3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2005. On November 15, 2005, the Center transmitted by email to .NU Domain Ltd. a request for registrar verification in connection with the domain name at issue. On November 15, 2005, .NU Domain Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 25, 2005. 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”), 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 29, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was December 19, 2005. The Response was filed with the Center on December 19, 2005.
The Center appointed Anders Janson as the Sole Panelist in this matter on December 28, 2005. 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.
4. Factual Background The Complainant is a Swedish television broadcasting company based in Stockholm, Sweden. Since 1992, the Complainant has been broadcasting commercial television, focusing primarily on the Swedish market. The Complainant furthermore maintains online presence via the websites “www.tv4.se” and “www.ekonominyheterna.se”.
Respondent, a small media company based in Stockholm, Sweden, has acquired the contested domain name .
The Panel finds it established that the Complainant has not registered the word “Ekonominyheterna” as a trademark.
5. Parties’ Contentions A. Complainant The Complainant contends that:
- The disputed domain name is identical and confusingly similar to trademarks or service marks in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the domain name;
- The domain name has been registered and is being used in bad faith; and
- The domain name should be transferred to the Complainant
The Complainant asserts that it has right to the unregistered trademark “Ekonominyheterna” due to long, consistent and nationwide use in Sweden since January 10, 2000. The Complainant further argues that the trademark “Ekonominyheterna” has acquired distinctiveness for the Complainant’s products and services in regards to news and financial broadcasts. The Complainant asserts that the disputed domain name incorporates in its entirety, and is identical to the trademark “Ekonominyheterna,” in which the Complainant has rights.
The Complainant contends that the Respondent has no rights or legitimate interest in respect of the domain name and that the Respondent is not an owner of any trademark, service mark or equivocal with a name similar to the that of the domain name in question. Neither is the Respondent using the domain name in connection with a bone fide offering of goods or services. The Respondent is not commonly known by the disputed domain name.
The Complainant claims it obvious that the Respondent registered and used the disputed domain name in bad faith and that the evidence put forward by the Complainant clearly shows that the disputed domain name was registered with the Complainant’s trademark in mind and that the main purpose was to intentionally disrupt the business of the Complainant and to tarnish the trademark by redirecting the domain name to pornographic material. Furthermore, the Complainant asserts that the Respondent registered and used the disputed domain name with the intention of attracting financial gain since the Respondent requested 500 000 SEK in order to transfer the domain name to the Complainant.
B. Respondent The Respondent requests that the Panel deny the remedies requested by the Complainant and contends that:
- “Ekonominyheterna” is not a protected trademark. The Complainant has not submitted any evidence to prove that the word “Ekonominyheterna” has acquired distinctiveness for the Complainant’s products and services with respect to economic news within the target group. Nor does the evidence submitted show that a viewer or a reader would associate “Ekonominyheterna” as a trademark of the Complainant for products and services of the Complainant.
- The Respondent has a legitimate interest in the domain name . The Respondent is publishing economic news on its website and in view of the fact that “Ekonominyheterna” is not a protected trademark; it was and is entirely legitimate for the Respondent to register and own the disputed domain name. The Respondent has not, so far, used the disputed domain name for commercial purposes. The Respondent furthermore asserts that the registration of can also be seen as a legitimate defensive move by the Respondent to protect itself against the market dominant Bonnier Group.
- The domain name has not been registered and has not been used in bad faith. The registration by the Respondent of was not made with the intention of commercially exploiting any trademark of the Complainant or anyone else as alleged by the Complainant. The Respondent has not in any manner acted in bad faith. The Respondent has merely registered the domain name in dispute to enable future use in connection with a service relating to economic news and has thereafter defended itself against the illegitimate activities of the Complainant, who itself has acted in bad faith when attacking a small competitor.
6. Discussion and Findings According to paragraph 15(a) of the Rules, the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) 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
(2) that the Respondent has no legitimate interests in respects of the domain name; and
(3) that the domain name has been registered and is being used in bad faith.
The Complainant lacks a trademark registration for the mark “Ekonominyheterna”. Without a registration, there is no presumption of validity to Complainant’s claim of exclusive rights in the mark. However, the Complainant also asserts that it has acquired rights in the mark “Ekonominyheterna” through use.
According to Swedish law, an exclusive right in a trademark can be acquired without registration when the mark has been established in the market. A mark shall be considered as established in the market when it is within a significant portion of the circles of trade for which is intended, known as a symbol for the goods or services which are being made available under it.
The meaning of the mark in English is “the financial news” or “the economic news”. The mark is thus a combination of a descriptive element and a generic element and must in the Panelist’s opinion, be considered as non distinctive. A non distinctive mark can, however, acquire distinctiveness through use.
The Complainant has, in support of its assertion that it has acquired trademark rights in the mark “Ekonominyheterna,” submitted statistics, Annex D to the Complaint. It is important to note that the Policy contemplate only limited evidentiary presentations by the parties. As such, UDRP proceedings are not always the best venue for conclusively deciding whether a complainant has acquired trademark rights through use. If a Panel shall decide on such issues, the evidence furnished must be very strong and convincing.
The Panelist is of the opinion that it is not obvious from the evidence filed by the Complainant that the mark “Ekonominyheterna” has been established in the market or that the mark has acquired distinctiveness through use. For these reasons, the Panel concludes that Complainant has failed to establish rights in the mark “Ekonominyheterna” for the purpose of satisfying paragraph 4(a)(i) of the Policy. The Panelist therefore rejects the Complaint.
The Panel would like to point out that this finding does not in any way attempt to prejudge the reasoning or outcome of any eventual trademark dispute between the parties under the relevant national law. As noted above, a national court may be a more appropriate venue as more evidence would be presented and oral examination would take place.
7. Decision For all the foregoing reasons, the Complaint is denied.