WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sjóvá-Almennar tryggingar hf. v. Peacecall Ltd.
Case No. D2004-0861
1. The Parties
The Complainant is Sjóvá-Almennar tryggingar hf., of Reykjavík, Iceland, represented by Lex Law Offices, Iceland.
The Respondent is Peacecall Ltd., of London, United Kingdom of Great Britain and Northern Ireland; C/O represented by Mr. Ástþór Magnússon, Reykjavík, Iceland.
2. The Domain Name and Registrar
The disputed domain name <sjova.info> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2004. On October 20, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. ‘A Network Solutions’ WHOIS database query response confirms 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 October 27, 2004. 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 October 29, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was November 18, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2004.
The Center appointed Amund Grimstad as the sole panelist in this matter on December 9, 2004. 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 Respondent has failed to respond to the Complaint. Therefore all the factual representations alleged by the Complainant may be accepted as undisputed. Factual allegations from the Complaint, to the extent needed, are reproduced below.
The Complainant - Sjóvá-Almennar tryggingar hf – is a well-known insurance provider in Iceland. The company is commonly referred to as Sjóvá.
Sjóvá-Almennar tryggingar hf holds the Icelandic trademark registration no 500/1999 SJÓVÁ in for insurance services, class 36, and information services provided on the Internet, class 42.
The Complainant has registered the Icelandic domain name <sjova.is>, which is used as the company’s website. The Complainant also holds the domain names <sjova.com>, <sjova.org>, and <sjova.biz>.
The Respondent has registered and uses the disputed domain name <sjova.info>. ‘A Network Solutions’ WHOIS database query response indicates that Peacecall Ltd., is the registrant of the domain name <sjova.info>. This registration was created on September 15, 2004, and was last updated on October 19, 2004.
The representative for the Respondent (Ástþór Magnússon) has filed a lawsuit against the Complainant concerning a claim for contractual damages from an insurance contract.
The Respondent has used the disputed domain name to provide information concerning the Complainant that is predominantly of a negative character. The advertising material and trademark of the Complainant are and have been used in connection with statements of a negative nature regarding the Complainant.
The website has also been used to encourage visitors to register and give financial support for lawsuits against the Complainant.
5. Parties’ Contentions
A. Complainant
The Complainant states that the domain name <sjova.info> is identical to the name commonly used by the public on the Complainant and is also identical to the registered trademark of the Complainant. The Complainant therefore alleges that the requirements of paragraph 4(a)(i) of the Policy is fulfilled
The Complainant further states that the Respondent has no rights or legitimate interests in respect of the domain name. Therefore the requirements of paragraph 4(a)(ii) are fulfilled, and none of the circumstances for legitimate use, listed in paragraph 4(c) of the Policy applies.
The Complainant states that the Respondent has registered and is using the disputed domain name in bad faith, contending that the Respondent is using both the copyright - protected works of the Complainant and his registered trademark. By using the copyright protected work and the trademark, the Respondent is trying to achieve financial gain to fund an unfounded lawsuit against the Complainant. Based on this the Complainant states that the requirements of paragraph 4(a)(iii) of the Policy are fulfilled.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent’s domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The first question is whether the Respondent’s domain name is identical or confusingly similar the Complainant’s registered trademark.
The Complainant holds the Icelandic registration of trademark no. 500/1999 SJÓVÁ in for insurance services, class 36, and information services provided on the Internet, class 42.
The Domain Name is <sjova.info>.
The differences between the trademark and the domain name are only relating to the use of Icelandic letters. Ordinary letters are probably used for technical reasons because Icelandic letters may not be used in a domain name.
In view of the above, the Administrative Panel finds that the Domain Name is identical or at least confusingly similar to the trademark - SJÓVÁ – of the Complainant.
B. Rights or Legitimate Interests
The second question is whether the Respondent has rights or legitimate interests in respect of the domain name, paragraph of the Policy. 4(a)(ii).
The Policy enumerates several ways in which a Respondent may demonstrate rights or legitimate interests:
“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 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 does not fulfil any of the enumerated ways of demonstrating rights or legitimate interests.
Several panel decisions regards the question of use of trademarks in domain names for criticism. The decisions clearly indicate that the right of criticism is protected by the principle of freedom of speech. However, the right does not extend to the use of a domain name consisting solely of a trademark corresponding to trademarks owned by the object of the criticism.
When using a domain name corresponding to the trademark of another, the owner of the domain name identifies himself as the owner of the trademark. Such use is likely to divert Internet traffic from the site of the owner of the trademark to the web site of the domain name using the trademark.
The website which the visitor is lead to appears to be used for tarnishing the Complainant. Identifying himself as the Complainant and tarnishing the Complainant is not fair use. The panel for example refers to Monty and Pat Roberts, Inc v. J. Bartell, WIPO Case No. D2000-0300.
The panel will note that the Respondent is free to express its views in a forum established without exploitation of the mark holder’s rights.
The Respondent has no rights or legitimate interests in respect of the domain name.
C. Registered and Used in Bad Faith
The Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of bad faith, paragraph 4(b) of the Policy. These include that a Respondent has “by using the domain name, … intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location of a product or service on your web site or location”, paragraph. 4(b)(iv) of the Policy.
In this case, the Respondent is using the domain name <sjova.info> to attract Internet users to its website by using the Complainant’s mark. The use of the trademark of the Complainant creates a likelihood of confusion with the Complainant’s as to the source, sponsorship, affiliation, or endorsement of the Respondents web site or location.
The Respondent is encouraging visitors to the website to support lawsuits against the Complainant by donating money. The request for donation implies that the website is used for commercial gain.
The Respondent is not known to have used the trademark for any other legitimate purpose.
Consequently the Respondent is using the website in bad faith.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <sjova.org>, be transferred to the Complainant.
Amund Grimstad
Sole Panelist
Dated: December 23, 2004