Westmore · UDRP DecisionReseguiden.com
The Panel found <reseguiden.com> confusingly similar to the Complainant’s registered device mark RESEGUIDEN.SE. It did not reach rights or legitimate interests because the Complainant failed to prove bad-faith registration. The domain was registered more than ten years before the trademark application, and the evidence did not clarify the domain’s 18-year ownership history, when or how it passed from a third party to the Respondent, or whether the Respondent acted for the Complainant. The Complaint was denied.
The timeline behind reseguiden.com
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The case illustrates the evidentiary difficulty of proving bad-faith registration where a domain predates the complainant’s registered mark, the domain consists of a dictionary expression, and the historical registration chain is unclear. Even potentially suggestive administrative and billing records did not substitute for evidence establishing when the respondent acquired the domain, under whose authority, and with what motive.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Reseguiden Interactive AB v. Anders Sandberg Case No. D2016-0554 1. The Parties The Complainant is Reseguiden Interactive AB of Gothenburg, Sweden, represented by MAQS Law Firm Gothenburg, Sweden. The Respondent is Anders Sandberg of Gothenburg, Sweden, self-represented. 2. The Domain Name and Registrar The disputed domain name <reseguiden.com> is registered with Tucows Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2016. On March 21, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 21, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 1, 2016. The Response was filed with the Center on May 1, 2016. The supplemental filing by the Complainant was received by the Center on May 4, 2016. The Center appointed Johan Sjöbeck as the sole panelist in this matter on May 12, 2016. 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. A supplemental filing by the Respondent was received by the Center on May 16, 2016. 4. Factual Background The Complainant is, according to the submitted evidence, the owner of the Swedish registered device trademark RESEGUIDEN.SE with registration number 401444, application date July 3, 2008 and registration date February 6, 2009. The disputed domain name <reseguiden.com> was registered on March 26, 1998. 5. Parties’ Contentions A. Complainant The Complainant’s company named Reseguiden Interactive AB was registered on August 18, 1997 and changed to Embryo Communication AB on February 16, 1998. On January 8, 1998, the Complainant created a secondary name, Reseguiden Interactive. The Complainant is the market-leading travel search engine in Sweden. The Complainant has more than 600 connected travel companies and over 1 million unique visitors a month on the Scandinavian market. The disputed domain name <reseguiden.com> is confusingly similar to the Complainant’s registered trademark RESEGUIDEN.SE. The only difference is the Top-Level Domain (“TLD”) suffix “.se” and “.com”, which is insufficient to prevent confusion. The Complainant registered a number of domain names containing “reseguiden” in the 1990’s and early 2000’s. The domain name registrations were made by the company “Who-Is-Where”. The Respondent was engaged to monitor and administrate the domain names on behalf of the Complainant. The billing contact was Embryo Communication, the Complainant’s parent company. In December 2000, the Complainant engaged “Cable & Wireless pi.se” as new administrative contact and requested that the disputed domain name should be transferred from “Who-Is-Where” to Network Solutions, Inc. The Complainant has demanded several times that the Respondent shall transfer the domain name to the Complainant but the Respondent has failed to comply. In pre-Complaint dealings, the Respondent has declared that he will make sure that the WhoIs-information will contain correct information. The Respondent does not use the disputed domain name and has no intention of ever using it but still refuses to release it to the Complainant. The Respondent is not involved in any business that would have an interest in the disputed domain name. It can be assumed that the Respondent refuses to transfer the disputed domain name for commercial gain or for the purpose of disrupting the business of the Complainant. The disputed domain name was registered on behalf of the Complainant. The Respondent had the task to monitor the disputed domain name. At least since 2011, the Respondent has promised to transfer the disputed domain name. B. Respondent The Respondent argues that the Complainant has not been able to register “reseguiden” as a word trademark due to the descriptive qualities of the term. “Reseguiden” means “travel guide”. The term lacks distinctive character. A search for “reseguiden” on Google gives 614 000 search results, 420 000 results for “reseguide” and 129 000 000 results for the English word “travelguide”. The Complainant registered a device mark on February 6, 2009, which is more than ten years after the registration of the disputed domain name, which was registered on March 26, 1998. On April 28, 2016, the Complainant has applied for the device mark RESEGUIDEN FRIENDS. The disputed domain name is not identical or confusingly similar to the Complainant’s device mark. The Complainant has never been the holder of the disputed domain name. The Respondent has never had any business-transactions with the Complainant. The Complainant has never paid for any registration or renewal fees for the disputed domain name. The Respondent has not made any profit from the disputed domain name during the 18 years. There is no commercial use and the Respondent has no intention of using it commercially. The disputed domain name is reserved for a philosophical and intellectual discourse about life guidance. There has been no intention of selling the disputed domain name to the Complainant or disrupting the business of the Complainant. There is no evidence to support the fantasies of the Complainant. 6. Discussion and Findings According to paragraph 4(a) of the Policy, the Complainant must prove each of the following: (i) that the disputed 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 the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant is, according to the submitted evidence, the owner of the registered device mark RESEGUIDEN.SE. The disputed domain name <reseguiden.com> contains “reseguiden” without “.se”, which clearly refers to the Swedish country-code Top-Level Domain (“ccTLD”). The trademark has the look of a domain name registered in the Swedish ccTLD while the disputed domain is registered in the generic Top Level Domain (“gTLD”) “.com”. Since it is standard practice to disregard the top-level suffix under the confusingly similar test, the Panel finds that the absence of “.se” in the disputed domain name does little to eliminate the confusing similarity between the Complainant’s trademark and the disputed domain name in this case. Having the above in mind, the Panel concludes that the disputed domain name <reseguiden.com> is confusingly similar to the Complainant’s trademark RESEGUIDEN.SE and that the Complainant has proved the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant must show, at least prima facie , that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following: (i) that it has used or made preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services prior to any notice of the dispute; or (ii) that it is commonly known by the disputed domain name, even if it has not acquired any trademark or service mark rights; or (iii) that it is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. In light of the Panel’s finding under the next heading, it is unnecessary for the Panel to address the issue of rights or legitimate interests. C. Registered and Used in Bad Faith Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include: (i) circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or (ii) circumstances indicating that the domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. Although the Panel has some reservations about the overall credibility of the Respondent’s explanation of the purpose, the Panel notes that the word “reseguide” (“travel guide” in English) is a common Swedish dictionary word found in The Swedish Academy Dictionary. The word “reseguiden” means “the travel guide” (definite form). The disputed domain name <reseguiden.com> was registered more than ten years before the Complainant applied for the trademark RESEGUIDEN.SE. The disputed domain name was registered on March 26, 1998 and the Complainant’s trademark was applied for on July 3, 2008. It has been argued by the Complainant that the Respondent registered the disputed domain name on behalf of the Complainant and that the Respondent was simply instructed by the Complainant to administrate the disputed domain name. The Respondent, on the other hand, denies the Complainant’s arguments and maintains that there have not been any such business transactions between the parties. From the material submitted by the parties, the Panel finds the 18-year history regarding the ownership of the disputed domain name unclear and vague. According to a copy of a printout from the WhoIs database and an invoice from Network Solutions, Inc., it can be established that on November 20, 1998 a third party named “Who-Is-Where” was the holder of the disputed domain name. From these documents it can also be established that Svenska Teledata was the administrative contact and that Embryo Communications AB was the billing contact. However, from the submitted material it is unclear when, and under what circumstances, the holder of the disputed domain name was changed from “Who-Is-Where” to the Respondent. The Panel also notes that the Respondent uses the following email address […]@teledata.se. Although the Complainant has provided excerpts of email correspondence between the parties indicating that the Respondent has been willing to modify the information in the WhoIs database, there is no material in the case from which the Panel can state with any degree of confidence that the Respondent’s motives at time of registration of the disputed domain name were mala fide and actuated by a desire to exploit a trademark belonging to the Complainant. For the sake of argument, had the Respondent been instructed by the Complainant to register the disputed domain name on behalf of the Complainant, the domain name registration could arguably not have been made in bad faith because firstly, the registration would have somehow been authorized by the Complainant. On the other hand, if the Respondent did not register the disputed domain name on behalf of the Complainant, it is difficult to see how the registration would have been in bad faith, as the domain name would have been registered prior to the Complainant’s trademark application. Considering all of the above, the Panel concludes that the Complaint provides insufficient evidence to conclude that the disputed domain name was registered by the Respondent in bad faith. The Panel notes that the present decision is based on the limited UDRP record before the Panel and is without prejudice to any subsequent action based on additional facts and a more complete record in court. 7. Decision For the foregoing reasons, the Complaint is denied. Johan Sjöbeck Sole Panelist Date: May 26, 2016
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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