Sonera Oyj; Telia AB v. Daungsoo Ghim

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Sonera Ojy

and Telia AB (Publ.) v. Daungsoo Ghim

Case No. D2002-0403

1. The Parties

The First Complainant is

Sonera Oyj, a Public Limited Company incorporated and existing under the laws

of Finland, and having its principal place of business in Helsinki, Finland.

The Second Complainant

is Telia AB, a Public Limited Company incorporated and existing under the laws

of Sweden, and having its principal place of business in Farsta, Sweden.

The Complainants are represented

by Esa Korkeamäki and Matti Vedenkannas, both of HH Partners, Attorneys

at Law, Ltd., Helsinki, Finland.

The Respondent is Daungsoo

Ghim, whose address is given as 388-1, Pungnap-dong, Songpa-gu, Seoul, 138-736,

Republic of Korea.

2. The Domain Name and

Registrar

The domain name at issue

is <soneratelia.com>.

The Registrar with which

the disputed domain name is registered is Network Solutions, Inc., 21355 Ridgetop

Circle, Dulles, VA, 20166, United States of America.

3. Procedural History

On April 30, 2002, a Complaint

was received via email by the WIPO Arbitration and Mediation Center ("the

Center") for decision in accordance with the Uniform Domain Name Dispute

Resolution Policy ("the Policy"), adopted by the Internet Corporation

for Assigned Names and Numbers ("ICANN") on August 26,1999. The

hardcopy version was received on May 6, 2002.

On May 2, 2002, the Registrar

responded to a request for verification of the disputed domain name <soneratelia.com>

confirming:

h the

details of the Respondent;

h that

the Policy applied to the disputed domain name;

h that

the Registrar would not cancel, transfer, activate, deactivate or otherwise

change the status of the disputed domain name except as provided by the Policy;

and

h the

language of the Service Agreement is English.

On May 8, 2002, the Center

transmitted a Notification of Complaint Deficiency to the Complainant’s representative

as the Complaint was not signed as required by the Rules.

On May 16, 2002, the Center

received an Amended Complaint (hereafter referred to as "the Complaint"),

signed by the Complainant’s authorized representative.

On May 17, 2002, the Center

transmitted a Notification of Complaint and Commencement of Administrative Proceeding

to the Respondent. The Respondent was advised that a response to the Complaint

was required within 20 calendar days i.e. by June 6, 2002.

On June 4, 2002, the Center

received a Response via email. The hardcopy version of the Response was received

on June 14, 2002.

On June 17, 2002,

the Panel was appointed. The Panelist finds that the Administrative Panel

was properly constituted in accordance with the Rules for Uniform Domain Name

Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the

Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute

Resolution Policy ("the Supplemental Rules").

The Panel has independently

determined and agrees with the assessment of the Center that the Complaint

meets the formal requirements of the Rules and the Supplemental Rules.

4. Factual Background

The Complainant has asserted

and provided evidence in support of the following facts. Unless stated otherwise,

the Panel finds these facts established.

The First Complainant

The First Complainant,

Sonera Oyj, states that it is a leading provider of mobile and advanced telecommunication

services on a worldwide basis. It states that it is growing as an operator,

as well as a provider, of transaction and content services in Finland and in

selected international markets. It also offers advanced data solutions to businesses,

and fixed network voice services in Finland and neighboring markets. In 2001,

its revenue totalled €2.2 billion. It has around 10,000 employees.

The First Complainant’s

business was originally operated by the Finnish State as a public service corporation,

named The Post and Telegraph Office. In 1998, the Finnish Parliament approved

the privatization of the company. The company, which at that stage operated

under the name "Telecom Finland" changed its name to "Sonera

Oyj" and was listed on the Helsinki Stock Exchange and on the NASDAQ National

Market System in the United States of America. The First Complainant states

that its share turnover on NASDAQ during 2001 was 40.4 million shares.

The First Complainant states

that the advanced data solutions that it offers through its subsidiaries have

established a reputation for the First Complainant as "a forerunner in

cutting-edge technology". It states that this has contributed to the promotion

of the company’s trademark on the international markets, including the Far East.

As set out in more detail

later, the First Complainant recently announced that it will merge with the

Second Complainant, the Swedish telecom company Telia AB.

The Second Complainant

The Second Complainant,

Telia AB, is described by the Complainants as the First Complainant’s Swedish

counterpart. The Second Complainant’s business was originally operated by the

Swedish State as a public service corporation called Televerket. In 1993, the

Swedish Government decided to transform Televerket into a state-owned public

company, Telia AB.

The Complainants state

that Telia AB is the leading telecommunications company in Sweden and a market

leader in mobile communications, broadband/internet services and IP-based network

services. The Telia Group provides "a comprehensive range of products and

services in the fields of IT and telecommunications in over 30 countries worldwide".

These include telecom, data, multi-media and information services.

Trade Mark Registrations

The First Complainant is

the proprietor of 128 trademark registrations for the word SONERA in various

countries around the world.

The First Complainant does

not have a trademark registration in Korea, where the Respondent is domiciled.

However, an application was filed with KIPO (Korea Intellectual Property Office)

on July 2, 1999, and accepted for registration and published on November

15, 2000. This trademark registration for Korea is about to issue.

The Complainants state

that the trademark SONERA is used on a worldwide basis as a symbol for the First

Complainant’s business activities. They claim that the trademark SONERA has

become famous in the international telecommunications field.

Similarly, the trademark

TELIA is registered in a number of countries, and is well-known within the telecommunications

field. The Second Complainant has registered the trademark TELIA in relation

to data and telecommunication products and services in more than 30 countries

worldwide.

The Complainants did not

provide a complete list of the Second Complainant’s trademark registrations

around the world, although they said that these would be provided if required.

Instead, they rely on the fact that the Second Complainant’s entitlement to

the trademark TELIA has already been the subject of evaluation in Telia AB

v. Alex Ewaldsson and Birgitta Ewaldsson, WIPO

Case No. D2000-0599. It is not clear from that decision whether the Second

Complainant’s trademark TELIA is registered in Korea.

Merger between the First

and Second Complainants

The Complainants state

that due to the high profile of both the First and Second Complainants, the

international media anticipated the merger of the First and Second Complainants

for quite a long time. The actual announcement of the merger plan of the First

and Second Complainants in late March 2002 was apparently not a major surprise

to the international telecommunication community. The Complainants annexed examples

of articles dated January 10, 2002, March 22, 2002 and March 24, 2002 anticipating

the proposed merger.

Also, on March 22, 2002,

the Finnish National Broadcasting Company YLE broadcast a report of the merger

talks. The report was distributed worldwide on the same day by Reuters News

Agency and confirmed by Reuters on March 24, 2002. On March 24, 2002,

the Financial Times also reported the merger plan.

The Respondent registered

the disputed domain name <soneratelia.com> on March 25, 2002.

The merger plan was officially

announced on March 26, 2002, after the majority shareholders in the companies

(the Government of Sweden and the Government of Finland) had reached agreement

on the terms of the merger. The official announcements were widely reported

by the international media.

It appears from the Complaint

that sometime between March 25, 2002 and April 2002, the Complainants contacted

the Respondent regarding the registration of the disputed domain name. On April

26, 2002, the Respondent replied as follows:

"I’m sorry I’m late

for answering.

The reason why I registered

the domain is only to manage a personal website.

What is your international

law’s authority for saying that the ownership of soneratelia.com is your both

companies, being a name of the new established company not made?

Can you insist the right

of the domain name, as only a possibility that the new company’s name will be

decided to soneratelia?

Then, Is teliasonera.com

yours, too?

At any rate, I have not

a plan to manage the website for business but only private website.

If you really need the

domain, I am amicably willing to negotiate for the settlement.

I’m looking forward to

hearing from you."

5. Parties’ Contentions

A. The Complainants

The Complainants state

that the relevant part of the domain name in issue, "SONERATELIA"

is identical to the distinctive combination of the trademarks SONERA and TELIA,

which are registered and owned by the Complainants. Both trademarks SONERA and

TELIA were registered before the disputed domain name was registered.

The Complainants refer

to the decision of MedicaLogic/Medscape, Inc v. The Domain You Have Entered

Is For Sale, NAF FA0094933. In that case, the Panel concluded that the Complainant

owned the rights in the combined mark "MEDICALOGIC/MEDSCAPE". Prior

to merging, MedicaLogic and Medscape each individually owned their respective

trade marks. The Panel found that the merger did not alter their rights to the

mark, stating that "the combined mark is unusual and distinctive and the

Complainant has exclusive rights to the combined mark".

The Complainants also referred

to PharmaciaUpjohn AB. v. Sol Meyer, WIPO

Case No. D2000-0785. That case concerned the registration of the domain

name <pharmaciamonsanto.com>. The domain name was registered on the same

day as the media announced that PharmaciaUpjohn AB and Monsanto company were

in merger talks - the Panel concluded that all three elements of the Policy

had been made out and ordered the transfer of the domain name to the Complainant.

The Complainants claim

that both the trademark SONERA and the trademark TELIA are purely invented word

marks and the exact combination of these words is not one that traders would

legitimately choose unless they were seeking to create an impression of an association

with the Complainants.

The Complainants allege

that by virtue of the widespread use and reputation of the trademarks SONERA

and TELIA, members of the Internet community, as well as any "representative

of the worldwide telecommunication community" would believe that the entity

owning the disputed domain name was the company created by the merger of the

First and Second Complainants or was in some way associated with the Complainants.

The Complainants confirm

that they have not licensed or otherwise permitted the Respondent to use their

trademarks, nor have they licensed or otherwise permitted the Respondent to

apply for or use any domain name incorporating those marks.

The Complainants also allege

that the disputed domain name was registered in bad faith:

(a) the Complainants

are not aware of any trademark registrations or applications in any country

filed in the name of the Respondent or any other party for the trademark SONERATELIA,

nor are they aware of any use of the mark SONERATELIA for any goods or services,

nor any preparations for such use;

(b) the merger plan

between the First and Second Complainants was widely anticipated and reported

in the media even before the plan was formally announced. In these circumstances,

the Complainants believe that the disputed domain name was registered for the

purpose of selling the disputed domain name to either of the Complainants for

valuable consideration in excess of the Respondent’s out-of-pocket costs directly

related to the disputed domain name, or in order to prevent the Complainants

from obtaining the disputed domain name;

(c) even if the Respondent

has not (thus far), made an offer to sell the disputed domain name to the Complainants,

the mere act of registration alone must, in the circumstances be considered

to constitute "use in bad faith". The Complainants refer to the decision

of PharmaciaUpjohn AB v. Sol Meyer (supra), in which the Panel

concluded that:

"The fact that the

Domain Name was registered on the very day that news was first published of

the merger talks between the Complainant and Monsanto Company leads the Panel

irresistibly to the conclusion that it was an opportunistic act by an alert

entrepreneur with a view to making a profit.

Accordingly, the Panel

finds that the circumstances set out in paragraph 4(b)(i) of the Policy are

present. If the Respondent has not already made a demand for a sum in excess

of his documented out of pocket costs directly related to the Domain Name, he

will at some stage do so. The Panel is of the view that maintaining a registration

for that purpose is use in bad faith.

Additionally, even if the

Panel is wrong on that and the Respondent’s intention is and always has been

to sit back and do nothing with the Domain Name, but simply to ‘block’ the Complainant

and its parent and related companies, the Panel is of the view that there is

nothing ‘good faith’ about that posture."

The Complainants submit

that the fact that the disputed domain was registered only one day before the

official announcement of the merger plan and after the merger talks were first

reported by the international media demonstrates that the disputed domain name

was registered in bad faith.

The Complainants also note

that on April 26, 2002 the Respondent contacted the Complainant via email

stating that the Respondent is "amicably willing to negotiate for the settlement"

if the Complainants "really need the domain name". The Complainants

allege that even though this email did not contain a direct offer to sell the

disputed domain name, it is evidence that the disputed domain name was initially

registered for the sole purpose of selling the disputed domain name to the Complainants

for valuable consideration in excess of the Respondent’s out-of-pocket costs

related to the disputed domain name.

B. The Respondent

The Respondent claims that

in Korea the trademark "SONERA" is not well-known. The Respondent

annexed a search for "SONERA" on a Korean search engine, which did

not disclose any results. The Respondent also points out that the trademark

"SONERA" is not yet registered in Korea and the company Sonera Oyj

does not have a presence in Korea.

The Respondent claims that

his intention in registering the disputed domain name was not to manage the

website for business, but as a private website. The Respondent states that he

initially tried to settle the problem "peacefully" but the Complainants

submitted the Complainant "without any talking with me".

The Respondent also states

that as the international media anticipated the merger of both companies with

various other main players in the telecom field for quite some time, the Complainant

"gave up the rights itself".

The Respondent also contends

that as the merged company has not decided upon its new name the disputed domain

name is not identical or confusingly similar to a trademark or service mark

in which the Complainants have rights.

6. Discussion and

Findings

Paragraph 15(a) of the

Rules instructs the Panel to:

"decide a complaint

on the basis of the statements and documents submitted in accordance with the

policy, these rules and any rules and principles of law that it deems applicable".

The burden for the Complainant,

under paragraph 4(a) of the Policy, is to show:

● That the domain

name registered by the Respondent is identical or confusingly similar to a trademark

or service mark in which the Complainant has rights; and

● That the Respondent

has no rights or legitimate interests in respect of the domain name; and

● That the domain

name has been registered and is being used by the Respondent in bad faith.

Domain Name is Confusingly

Similar/Identical to a Trademark or Service Mark in which the Complainant has

Rights

The Complainants have demonstrated

that individually they each have rights in the respective marks SONERA and TELIA

which are registered as trademarks in many countries. Both marks are original

and distinctive marks; both are invented words with no ordinary meaning.

Here the Panel finds that

the two Complainants have rights to the combination of their two trademarks

(and names) and to the combined goodwill which the combination SONTERA TELIA

enjoys. The fact that the two Complainants were likely to merge and that they

were in merger talks was widely publicized before registration of the disputed

domain name. Even though the merged entity is not a party to the Complaint,

the Panel is satisfied that, as at the date of filing the Complaint, the two

Complainants have shown full entitlement to the individual trademarks SONERA

and TELIA and to the combination of the two trademarks.

The Panel therefore finds

that the disputed domain name is confusingly similar to the First Complainant’s

mark SONERA and confusingly to the Second Complainant’s mark TELIA.

Respondent has no Rights

or Legitimate Interests in Respect of the Disputed Domain Name

The Policy outlines (paragraph

4(c)) circumstances which, if found by the Panel to be proved, shall demonstrate

the Respondent’s rights or legitimate interest in the domain name. These circumstances

are:

(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 the 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 non-commercial 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.

The Respondent claims that

he registered the disputed domain name in order to use it as "a personal

website" but has not disputed that he was aware of the Complainants and

their registered trademarks at the time he registered the disputed domain name.

The Respondent has not provided any evidence as to why he selected this particular

domain name for his "private website".

In the absence of any evidence

as to how or why the disputed domain name was selected by the Respondent, the

Panel considers that it defies coincidence to suggest that he independently

conceived of this unusual domain name and did not have the Complainants in mind.

The suggestion seems all the more unlikely in light of the fact that the Respondent

registered the disputed domain name the day after it had widely been reported

through Reuters that merger talks between the First and Second Complainants

were taking place. Also, there is no suggestion or evidence that the Respondent

is commonly known by the disputed domain name.

Overall the Panel can find

no evidence to demonstrate that the Respondent has rights or legitimate interests

in the disputed domain name.

Domain Name has been Registered

and is being Used in Bad Faith

Paragraph 4(b) of the Policy

states:

"For the purposes

of Paragraph 4(a)(iii), the following circumstances, in particular but without

limitation, if found by the Panel to be present, 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

(ii) you have 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 you have

engaged in a pattern of such conduct; or

(iii) you have registered

the domain name primarily for the purpose of disrupting the business of a competitor;

or

(iv) by using the domain

name, you have intentionally attempted to attract, for commercial gain, Internet

users to your 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 your website or location or of a product or service on your

website or location."

It should be noted that

the circumstances of bad faith are not limited to the above.

The Panel finds that the

Respondent registered the disputed domain name primarily for the purpose of

selling it to the Complainant or to a competitor of the Complainant. Registration

of the disputed domain name was an opportunistic act from which the Respondent

thought he could gain. In his reply to the Complainants’ first Complaint, the

Respondent stated:

"If you really need

the domain name, I am amicably willing to negotiate for settlement."

This a clear

indication that the Respondent was willing to sell the registration in exchange

for money – more than likely in excess of his out-of-pocket costs. There could

be no other reason for the Respondent registering a domain name comprising an

unusual combination of trademarks with which he had no previous connection and

in respect of which he had no rights or legitimate interest. Furthermore, the

timing of the registration, after much publicized speculation of the merger

in the business press, and the day after announcement of the merger talks, clearly

defies coincidence and demonstrates the Respondent’s real motives.

There is also something

of an indication of the Respondent’s intentions in the Response. Here the Respondent

states:

"Why the Complainant

has not registered the domain name, although the merger was anticipated for

quite a long time? As Compliant [sic](c: Anticipation of the Merger) "the

international media has anticipated the merger of both companies with various

other main players in the telecom field for quite a lomg [sic] time now".

Therefore, the Complainant gave up the rights itself."

The Respondent’s words

in bold suggest that the Respondent (who has not disputed knowledge of the Complainants)

regarded it as fair game to register their combined trademarks as a domain name.

Although there is no pattern of such conduct on the part of the Respondent,

it is a fair inference from the Response that the Respondent was looking either

to block the Complainants from registering the disputed domain name or to sell

it to them.

The Panel considers that

the comments of the Panel in Pharmacia & Upjohn AB v. Sol Meyer,

WIPO Case No. D2000-0785 closely match the facts of this case:

"The fact that the

Domain Name was registered on the very day that news was first published of

the merger talks between the Complainant and Monsanto Company leads the Panel

irresistibly to the conclusion that it was an opportunistic act by an alert

entrepreneur with a view to making a profit.

Accordingly, the Panel

finds that the circumstances set out in paragraph 4(b)(i) of the Policy are

present. If the Respondent has not already made a demand for a sum in excess

of his documented out of pocket costs directly related to the Domain Name, he

will at some stage do so. The Panel is of the view that maintaining a registration

for that purpose is use in bad faith.

Additionally, even if the

Panel is wrong on that and the Respondent’s intention is and always has been

to sit back and do nothing with the Domain Name, but simply to ‘block’ the Complainant

and its parent and related companies, the Panel is of the view that there is

nothing ‘good faith’ about that posture."

The Panel therefore concludes

on the facts of this case that the disputed domain name was registered in bad

faith.

7. Decision

For the foregoing reasons,

the Panel decides that:

(a) the disputed domain

name registered by the Respondent is confusingly similar to trademarks in which

the Complainants have rights;

(b) the Respondent has

no rights or legitimate interests in respect of the disputed domain name;

(c) the disputed domain

name was registered and is being used in bad faith.

Accordingly, pursuant to

paragraph 4(i) of the Policy, the Panel requires that the registration of the

domain name <soneratelia.com> be transferred to the Complainants.

Andrew Brown

Sole Panelist

Dated: June

27, 2002

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• Sonera Oyj; Telia AB v. June I. Ahn — D2002-0402 · teliasonera.com · Transfer · 07 Oct 2002