV channels distributed via the analogue terrestrial net as well as via a digital terrestrial net, via digital satellite and digital cable. The Complainant’s TV program MELODIFESTIVALEN is one of the most popular TV programs in Sweden. Further, the Complainant distributes a daily TV show for children called BOLIBOMPA.

The Complainant owns the following trademark registrations:

Swedish Trademark Registration No. 353020 MELODIFESTIVALEN, registration date March 1, 2002, in International Classes 9, 16, 25, 28, 30, 32, 35, 38, 41 and 42.

Swedish Trademark Registration No. 255042 BOLIBOMPA, registration date February 4, 1994, in International Classes 16, 25, 28, 30, 38 and 41.

The Respondent registered the domain name <melodifestivalen.net> on April 2, 2004, and the domain name <bolibompa.tv> on April 8, 2004, according to the Registrar’s WHOIS database.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly similar

The Complainant contends that the domain name <melodifestivalen.net> is identical to the trademark and service mark MELODIFESTIVALEN in which the Complainant has rights. Further, the Complainant contends that the domain name <bolibompa.tv> is identical to the trademark and service mark BOLIBOMPA in which the Complainant has rights.

Rights or Legitimate Interests

The Complainant states that the Respondent has created a website in connection with the domain name <melodifestivalen.net>. The Respondent’s website contains not only hyperlinks to the Complainant’s own website (“www.svt.se”) but it also incorporates graphic material copied from the Complainant’s website. In addition to this, the website contains explicit pornographic material as well as text material of adult nature.

Further, the Complainant states that the Respondent has not yet created a website in connection with the domain name <bolibompa.tv>.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain names <melodifestivalen.net> or <bolibompa.tv>. To the best of the Complainants’ knowledge, the Respondent is not an owner of any trademark, service mark or equivocal with a name similar to that of the domain names in question. Neither is the Respondent using the domain names in connection with a bona fide offering of goods or services without intent for commercial gain or to tarnish the trademark or service mark at issue.

Registration and Use in Bad Faith

The Respondent contends that the Respondent has posted the following text on the website connected with the domain name <melodifestivalen.net>:

“SVT claims that our fine website is competing with theirs and they are therefore trying to shut us down. Due to their unprofessional manners we therefore have to redirect the domain name to another server. If the site is down, do not despair… as it will soon be back hosted on another server! It would have been easiest if they came to us with a decent business proposal!”

The Respondent has copied parts of the content from the Complainant’s website and modified it by adding numerous hyperlinks to various websites containing adult and explicit pornographic material.

On the website connected with the disputed domain name, the Respondent has posted numerous hyperlinks to pornographic material and adult sexual oriented websites. The hyperlinks are used to mislead and divert Internet users to banner advertising for pornography and drugs in order to generate revenue for the Respondent.

A printout containing the source code of the website connected with the disputed domain name <melodifestivalen.net> also constitutes evidence that the Respondent is using the disputed domain name in order to display links to websites with pornographic material as well as various pop-up ads.

On April 7, 2004, the Complainant wrote a letter to the Respondent requesting an immediate stop to the usage of the trademark MELODIFESTIVALEN and the logotype. The Respondent called the Complainant and said that there is nothing legal hindering him from using the domain name <melodifestivalen.net> and that the disputed domain names generate a large amount of Internet traffic to his websites due to the large public interest for the Eurovision Song Contest.

On April 16, 2004, the Respondent contacted the Complainant via e-mail and wrote:

“Proposal: Hello. Thomas ..I have a proposal for you at SVT. I am willing to consider selling www.melodifestivalen.net if you are interested.. It will take time for you to have WIPO decide our dispute and it will cost you money. You will not succeed in shutting us down because there are thousands of places where we can host it which means more work and money for you. Contact me if you are interested in buying or if you have any ideas… Regards, Lars Bergquist.”

On April 16, 2004, the Respondent made a statement in an article found on the controversial website “Flashback.” The Respondent stated that he is surprised that the Complainant has not offered him money for the domain name and that he will keep changing webservers for the domain name if shut down until he receives monetary compensation.

The Complainant contends that the Respondent has threatened to activate the domain name <bolibompa.tv> but has not yet directed the domain name towards a website. The Complainant is of the opinion that due to the fact that the Respondent has posted a direct threat to launch a similar website in connection with the domain name <bolibompa.tv>, the Respondent is in fact using the domain name. According to case law, using a domain name in bad faith is not limited solely to positive actions, as inaction is regarded as being within the concept. This according to Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 at paragraph 7.8-7.9: (“The significance of the distinction is that the concept of a domain name “being used in bad faith” is not limited to positive action; inaction is within the concept.”). Another case supporting this is Strålfors AB v. P D S AB, WIPO Case No. D2000-0112 at paragraph 5: (“Inaction is clearly within the concept of “being used in bad faith” and it is possible for inactivity by the Respondent to amount to the domain name being used in bad faith.”).

Having all the above in mind, the Complainant subscribes to the opinion that the domain names <melodifestivalen.net> and <bolibompa.tv> were registered primarily for the purpose of selling, renting, or otherwise transferring the domain name to the owner of the trademarks or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name. Furthermore, by using the domain names as described above, the Respondent intentionally attempts to attract for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. In addition to this, the registrations were made in order to prevent the Complainant from reflecting the trademarks in corresponding domain names and to tarnish the trademarks at issue. By registering at least two domain names being identical to trademarks belonging to the Complainant, it is fair to say that the Respondent has engaged in a pattern of such conduct.

Therefore, the Complainant contends that the two disputed domain names <melodifestivalen.net> and <bolibompa.tv> were registered in bad faith and are used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and commencement of this administrative proceeding, and that the Respondent’s failure to submit a Response is not due to any omission by the Center.

In view of the Respondent’s failure to submit a Response, the Panel shall decide the dispute based upon the Complaint according to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate according to paragraph 14(b) of the Rules.

According to paragraph 4(a) of the Policy, the Complainant must assert and prove each of the following:

i) that Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

ii) that 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

The Complainant has shown that it is the owner of Swedish Trademark Registrations for the marks MELODIFESTIVALEN and BOLIBOMPA. The domain names at issue consist of the mark MELODIFESTIVALEN and the gTLD “.net” and of the mark BOLIBOMPA and the ccTLD “.tv.” The gTLD “.net” and ccTLD “.tv” are of no significance when determining whether or not a domain name is identical or confusingly similar to a trademark or service mark.

Accordingly, the Panel finds that the domain names at issue are identical to the trademarks and service marks MELODIFESTIVALEN and BOLIBOMPA in which the Complainant has rights.

B. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy, a Respondent may demonstrate its rights to or legitimate interests in the domain name by proving any of the following circumstances:

(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable 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; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

<melodifestivalen.net>

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name <melodifestivalen.net>.

The Complainant has shown that the Respondent’s website contains hyperlinks to the Complainant’s own website (“www.svt.se”) and that the Respondent is using the disputed domain name in order to display links to websites with pornographic material as well as various pop-up ads to which the Respondent has no identifiable connection. Such use does not amount to a right to or legitimate interest in the domain name at issue and the Complainant has thereby made a prima facie showing that Respondent has no rights to or legitimate interests in the domain name at issue. See e.g. Caledonia Motor Group Limited v. Amizon, WIPO Case No. D2001-0860.

Several WIPO Panels have established that, by virtue of paragraph 4(c) of the Policy, once a Complainant establishes a prima facie case that none of the three circumstances establishing rights or legitimate interests applies, the burden of production on this factor shifts to the Respondent. See e.g. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270, and Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022. The Respondent has not submitted a response to deny the contentions of the Complainant. Accordingly, the Respondent has failed to meet that burden.

The Panel, therefore, finds that the Respondent has no rights to or legitimate interests in the domain name at issue.

<bolibompa.tv>

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name <bolibompa.tv>. The Complainant states that the Respondent has not yet created a website in connection with the domain name <bolibompa.tv>. Further, the Complainant contends that the Respondent is not an owner of any trademark or service mark with a name similar to that of the domain name at issue and that the Respondent is not using the domain name in connection with a bona fide offering of goods or services.

The Complainant has filed evidence showing that the website “www.bolibompa.tv” is parked free at <godaddy.com>. The evidence also shows that the website contains the statement “www.bolibompa.tv coming soon!,” which indicates that the Respondent is planning to create a website in connection with the domain name at issue. The website also contains various advertisements for services provided by GoDaddy.com with which the Respondent has no connection. The Panel deems that the Respondent’s use of the domain name does not amount to a right to or legitimate interest in the domain name at issue. Further, the Respondent has not submitted a response to deny the contentions of the Complainant.

Accordingly, the Panel finds that the Respondent has no rights to or legitimate interests in the domain name at issue.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets forth four nonexclusive criterions for Complainant to show bad faith registration and use of a domain name:

(i) circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

In addition to these criterions, other factors alone or in combination can support a finding of bad faith.

<melodifestivalen.net>

The Complainant has shown that the Respondent’s website contains statements concerning the Complainant, hyperlinks to the Complainant’s website “www.svt.se” and graphics from the Complainant’s website.

The website’s content and the facts that the Respondent also has registered another of the Complainant’s trademark and service mark, i.e. BOLIBOMPA, as a domain name, and that the mark MELODIFESTIVALEN is widely known in Sweden makes it obvious that the Respondent had knowledge of the Complainant’s trademark and service mark MELODIFESTIVALEN when registering the domain name at issue. The knowledge of the Complainant’s mark at the time of registration of the domain name suggests bad faith. See e.g. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 and Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441.

The Complainant has also shown that the Respondent’s website contains click-through advertising for pornography. This indicates that the Respondent is using the domain name in order to mislead and divert Internet users in order to generate revenue from click-through advertising. The Panel in National Association of Stock Car Auto Racing, Inc. v. RMG Inc - BUY or LEASE by E-MAIL, WIPO Case No. D2001-1387 clearly pointed out that “it is now well known that pornographers rely on misleading domain names to attract users by confusion, in order to generate revenue from click-through advertising, mouse-trapping, and other pernicious online marketing techniques.” This Panel considers that the Respondent is using the domain name intentionally to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s trademark and service mark. This is evidence that the domain name at issue was registered and is being used in bad faith according to paragraph 4(b)(iv) of the Policy. It is also evident that the use of the domain name will tarnish Complainant’s trademark and service mark.

The Respondent has not submitted a response to deny the contentions of the Complainant or to explain his action. Accordingly, the Panel is entitled to draw inferences from this lack of response, such as it is likely that the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name. The registration of several domain names corresponding to the Complainant’s marks is sufficient to constitute a pattern of such conduct. The Panel, therefore, finds that bad faith has been demonstrated under paragraph 4(b)(ii) of the Policy. See e.g. General Electric Company v. Normina Anstalt a/k/a Igor Fyodorov, WIPO Case No. D2000-0452.

Further, the Complainant has shown that the Respondent sent an e-mail to the Complainant and explained that he was willing to sell the domain name to the Complainant and that the Respondent’s website contains the following statement: “It would have been easiest if they came to us with a decent business proposal!”. As stated above, the Panel is entitled to draw inferences from the Respondent’s lack of response. The Panel, therefore, considers that it is likely that the Respondent registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name. This is further evidence that the domain name at issue was registered and is being used in bad faith according to paragraph 4(b)(i) of the Policy.

Accordingly, the Panel finds that the domain name <melodifestivalen.net> was registered and is being used in bad faith.

<bolibompa.tv>

The fact that the Respondent has registered two of the Complainant’s trademarks and service marks as domain names clearly indicates that the Respondent had knowledge of the Complainant’s marks when registering the domain names at issue. It is obvious that the Respondent did not unintentionally select the invented word and mark BOLIBOMPA when selecting the domain name at issue. The Panel, therefore, considers that the Respondent had knowledge of the Complainant’s trademark and service mark BOLIBOMPA when registering the domain name at issue, which suggests bad faith. See e.g. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 and Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441.

As stated above, the Respondent has not submitted a response to deny the contentions of the Complainant or to explain his action. Accordingly, the Panel is entitled to draw inferences from this lack of response, such as it is likely that the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name. The registration of several domain names corresponding to the Complainant’s marks is sufficient to constitute a pattern of such conduct. The Panel, therefore, finds that bad faith has been demonstrated under paragraph 4(b)(ii) of the Policy. See e.g. General Electric Company v. Normina Anstalt a/k/a Igor Fyodorov, WIPO Case No. D2000-0452.

It appears from the information available to this Panel that the Respondent engages in passive holding of the domain name <bolibompa.tv>. The fact that a Respondent engage in passive holding of a domain name can in certain circumstances be evidence of use in bad faith. In Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the Panel concluded that “The question that then arises is what circumstances of inaction (passive holding) other than those identified in paragraphs 4(b)(i), (ii) and (iii) can constitute a domain name being used in bad faith? This question cannot be answered in the abstract; the question can only be answered in respect of the particular facts of a specific case. That is to say, in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behaviour. A remedy can be obtained under the Uniform Policy only if those circumstances show that the Respondent’s passive holding amounts to acting in bad faith.”

The circumstances in this case include failing to respond to the Complaint, registering two domain names corresponding to the Complainant’s marks and offering to sell the domain name <melodifestivalen.net>, which corresponds to the Complainant’s mark MELODIFESTIVALEN, to the Complainant. Further, the mark BOLIBOMPA is a widely known mark within the geographical region of both the Complainant and Respondent and a mark that is invented.

In light of the above, the Panel finds that the domain name <bolibompa.tv> was registered and is being 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 names, <melodifestivalen.net> and <bolibompa.tv>, be transferred to the Complainant.

Markus S. Hellgren
Sole Panelist

Date: June 7, 2004