ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant is Telia InfoMedia Reklam AB, a Swedish corporation. The Respondent is Eurocall Sverige AB, a Swedish corporation. The contested domain name is gulasidorna.net, registered with Network Solutions.
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on June 13, 2000. The hardcopy of the Complaint Form and the annexes were received on June 26, 2000. The choice of jurisdiction was received on June 26, 2000. The Complainant requested a change of remedy from cancellation to transfer on July 7, 2000. Confirmation of payment was received on July 10, 2000.
Upon receiving all the required information, eResolution's clerk proceeded to:
- Confirm the identity of the Registrar for the contested Domain Name;
- Verify the Registrar's Whois Database and confirm all the required contact information for Respondent;
- Verify if the contested Domain Name resolved to an active Web page;
- Verify if the Complaint was administratively compliant.
The inquiry leads the Clerk of eResolution to the following conclusions: the Registrar is Network Solutions, the Whois database contains all the required contact information, the contested Domain Name resolves to an active Web page and the Complaint is administratively compliant.
An e-mail was sent to the Registrar by eResolution Clerk's Office to obtain a copy of the Registration Agreement on June 13, 2000. The requested information was received June 19, 2000.
The Clerk's Office proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy.
The Clerk's Office fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on July 10, 2000. That date is the commencement date of the administrative proceeding.
On July 10, 2000, the Clerk's office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding.
All the emails, except for the one sent to the technical contact were successful. The faxes failed.
The complaint, official notification and all the annexes were sent to the respondent by registered mail by Canada Post because the only addresses available were P.O. Boxes.
The Respondent did not submit a response via the eResolution Internet website nor a signed version.
On August 1, 2000, the Clerk's Office contacted a panelist, and requested his services in this case. The panelist was unable to act in this case.
On August 4, 2000, the Clerk's Office contacted Mr. Richard Hill, and requested that he act as panelist in this case.
On August 7, 2000, Mr. Richard Hill accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On August 7, 2000, the Clerk's Office forwarded a user name and a password to Mr. Richard Hill, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On August 7, 2000, the parties were notified that Mr. Richard Hill had been appointed and that a decision was to be, save exceptional circumstances, handed down on August 21, 2000.
3. Factual Background
The trademark "Gula Sidorna" was registered in Sweden in 1985 by Telia, a large and well-known telecommunications company in Sweden. Telia uses this mark to publish and market directory services, primarily in Sweden, but also in other Nordic countries. Some of these services are offered via a web site at gulasidrona.se.
The respondent registered the domain name gulasidorna.net on 22 January 1998.
The respondent operates a web site at the contested domain name which offers directory services that appear similar to those offered by Telia at its site gulasidorna.se.
4. Parties' Contentions
The complaint contends that the domain name gulasidorna.net is confusingly similar to its trademark "Gula Sidorna", and that the respondent has no legitimate interest in the contested domain name, and that the respondent registered the domain name in bad faith.
The respondent has defaulted and hence makes no contentions.
5. Discussion and Findings
The panel will first address the procedural issues related to the fact that the respondent has defaulted and then analyse the evidence to determine whether the complainant has proven, in accordance with article 4.a of the ICANN Policy that:
I. The procedural issue related to the default of the respondent
Since the respondent has defaulted, this panel must first determine what the procedural implications are of a default. Should the complainant automatically prevail, or should the panel anyway examine the evidence and base its decision on its determination of the relevant facts and laws?
While the ICANN Policy, Rules and the Supplemental Rules that govern these proceedings do not explicitly address this question, they do give some guidance. Notably, article 4.a of the ICANN Policy states:
"In the administrative proceeding, the complainant must prove that each of these three elements are present." [emphasis added]
This panel therefore holds that it cannot grant the claimant's request automatically, but that it must instead examine the evidence presented to determine whether or not the complainant has proven its case as required by the ICANN Policy.
II. Analysis of the evidence in this case
Similarity between the trademark and the domain name
The complainant has presented evidence that it owns the rights to the trademark "Gula Sidorna" and it is obvious that the contested domain name gulasidorna.net is identical or confusingly similar to the trademark.
Lack of rights or legitimate interests in the contested domain name
The complainant has presented evidence showing that the contested domain name is being used for a web site offering services which are very similar to the services offered by the complainant under its trademark and at its web site gulasidorna.net. Given that the respondent registered its domain name and created its web site several years after the complainant offered its services, this panel holds that there is clear evidence that the respondent has no legitimate rights in the contested domain name.
Indeed, trademark law prevents use of a distinctive name or mark for services similar to those for which the mark was registered, unless of course the trademark owner licenses such use, which is not the case here.
And an illegal use of a name or mark cannot be considered a "legitimate interest".
Bad faith registration and use of the contested domain name
The complainant has presented evidence showing that there is some similarity, and a clear risk of confusion, between its web site gulasidorna.se and the respondent's site gulasidorna.net.
Article 4.b(iv) of the ICANN Policy states that the following shall be evidence of bad faith use and registration:
"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"
This panel holds that the evidence shows that the respondent has indeed created its web site in such a way that there is a likelihood of confusion with the complainant's mark.
This panel concludes that the respondent has proven that the contested domain name is confusingly similar to its trademark "Gula Sidorna", that the respondent has no rights or legitimate interests in the contested domain name, and that the respondent has registered and used the contested domain name in bad faith.
The panel therefore orders the contested domain name gulasidorna.net to be transferred to the complainant Telia InfoMedia Reklam AB.
Geneva, Switzerland, 9 August 2000
(s) Richard Hill