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AB Svenska Spel v. Jesper Boulliant [2005] GENDND 1486 (1 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AB Svenska Spel v. Jesper Boulliant

Case No. D2005-0571

1. The Parties

The Complainant is AB Svenska Spel, Visby, Sweden, represented by Albihns Göteborg AB, Sweden.

The Respondent is Jesper Boulliant, Huddinge, Sweden.

2. The Domain Name and Registrar

The disputed domain name <svenskaspelonline.com> is registered with BulkRegister.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2005. On June 1, 2005, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. Between June 17 and 23, 2005, there was correspondence between the Center, Registrar and Technical Contact concerning change in Registrant WHOIS data. The Administrative, Technical and Billing Contacts were modified to reflect registrant data on June 22, 2005. 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 June 6, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 26, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 29, 2005.

The Center appointed Jette Robsahm as the sole panelist in this matter on July 15, 2005. 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.

The language of the proceeding is English.

4. Factual Background

The following non-contested facts are derived from the Complaint with supporting evidence submitted:

The Complainant, AB Svenska Spel, was established in January 1997, when the Swedish Parliament decided to merge the two state lotteries, “Tipstjänst” and “Penninglotteriet”, and is wholly owned by the Swedish State. It is the largest gaming company in Sweden with a market share of 54% and an annual turnover for 2004 of SEK 20,2 billion.

The Complainant has used its trademark and service mark SVENSKA SPEL since January 1997. The Complainant’s activities include, but are not limited to, bookmaking on sports competitions, bookmaking on dog racing, bookmaking on number draws, traditional lotteries, organizing games on video lottery terminals (VLTs) and organizing casino games. The Complainant’s products are found at approximately 6,200 agents and at approximately 2,000 restaurants. Further, the products featured in the Complainant’s portfolio today can be found at the Complainant’s websites “www.svenskaspel.com” and “www.svenskaspel.se”.

Complainant holds the trademark and service mark SVENSKA SPEL, which has been registered in Sweden since August 23, 2002, Registration No. 357.397, in classes 9, 16 and 41.

Further, the Complainant is the owner of the domain names <svenskaspel.com> and <svenskaspel.se>, respectively registered on August 9, 1998, and January 17, 1997.

The domain name at issue, <svenskaspelonline.com>, was registered on February 28, 2005, thus long after the above-mentioned registrations and the commencement of the use of the mark SVENSKA SPEL.

5. Parties’ Contentions

A. Complainant

The Complainant states, inter alia, as follows:

The Complainant has since 1997 sold its products and services under the trademark and service mark SVENSKA SPEL. That trademark and service mark is registered in Sweden with Registration No. 357.397 SVENSKA SPEL, filed on July 18, 2000, and registered on August 23, 2002, in Classes 9, 16 and 41.

Further, the trademark and service mark SVENSKA SPEL must be considered as an established mark on the Swedish market due to the fact that the Complainant has a market share of 54% in Sweden and has made extensive use of its mark since 1997.

The Complainant has made substantial investments in advertising since 1997. As an example, the Complainant’s gross advertising investments amounted to SEK 290,435,000 in 2001. It can also be noted that the Complainant invested more than 48% of the Swedish gaming markets total gross advertising investments during 2001.

Accordingly, the trademark and service mark SVENSKA SPEL has become established on the market. The high level of recognition of the trademark and service mark SVENSKA SPEL also grants the mark a wider protection through its reputation.

The Complainant has an exclusive right to the trademark and service mark SVENSKA SPEL, both through its trademark registration and unregistered trademark rights according to the Swedish Trademarks Act.

Further, the Complainant is the owner of the domain names <svenskaspel.com> and <svenskaspel.se>.

B. Respondent

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

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to convince the Panel of its rights and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements are satisfied:

A. the domain name in question is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, and

B. the Respondent has no rights or legitimate interests in respect of the domain name, and

C. the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided sufficient evidence of its rights to the trademark and service mark SVENSKA SPEL. It has also proved the ownership of the domain names <svenskaspel.com> and <svenskaspel.se>.

The domain name in question is <svenskaspelonline.com>, which in its entirety comprises the trademark SVENSKA SPEL. The question is whether the word “online” is apt to render the domain name distinguishing enough to avoid confusion.

The word “online” is a generic term, used to describe connection to the Internet or other networks. It has no distinctive character per se. Thus, added as a kind of suffix, it does not change the overall impression of the disputed domain name. It is a descriptive term with a connotation apt to give the impression that the domain name is connected to the Complainant. As SVENSKA SPEL obviously is quite well known in Sweden, and the public therefore also knows of the Complainant’s home pages, there is reason to believe that the domain name <svenskaspelonline.com> will be perceived as owned by or related to the Complainant.

Moreover it has been stated in several decisions by prior UDRP administrative panels that incorporating a trademark in its entirety into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark. See as examples Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358, Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002 and Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199.

On this background, it is the view of this Panel that the domain name <svenskaspelonline.com> is confusingly similar to the trade mark SVENSKA SPEL and the domain names <svenskaspel.com> and <svenskaspel.se>.

B. Rights or Legitimate Interests

The Respondent has not filed a response to the Complainant’s contentions and the Panel must therefore base its view on the facts and allegations brought forward by the Complainant.

The fact that the Respondent has a Swedish address, and probably is a Swedish citizen, makes it highly probable that he knew about the trademark SVENSKA SPEL and the company behind it when he registered the disputed domain name. Moreover, the Respondent’s domain name at the time of the Complaint, pointed to a web site which offered products in direct competition with the Complainant’s products and services. The domain name is now parked with Loopia Webbhotell AB.

It is difficult to see what legitimate interest the Respondent could have in using SVENSKA SPEL in his domain name as he must have known that the trademark belonged to another and that he was competing with a State-owned company known to the Swedish public.

Based on the case file, the Panel has come to the conclusion that the Respondent has no rights or legitimate interests in respect of the domain name <svenskaspelonline.com>.

C. Registered and Used in Bad Faith

The trademark SVENSKA SPEL and the company behind it are, as have been demonstrated, well known in Sweden for the services rendered, and for the activities demonstrated on its web sites. The fact that the Respondent chose a domain name incorporating this well known trademark, indicates (1) that the Respondent knew the trademark in question and (2) that the Respondent wished to divert the Swedish public or the public in general to a web site offering competing products thus taking advantage of the reputation of the mark.

Failing a reply from the Respondent, the Panel can see no other reason to choose the domain name <svenskaspelonline.com> than a wish to attract consumers to a web site for commercial gain.

Paragraphs 4(b)(iv) of the Policy provides that sufficient evidence of bad faith may exist where:

“(iv) By using the domain name, you [Respondent] have intentionally intended to attract for commercial gain, Internet users to your web site or other on-line locations, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The Panel therefore concludes that the Complainant has provided sufficient evidence that Respondent’s registration and use of the domain name <svenskaspelonline.com> is 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 disputed domain name, <svenskaspelonline.com>, be transferred to the Complainant.

Jette Robsahm
Sole Panelist

Date: August 1, 2005