Sony Ericsson Mobile Communications AB v. Terje Leifson Case No. D2008-1744
1. The Parties The Complainant is Sony Ericsson Mobile Communications AB, of Sweden, represented by Göhmann Rechtsanwalte Abogados Advokat Steuerberater Partnerschaft, of Germany.
The Respondent is Terje Leifson, of Norway.
3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2008. On November 12, 2008, the Center transmitted by email to InnerWise, Inc. d/b/a ItsYourDomain.com a request for registrar verification in connection with the disputed domain name. On November 12, 2008, InnerWise, Inc. d/b/a ItsYourDomain.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 18, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 21, 2008. The Center verified that the Complaint together with the amendment to 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 28, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 18, 2008. The Response was filed with the Center on December 18, 2008.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on December 23, 2008. 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.
Further Statements were received from both the Respondent and the Complainant on December 30, 2008. These were not sought by the Panel under paragraph 12 of the Rules or otherwise, and as they did not add information unavailable at the time of filing of the Complaint, they have not been accepted by the Panel.
4. Factual Background The Complainant is Sony Ericsson Mobile Communications AB. It is the owner of European trademark No. 000901229 for TRACKID, granted on September 8, 2006 for inters alia apparatus and instruments for telecommunication.
The Respondent says that it is a company working with research and development of RFID solutions, taken by the Panel to mean “Radio Frequency IDentification”, being the technology that allows items and livestock to be tracked and traced by means of attached microchips or tags.
The disputed domain name appears to have been registered by the Respondent on October 14, 20021.
5. Parties’ Contentions A. Complainant The Complainant’s contentions include the following.
The Complainant provides documentary evidence that it is the holder of the European trademark No. 000901229 for TRACKID, granted on September 8, 2006.
The disputed domain name is identical to the Complainant’s trademark TRACKID and infringes that trademark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has never been authorised by the Complainant to use its trademark in any way. The Respondent cannot demonstrate that he has made any use of, or demonstrable preparations to use, the disputed domain name or a corresponding name in connection with a bona fide offering of goods or services. The Respondent has never been commonly known by the disputed domain name and has not acquired trademark or service mark rights in it.
The Respondent does not make any legitimate noncommercial of fair use of the disputed domain name but is holding it with the only purpose of selling it to the Complainant. This means that the only reason why the Respondent is holding the disputed domain name is to gain money to the detriment of the Complainant. This cannot be considered a legitimate noncommercial or fair use of the domain name.
The disputed domain name was registered and is being used in bad faith. The public may gain the impression that the disputed domain name is somehow connected to the Complainant’s trademarks. The deliberate use of somebody’s trademark without authority cannot be regarded as fair use. It cannot be considered fair for the Complainant to have to rely upon the goodwill of the Respondent, which might vary from day to day.
The Complainant has several times tried to contact the Respondent and has sent him letters in which he has been informed about the trademark infringement and has been asked to transfer the disputed domain name. Respondent has never replied to any letters and has not been co-operative with respect to a transfer.
The Complainant submits previous WIPO UDRP decisions for the consideration of the Panel.
The remedy requested by the Complainant is the transfer to it of the disputed domain name.
B. Respondent The submission from the Respondent is somewhat informal but by implication, the Respondent denies the Complaint.
The Respondent indicates an interest in Radio Frequency IDentification (RFID); that the disputed domain name was bought by the Respondent in 2002; and that offers by others to buy it from him have been turned down.
The disputed domain name points to or reproduces the website of the Respondent’s company Sensortag DA, “a company working with research and developing RFID solutions for the future and for humanity”, located at “www.rfid.no.” That website in turn references others such as the Salvation Army, but does not offer hyperlinks to them.
6. Discussion and Findings Under paragraph 4(a) of the Policy Complainant is required to prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
It is noted that the Complaint was originally made against SecureWhois, Inc., of Toronto, Canada. In response to the Center’s enquiry, SecureWhois, Inc., disclosed the registrant to be Terje Leifson, of Norway. According to the Rules, “Respondent means the holder of a domain-name registration against which a complaint is initiated”. The intituling has been amended to reflect solely the registrant as the Respondent.
A. Identical or Confusingly Similar
The Complainant has submitted documentary evidence satisfactory to the Panel of its ownership of and rights in the European trademark TRACKID, granted on September 8, 2006.
The Complainant must prove that the disputed domain name is identical or confusingly similar to its trademark. The gTLD directory “.com” may be disregarded as an inevitable part of a domain name. The remainder of the disputed domain name, “trackid”, is identical to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has asserted that it has not licensed the Respondent to use the trademark in a domain name, and that in the terms of paragraph 4(c) of the Policy the Respondent cannot establish any relevant rights or legitimate interests.
Paragraph 4(c) of the Policy reads in part:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your [the Respondent’s] rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial 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 has the disadvantage of being unrepresented and his explanations are difficult to follow. Nevertheless it is possible to glean that, according to the Respondent, he has owned the disputed domain name since 2002, about four years before the Complainant registered the trademark TRACKID. The Respondent says that he and his company have an interest in the development of microchip or tag identification devices, and the Panel recognises that the word “identification” (or similar) is commonly abbreviated to “ID”. Upon inspection of the screenprint of the Respondent’s website, the Panel finds the evidence of the Respondent’s activity and progress in this area to be thin. On the other hand, there is nothing on the present record to convince the Panel that the Respondent’s stated interests in the sphere of RFID and computer technology are other than genuine.
For example, he refers to having received a relevant Norwegian Government grant in 2000 2002 and to having written a related report on the applications of RID (taken to mean RFID). Listed among academic publication references, without any particular attempt to draw attention to it except for the note “about RFID”, is the following paper (the Respondent being a co-author):
“Sønnervig, B.R and Leifson, T. End-report of the part of project “SENSORTAG” 2000 2001 2002, a BU project for SND at the Statens Hus, Hordaland (2000 2002).”
In the terms of paragraph 4(c)(i) of the Policy, the Respondent’s activities in the sphere of RFID do appear to be “in connection” with a bona fide offering of goods or services. Notwithstanding the minimal level of activities portrayed, the Panel is in the circumstances prepared to accept that they constitute demonstrable preparations for use of the disputed domain name. Furthermore the flavour of the website is free from the connotations that conventionally may negate bona fide use, for example there are no hyperlinks to competitors of Complainant, or to sales websites or search engines, and there is some sufficient substance to support the Respondent’s claimed interest in the technology of tags, microchips and RFID. The disputed domain name was apparently obtained four years in advance of the Complainant’s trademark TRACKID, making it realistically unlikely that the Respondent anticipated the Complainant’s move in registering the trademark. It is also of note that the Respondent’s other domain name and website, “www.rfid.no”, features solely the name of the technology RFID, of which “ID” is the key descriptor.
Irrespective of the provisions of paragraph 4(c) of the Policy, it remains for the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. On the evaluation of all evidence presented and on the balance of probabilities, the Panel finds that the Respondent has rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(c)(i) of the Policy, and that the Complainant has not proven otherwise. Accordingly the Panel decides for the Respondent in the terms of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
It is not strictly necessary for the Panel to consider the question of bad faith registration and use in the terms of paragraph 4(a)(iii) of the Policy, and it will do so only briefly.
The Complainant has in these proceedings made little showing in respect of the Respondent’s alleged bad faith, except to deduce that the Respondent’s motive was in some way to make money at the Complainant’s expense, and to make reference to the Respondent’s failure to reply to letters.
The Complainant has not produced evidence that the Respondent intended to sell the disputed domain name profitably to the Complainant or a competitor. The date of registration of the disputed domain name, being years before the Complainant’s trademark, argues against any bad faith intention to block the Complaint from acquiring the domain name (and there is no evidence of a pattern of such conduct) and against any intention to disrupt the Complainant’s business. There is no evidence to suggest that the Respondent has attempted to divert the Complainant’s Internet traffic to itself, or has used the disputed domain name in a trademark sense in conflict with the Complainant.
Moreover, there is nothing on the present record to establish that the Respondent purchased the disputed domain name in contemplation of targeting future trademark rights likely to be obtained by the Complainant. See e.g. ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669.
Failure of a Respondent to reply to cease and desist letters has been held to be an aggravating factor where other elements of bad faith have been found (Ebay, Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000 1632), but in this case more would be required.
7. Decision For all the foregoing reasons, the Complaint is denied.
Dr. Clive N.A. Trotman
Dated: January 6, 2009
1 The WhoIs data for the disputed domain name indicates that the domain name was created on October 14, 2002.