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FöreningsSparbanken AB v. Stefan Ekbergh, Fredrick Ekstrand [2005] GENDND 47 (21 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FöreningsSparbanken AB v. Stefan Ekbergh, Fredrick Ekstrand

Case No. D2004-1006

1. The Parties

The Complainant is FöreningsSparbanken AB, Stockholm, Sweden, represented by Verisign Sweden AB, Sweden.

The Respondent is Stefan Ekbergh, Fredrick Ekstrand, Camps Bay, Cape Town, South Africa; New York, United States of America.

2. The Domain Name and Registrar

The disputed domain name <föreningssparbanken.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2004. On November 30, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On December 2, 2004, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 December 6, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was December 26, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2004.

The Center appointed Jens Schovsbo as the sole panelist in this matter on January 10, 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.

4. Factual Background

The Complainant, FöreningsSparbanken AB (publ), is among Sweden’s largest banks with more than 6 million private and 340.000 corporate customers. In 2004, FöreningsSparbanken AB (publ) employed more than 15,289 people, and owned independent/jointly 785 savings banks in Sweden. In the same year it had 2,957,984 internet banking customers in Sweden.

The Complainant has the following registered trademarks:

Swedish trademark registration No. 327964 “FÖRENINGSSPARBANKEN”, “word mark”, applied for on February 19, 1997, and registered on July 31, 1998, for the goods and services in International classes:

9 (Electrical and scientific apparatus);

16 (Paper goods and printed matter);

35 (Advertising and business services);

36 (Insurance and financial services);

41 (Education and entertainment services);

42 (Miscellaneous service marks);

Swedish trademark registration No. 327964 “FÖRENINGSSPARBANKEN”, “device mark”, applied for on September 1, 1997, and registered on July 31, 1998, for the goods and services in International classes:

9 (Electrical and scientific apparatus);

16 (Paper goods and printed matter);

35 (Advertising and business services);

36 (Insurance and financial services);

41 (Education and entertainment services);

42 (Miscellaneous service marks);

In October 2004, the Complainant came across the use of the internationalized domain name registration <föreningssparbanken.com>. The domain name was linked to a web site in Swedish offering banking services and containing advertisements and links to various banks.

In response to a cease and desist letter from the Complainant the Respondent informed that the site would be taken down and only used in the future for goods and services not colliding with the Complainant’s trademark rights. The Respondent furthermore invited the Complainant to take over the domain name by covering the Respondent’s costs in acquiring the domain name. The Complainant was later informed that the Respondent had paid SEK 15.000 for the domain name from an unknown third party. The Respondent later raised the price to no less than SEK 30.000, which according to the Respondent was the actual and originally price the Respondent had paid for the Domain Name.

The domain name was transferred to the Respondent Mr. Stefan Ekberg on November 29, 2004, from the original domain name owner Mr. Frederick Ekstrand. Mr. Ekberg and Mr. Ekstrand are involved in the same business.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Respondent’s registration and use of the domain name <föreningssparbanken.com> is in violation of Article 4, of the Policy. The Complainant thus contends that:

(i) the domain name is identical or confusingly similar to the trademarks registered by the Complainant, and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name and

(iii) the domain name has been registered and is being used in bad faith.

Regarding the first point the Complainant claims that the registered internationalized domain name <föreningssparbanken.com> is identical to the Complainant’s Swedish trademark registration No. 327964 “FÖRENINGSSPARBANKEN”, “word mark”. The Complainant furthermore claims that the domain name is confusingly similar to the Complainant’s Swedish trademark registration No. 327964 “FÖRENINGSSPARBANKEN”,”device mark”.

Regarding the second point the Complainant maintains that the Respondent has no connection or affiliation with the Complainant and that the Complainant has not consented to the registration or use of the domain name. The Complainant furthermore contends that the Respondents has neither registered trademark rights nor acquired any common law trademark rights to the designation FÖRENINGSSPARBANKEN and the Respondents has not been commonly known by the domain name or a similar name such as FÖRENINGSSPARBANKEN.

Regarding the third and last point the Complainant claims that the Respondent has acquired the domain name with the sole intention to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s marks as to the affiliation of the Respondent’s web site, offering and advertising for competing goods and services to the Complainant’s business. According to the Complainant it is furthermore evidence of bad faith that the Respondent offered to sell the domain name to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the mere registration and maintenance of the domain name.

B. Respondent

The Respondent has not replied to the complaint.

6. Discussion and Findings

It follows from Paragraph 5(e) of the Rules that if a Respondent does not submit a response, then in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint. The Panel does find that the present case involves “exceptional circumstances”. The case will thus be decided based upon the complaint.

A. Identical or Confusingly Similar

The Complainant shall prove that the domain name <föreningssparbanken.com> is identical or confusingly similar to a trademark in which the Complainant has rights.

In the present case the Complainant has proved both to be the owner of the trademark FÖRENINGSSPARBANKEN and to carry out extensive commercial activities under this trademark, see point 4 above.

In comparing the domain name and the trade mark one should disregard the “.com-” part of the domain name. The domain name is thus identical to the Complainant’s word mark.

On this basis the Panel concludes that the first condition under the Policy, Paragraph 4(a)(i) is satisfied.

B. Rights or Legitimate Interests

The Complainant has made out a prima facie case that Respondent lacks legitimate interest in the domain name. The Panel has thus found nothing in the case to indicate any rights or legitimate interests of the Respondent in respect of the domain name <föreningssparbanken.com>, see above point 5.

The Panel thus concludes, that the Complainant has proved the second requirement of Paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According Paragraph 4(b) of the Policy the following circumstances shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

…

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”

The Respondent used the domain name <föreningssparbanken.com> for a web site directed at Swedish customers offering banking services and banking information of a commercial nature in direct competition with the Complainant. The Respondent has undoubtedly been aware of the trademarks of the Complainant. The use of the domain name <föreningssparbanken.com> was in no way necessary or natural for the activities of the Respondent. In the view of the Panel the only reason for registering and using the trademark of the Complainant as the domain name for the web site was to attract customers who were looking for the web site of the Complainant. The Panel finds that such conduct whereby the Respondent intentionally attempted to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with the Complainant’s mark amounts to bad faith in the sense described in point (iv) of the Policy.

The Panel furthermore finds that the circumstances of the case indicate that the Respondent apart from the direct use of the domain name has registered the domain name also with a view of selling it to the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name. In the view of the Panel this also amounts to bad faith in the sense required by the Policy.

The Panel thus finds that the Claimant has proved the third and last requirement of 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 <föreningssparbanken.com> be transferred to the Complainant.

Jens Schovsbo
Sole Panelist

Dated: January 21, 2005