Åhléns AB v. F. Garmer

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Åhléns AB v. F. Garmer

Case No. D2002-0023

1. The Parties

The Complainant is Åhléns AB, Ringvägen 100 A, S-118

90 Stockholm, Sweden, represented by Mr. Johan Mikaelsson of Domain and

Intellectual Property Consultants DIPCON AB, Jonsered, Sweden ("Complainant").

The Respondent is Mr. F. Garmer, Sweden ("Respondent").

2. The Domain Name and Registrar

The dispute concerns the domain name <åhlens.com> (bq--adswq3dfnzzq.com).

The Registrar is VeriSign-Network Solutions, Inc., Herndon, VA, United States

of America.

3. Procedural History

The WIPO Arbitration and Mediation Center ("the Center") received

the Complainant’s Complaint in electronic form on January 11, 2002 and in

hard copy on January 15, 2002.

Complainant made the required payment to the Center.

The Center verified that the Complaint was filed in accordance with the

requirements of the ICANN Uniform Domain Name Dispute Resolution Policy

("the Policy"), the Rules for the Policy ("the Rules"),

and the Supplemental Rules for the Policy ("the Supplemental Rules").

On January 17, 2002, the Center transmitted via e-mail to the Registrar,

a request for registrar verification in connection with this case. On January

21, 2002, the Registrar transmitted via e-mail to the Center, the Registrar’s

Verification Response, confirming that (1) VeriSign-Network Solutions is

the Registrar of the Domain Name

(bq--adswq3dfnzzq.com), (2) the Registrant is Mr. F. Garmer, (3) Mr. F. Garmer

is the Administrative and Billing Contact, and VeriSign, Inc is the Technical

Contact, (4) the Domain Name is in "Active" status, and (5) the

language of the Service Agreement is English.

On January 22, 2002, the Center requested from the Complainant, in accordance

with Paragraph 3 (b) (xiii) of the Rules, a clarification on the jurisdiction

issue, and received an accordingly amended Complaint on January 28, 2002.

On February 1, 2002, the Center transmitted the Notification of Complaint

and Commencement of Administrative Proceeding, together with a copy of the

Complaint, to the Respondent via e-mail, facsimile and via post/courier

to the address identified in the Registrar verification response. The Center

advised that (1) the Respondent’s Response was due by February 21, 2002,

(2) in the event of default, the Center would still appoint a Panel to review

the facts of the dispute and to decide the case, (3) the Panel may draw

such inferences from the Respondent’s default as it considers appropriate,

and (4) the Complainant had elected for the matter to be decided by a single

panelist.

The Respondent filed the Response via e-mail on February 21, 2002. A hardcopy

of the Response was received by the Center on February 26, 2002. Respondent

and the Center communicated via e-mail on February 7, 8, 26 and 28 regarding

formalities, such as Respondents clarification that there were no other

legal proceedings commenced or terminated in connection with or relating

to the disputed Domain Name.

On March 4, 2002, in view of the Complainant’s designation of a single

panelist the Center invited Mr. P-E H Petter Rindforth to serve as a panelist.

Having received Mr. Rindforth’s Statement of Acceptance and Declaration

of Impartiality and Independence, the Center, on March 12, 2002, transmitted

to the parties a Notification of Appointment of Administrative Panel and

Projected Decision Date, in which Mr. Rindforth was formally appointed as

the sole Panelist. The Projected Decision Date was March 26, 2002. The Sole

Panelist finds that the Administrative Panel was properly constituted and

appointed in accordance with the Rules and Supplemental Rules.

Having reviewed the formalities of the case, the Panel noticed that the

verification response from the Registrar did not refer to the Domain Name

as <åhlens.com>. Only the race-string (bq--adswq3dfnzzq) was

verified by the Registrar. Accordingly, the Panel asked the Center on March

18, 2002, to seek verification from the Registrar that the said race-string

corresponds to the disputed Domain Name <åhlens.com>. The Registrar

was unable give the said confirmation, and the Panel therefore, on March 22, 2002

requested the Center to obtain a further clarification from the Complainant.

At the same time, the Panel requested the decision date to be extended to

April 5, 2002.

The Center communicated the request for clarification as well as the new

decision date via e-mail to the Parties.

The Complainant responded via e-mail to the Center on April 4, 2002, (received

by the Panel on April 5, 2002) referring to five different Internet tools

to translate race-strings to readable domain names and, according to the

Complainant, accessible via the websites of Alldomains, MyDomainMart, 1stDomain,

Speednames and VeriSign. Further, the Complainant confirmed that the race-string

in question is translated to <åhlens.com> in all these "translation

tools".

According to paragraph 15(a) of the Rules, the Panel "shall decide

a complaint on the basis of the statements and documents submitted and in

accordance with the Policy, these Rules and any rules and principles of

law that it deems applicable". It is not appropriate for the Panel

to conduct independent investigations, including to seek further information

from websites, investigate trademark registries or to translate documents

submitted by the Parties.

However, according to paragraph 15(b) of the Rules, it is the duty of the

Panel to "ensure that the Parties are treated with equality and that

each party is given a fair opportunity to present its case".

In this particular case, the Registrar had failed to properly identify

the Domain Name registered by them. It is the Panel’s opinion that this

technical shortcoming shall not bar the Parties from having the case examined.

The Panel has therefore conducted translation tests using the abovementioned

tools. All – except for VeriSign’s, which was inaccessible on April 5, 2002,

– confirmed that the race-string (bq--adswq3dfnzzq) corresponds to the Domain

Name <åhlens.com>. As both the Complainant and the Respondent

refer to the registered Domain Name as <åhlens.com>, the Panel

concludes that the identity of the disputed domain name is sufficiently

proved.

Further, the Complainant has not translated Annexes C, E and F (of the

Complaint) from Swedish to English. Due to the fact that both parties, as

well as the Panel, speak Swedish, the Panel will accept these Annexes and

consider the content in its Decision.

The Administrative Panel shall issue its Decision based on the Complaint (with

Amendment), the Response (with Amendment), the Policy, the Rules, and the Supplemental

Rules. The case before the Panel was conducted in the English language.

4. Factual Background

The Complainant is a large company incorporated in Sweden but also represented

in Norway, Singapore, India and Hong Kong. The company’s business can be

traced back to 1899 when the first department store was established by Johan

Petter Åhlén and Erik Holm. In 1985 the Complainant adopted

the name Åhléns and has (as well as all subsidiaries) since

then conducted business under the registered trademark Åhléns.

The Complainant offers products and services within the field of home equipment,

fashion, beauty preparation products and media products and has 70 department

stores in Sweden with approximately 70 million visiting customers yearly.

The annual turnover is 3,6 billion SEK.

The trademark ÅHLÉNS (figurative) was first registered in

Sweden on July 21, 1995, for all goods and services in international

classes 1-42. The Complainant is also the owner of the Swedish registrations

ÅHLÉNS (word mark) and ÅHLÉNS CAFÉ (logo).

Copies of the Certificates of Registration (not translated to English) are

submitted as Annex C of the Complaint. According to the Complainant, the

trademark is used for all goods and services in classes 1-42.

The Complainant also uses its registered trademark in connection with promotion

and marketing of its products and services on the Internet and is the holder

of the following domain names: <ahlens.se>, <ahlens.com>, <ahlens.net>,

<ahlens.org>, <åhlens.net>, <åhlens.org>,

<ahlens.nu>, <åhlens.nu> and <ahlenscity.nu>. Copies

of the whois database information regarding these domain names are provided

as Annex D of the Complaint.

The Respondent registered the Domain Name on February 26, 2001, (Annex A of

the Complaint), however no information is provided on Respondent’s current business

activities except from what is stated below.

5. Parties’ Contentions

A. Complainant

The Complainant states the Domain Name is confusingly similar to Complainant’s

registered trademark Åhléns as the only difference between

the Domain Name and the trademark is the apostrophe over the letter e in

the latter and it is likely that a Swedish user makes the same affiliation

to the Complainant’s business irrespective of the mark is spelled with or

without the apostrophe. Complainant further states that the .com part of

the Domain Name must be disregarded when comparing with the trademark.

In support to these statements, the Complainant has referred to the cases

No. FA 95762 Victoria’s Secret et al. v. Zuccarini, No. D2000-1343 Banca

March, S.A. v. Mr. Thomas Zotzmann, No. D2000-0861 BWR Resources Ltd

v. Waitomo Adventures Ltd and No. D2001-0389 British Broadcasting Corporation

v. Bodyline Beauty Clinic.

The Complainant further states that the Respondent has no rights or legitimate

interests in respect of the Domain Name as he is not a licensee, nor in

any other way authorized by the Complainant to use the registered trademark

ÅHLÉNS or to apply for or use any domain name incorporating

any of the trademarks held by the Complainant (usage of the Complainants

trademark is strictly regulated). The Respondent has not made any good faith

use of the Domain Name and he is not commonly known by the Domain Name.

Finally, the Complainant states that the Domain Name was registered and

is being used in bad faith. On April 11, 2001, the Complainant sent the

Respondent a cease and desist letter, informing on the trademark rights

relating to the word ÅHLÉNS and demanding the transfer of the

Domain Name (Annex E of the Complaint).

According to the Complainant, the letter was followed up with two phone

calls to the Respondent. During these phone calls the Respondent expressed

that he had no intentions of a bona fide use of the domain name and that

he was only willing to transfer the Domain Name to "the right price".

September 6, 2001, the Complainant sent the Respondent an e-mail (followed

up by a letter of September 11, 2001), offering the Respondent

the sum of SEK 1 500 under condition that the Domain Name would be transferred

to the Complainant. The amount was to serve as compensation for the Respondents

out-of-pocket costs directly related to the domain name. On September 18,

2001, the Complainant received a reply from the Respondent, turning down

the previous offer and suggesting the amount of SEK 8 500 for

the transfer (Annex F of the Complaint).

The Complainant contends that the above shows that the Respondent was well

aware of the value of the Complainants trademark at the time he made the

registration and that the registration was made primarily with the purpose

of selling the Domain Name to the Complainant for valuable consideration

in excess of out-of-pocket costs directly related to the Domain Name.

The Complainant further argues that - due to the fact that the Åhléns

trademark is well-known in Sweden - the public would be confused and diverted

to a website using Respondent’s domain name, thinking it was associated

with Complainant. The Complainant concludes the Respondent cannot use the

Domain Name at all without conducting in a misleading and deceptive way.

The disputed Domain Name does not resolve to a web site or other online

presence. The Respondent is however preventing the Complainant from using

its registered trademark and this conduct is without any doubt intended

to disrupt the business of the Complainant and forcing it to buy the Domain

Name from the Respondent to a price clearly exceeding reasonable consideration.

The Complainant requests, in accordance with Paragraph 4 (b) (i) of the

Policy, that the Administrative Panel issue a decision that the Domain Name

be transferred to the Complainant.

B. Respondent

The Respondent states that Åhléns is the genitive form of

the surname Åhlén and that there are over 250 bearers of this

name in Sweden. There are also other similar surnames in Sweden, such as

Åhlen, Ahlen and Ahlén.

The Complainant's trademark is similar but not exactly the same as the

Domain Name, as there are differences between the letters A and Å,

and e and è.

The Respondent concludes that the Domain Name can be used for many purposes,

such as personalized e-mail addresses or a fan-site / promotion channel

for a successful person with the name Åhlens.

The Respondent points out that it is the Complainant who has made all contacts

with the Respondent, trying to buy the Domain Name, "to entice me

to make a mistake". Respondent has rejected all offers, "except

for the last time when I proposed that they could buy the domain name for

a symbolic amount". The Respondent states that he has no purposes,

by using the Domain Name, to harm the Complainant's rights in any way now

or in the future.

The Complainant and the Respondent have no common interests and the use of

the Domain Name will not compete with the Complainant's business. Further,

the Domain Name is not in use and hasn't been in use since the date of registration.

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.

1. Identical or Confusing Similarity

The Complainant is the owner of the registered and - at least in Sweden

- well-known trademark "ÅHLÉNS".

The relevant part of the Domain Name is <åhlens.com>.

The absence of the apostrophe over the letter "e" in the Domain

Name makes no significant difference on the overall impression. Accordingly,

the Panel finds that the Domain Name is confusingly similar to Complainant’s

trademark "ÅHLÉNS".

2. No Rights or Legitimate Interest

The name "ÅHLÉNS" is a registered and well-known

trademark of the Complainant, and is also the significant part of the Complainant’s

company name Åhléns AB.

The Respondent has not filed any evidence to prove any rights to use the

Complainant’s trademark and has not contested the Complainant’s statement

that Respondent is not a licensee of the Complainant’s products or services

or in any other way authorized by the Complainant to use the trademark ÅHLÉNS.

Paragraph 4(c) of the Policy sets out certain circumstances that, in particular

but without limitation, demonstrate Respondent’s rights or legitimate interest

in the Domain Name, such as that the Respondent has used or made demonstrable

preparations to use the Domain Name in connection with a bona fide offering

of goods or services, or that the Respondent has been commonly known by

the Domain Name, or that he is making 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 of the Complainant.

The disputed Domain Name is registered under the multi-lingual test-bed.

It contains national characters that are currently, due to technical reasons,

not possible to use in the same extent as domain names using Basic Latin

characters of the Unicode. The possibilities for the Respondent to actively

use the Domain name are therefore limited.

These circumstances do not, however, bar a holder of a multi-lingual domain

name from making demonstrable preparations to use the same. The Respondent

has stated that the Domain Name "can be used for many purposes",

but has not provided any business plans or any other demonstrable preparations

for such use.

It is true that Åhlén is a Swedish surname, as well as Åhlen,

Ahlen and Ahlén.

The Respondent’s surname is however not Åhléns, nor has he

claimed to be commonly known by the Domain Name.

The Respondent has not filed any evidence that he is making a legitimate

non-commercial use of the Domain Name.

Therefore, the Panel finds that the Respondent has no rights or legitimate

interests in respect of the Domain Name.

3. Registered and Used in Bad Faith

Both the Complainant and the Respondent are domiciled in Sweden, which

is the Complainant’s original and most important market. The Respondent

has not contested the Complainant’s statement that ÅHLÉNS is

a well-known trademark in Sweden.

The Panel therefore concludes that the Respondent was well aware of the

existence and business activities of the Complainant, prior to the registration

of the Domain Name.

The Respondent has not shown any preparations to use the Domain Name for

any services not connected to the Complainant.

The Panel concludes that the Respondent registered the Domain Name specifically

with the Complainant in mind.

Paragraph 4 (b) of the Policy sets out examples of circumstances that,

in particular but without limitation, if found by the Panel to be present,

shall be evidence of the registration and use of the domain name in bad

faith.

Paragraph 4 (b) (i) reads: circumstances indicating that you have registered….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…for a valuable consideration in excess of your documented out-of-pocket

costs directly related to the domain name.

The Complainant has offered the Respondent SEK 1 500 (about USD 144) for

the transfer of the Domain Name. According to Annex F of the Complaint,

the Respondent replied that "a reasonable sum should be about SEK

8 500 [about USD 816] including costs for transfer". The

Respondent has not documented his out-of-pocket costs related to the Domain

Name. Considering the fact that there are no evidence showing that the Respondent

had any expenses for the Domain Name, except for the registration fee, and

that domain names under the gTLD .com normally can be registered at a very

low cost, the Panel concludes that SEK 8 500 must be considered in excess

of the Respondent’s out-of-pocket costs directly related to the Domain Name.

The Respondent states that the Domain Name is not, and has never been,

in use. As first established in WIPO Case No. D2000-0003 Telstra Corporation

Limited v. Nuclear Marshmallows, and confirmed in numerous later

cases, the requirement of the Policy of a domain name "being used in

bad faith" is not limited to positive actions.

Registering a domain name that consists of or is confusingly similar to

another’s well-known trademark, without any proof of good faith purpose,

waiting to be approached by the trademark owner and systematically reject

monetary offers made by the trademark owner in order to increase the remuneration

considerably without any proof of corresponding expenses, clearly indicates

that the Domain Name was registered and used in bad faith.

Considering all the facts and circumstances of this case, the Panel concludes

that the Respondent registered the Domain Name primarily for the purpose

of selling or otherwise transferring the Domain Name to the Complainant,

for a sum that is in excess of Respondent’s documented out-of-pocket costs

directly related to the Domain Name.

The Panel concludes that the Respondent registered and is using

the Domain Name in bad faith.

7. Decision

The Panel concludes (a) that the Domain Name <åhlens.com> is

confusingly similar to the Complainant’s trademark ÅHLÉNS,

(b) that the Respondent has no rights or legitimate interest in the Domain

Name, and (c) that the Respondent has registered and used the Domain Name

in bad faith.

Therefore, pursuant to paragraphs 4 (i) of the Policy and 15 of the Rules,

the Panel orders that the Domain Name <åhlens.com>, the race-string

(bq--adswq3dfnzzq.com) be transferred to the Complainant Åhléns

AB.

P-E Petter Rindforth

Sole Panelist

Dated: April 5, 2002