2nd Feb 2012
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rusta AB v. Daruna, LLC
Case No. D2011-1887
1. The Parties
The Complainant is Rusta AB of Stockholm, Sweden, represented by Advokatfirman Konsultbyrån för Marknadsrätt Malmö AB, Sweden.
The Respondent is Daruna, LLC of San Jose, Costa Rica, represented by ESQwire.com Law Firm, United States of America.
2. The Domain Name and Registrar
The disputed domain name <rusta.com> (“the Disputed Domain Name”) is registered with Signature Domains, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2011. On November 1, 2011, the Center transmitted by email to Signature Domains, LLC a request for registrar verification in connection with the Disputed Domain Name. On the same date, Signature Domains, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced November 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 28, 2011. On November 23, 2011 the proceedings were suspended until December 23, 2011. The Response was filed with the Center on December 23, 2011.
The Center appointed Charné Le Roux, Petter Rindforth and The Hon Neil Brown QC as panelists in this matter on January 25, 2012. The Panel finds that it was properly constituted. Each member of 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 Rusta AB, a Swedish private Iimited liability company. The Complainant is a retailer in Sweden with 57 warehouses throughout the country. It also has offices in China and Thailand. The Complainant is involved in the retail of a broad selection of goods, ranging from home decoration and leisure goods to decorations, electronics, food and the like. The Complainant was incorporated in 1986 under the name Fasetten Handels AB and changed its name to Rusta AB in 2004. It has generated substantial sales under the RUSTA name and actively promotes and advertises its RUSTA trade mark on television and radio and also in the printed media. The trade mark RUSTA is registered through registrations in Sweden dated 1992 and 2002 and also an International registration dated 2005.
The Disputed Domain Name was registered on February 5, 2001. The Disputed Domain Name is currently owned by the Respondent on record and it is connected to a website which features sponsored links to the websites of third parties offering a broad range of goods and services.
The Respondent owns a number of domain names in various languages for descriptive terms. The word “rusta” in the Disputed Domain Name means “to equip” or “to refurbish” in Swedish.
5. Parties’ Contentions
The Complainant contends that it is the owner of the trade mark RUSTA through registration of this mark, the earliest dated 1992 for the country Sweden. The assertion is also made by the Complainant that it has used its RUSTA trade mark for the goods for which the trade mark is registered, which include chemical products, technical products, foods, textiles, toys, sport devices etc.
The Complainant contends that it owns 57 warehouses in Sweden, with approximately 900 employees and that it has been active in Asia by holding offices in China and Thailand since 1994. The Complainant’s annual report of 2010 was provided to illustrate its extensive trading activities. The Complainant also provided evidence to demonstrate its promotion and advertising of its goods under the RUSTA trade mark, both in print and on television. The assertion is made that about 50 000 customers visit its stores every day and that it is a well known retailer with a good reputation amongst its Swedish customers.
The Complainant contends that the Disputed Domain Name is identical to its RUSTA trade mark.
The Complainant also contends that the Respondent lacks rights or legitimate interests in the Disputed Domain Name for the following reasons:
a) The Respondent is not making use of the website attached to the Disputed Domain Name for any bona fide sales of goods or services. The Complainant supports this contention by indicating that the Disputed Domain Name is only used as a way to make commercial gain from customers searching for the Complainant’s website, particularly because the website is used to display the sponsored links of third parties;
b) The Respondent has never been commonly known by the Disputed Domain Name;
c) There is no evidence to show that the Respondent is making legitimate, non commercial, or fair use of the Disputed Domain Name, but rather that its use is intended for commercial gain by misleading consumers in search of the Complainant’s website. The Complainant points out that while the word “rusta” in Swedish means “to equip” or “to refurbish”, it has no dictionary meaning in English or Spanish and that the Respondent has not attempted to give the word any secondary meaning; and
d) The Disputed Domain Name was registered subsequently to the Complainant’s Swedish registration in 1992.
The Complainant furthermore contends that the Respondent has registered and is using the Disputed Domain Name in bad faith because the Respondent has no interest in the Disputed Domain Name apart from generating commercial gain through the likelihood of confusion with the Complainant’s mark. The Complainant points out that one of the sponsored links that appears on the website attached to the Disputed Domain Name displays a combination of the Complainant’s trade mark and a Swedish town where the Complainant has a big warehouse. The Complainant also argues out that the Respondent has a pattern of conduct to prevent trade mark holders from using their trade marks because it controls approximately 4400 domain names which are related to registered trade marks owned by other parties. The Complainant gave examples such as: <episcope.com>, <elen.com> and <befair.com>.
The Complainant contends that the Respondent must have known about the Complainant when it registered the Disputed Domain Name, because the Complainant is a large trading company which the Respondent would have found if a web search had been conducted prior to the registration of the Disputed Domain Name, particularly through the Complainant’s website at “www.rusta.se”. The Complainant also points out that the Disputed Domain Name was owned by it until 2001, and that it was taken over by the Respondent when the Complainant inadvertently allowed its registration to lapse.
The Complainant requests that the Disputed Domain Name be transferred to it.
The Respondent denies that the Disputed Domain Name should be transferred to the Complainant. It indicates that the Complainant waited almost eleven years to initiate a dispute for a domain name that it allowed to lapse. The Respondent contends that it registered the Disputed Domain Name because it is a common Swedish word which means “to equip” or “to refurbish” and, in addition, that the word “rusta” refers to a geographic region in Norway. It denies that the Complainant has exclusive rights in the word RUSTA for these reasons. The Respondent also provided evidence of the commercial use of the word “rusta” by third parties.
In connection with the Respondent’s rights or legitimate interests, it submits that it has never heard of the Complainant, whose presence is not well known in the United States of America and Central America where the Respondent operates. It contends that it registered the word “rusta” because it was common and that it has been registering common domain names for investment and development since 1999. The Respondent provided examples of such common domain names both in foreign languages including French, Spanish, Chinese and also for English dictionary words such as “deed”, “cardtables”, “befair” and the like.
The Respondent points out that its pay-per-click (“PPC”) advertising on the website attached to the Disputed Domain Name allows it to generate an income while it is developing its domain names and that the PPC links on the website in question relate to general interest topics and services, are auto-generated by Google and that they are constantly changing based on Google’s key word advertising inventory and user search behavior.
The Respondent takes the view that the Complaint should be the Doctrine of Laches because the Complainant waited almost eleven years to initiate the proceeding.
The Respondent finally also points out, in defence to the claim that it acted in bad faith, that the expiration of a domain name raises the presumption that any trade mark rights in such a domain name have been abandoned and signals to prospective registrants that it is available and can be registered in good faith.
The Respondent requests that the Complaint be dismissed.
6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove:
i) that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which it has rights;
ii) that the Respondent has no rights or legitimate interests in respect of 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 Panel has not been persuaded that the Complainant has demonstrated registered rights in the trade mark RUSTA. Evidence that it attached in support of its registered rights in RUSTA shows the following:
1. Swedish registration no. 236138 filed on July 9, 1987 and registered on June 5, 1992. The name of the proprietor is indicated as being Bruksbo i Uppsala Kommanditbolag;
2. Swedish registration no. 352519 filed on January 18, 2001 and registered on February 8, 2002. The name of the proprietor is indicated as being Bruksbo i Uppsala Kommanditbolag; and
3. International registration no. 892364 registered on November 23, 2005. The proprietor for this registration is indicated as being Bruksbo i Uppsala Kommanditbolag.
The Complainant also provided evidence of international registrations for marks such as FRESHGO, PLANTMAN and ATLAS. All of these registrations show the proprietor to be Rusta AB. There is no explanation for the discrepancy between the entities Rusta AB (in respect of the FRESHGO et al registrations) and Bruksbo i Uppsala Kommanditbolag. In fact, there is no reference at all in the Complainant’s submissions to an entity such as Bruksbo i Uppsala Kommanditbolag. On the evidence submitted, a finding that registered rights in the RUSTA mark vest in Rusta AB can not be made.
The Panel is nevertheless prepared to make a finding that the Complainant has demonstrated common law rights in the trade mark RUSTA by virtue of its use in Sweden, China and Thailand (which was supported by evidence and was not disputed by the Respondent), but note that these rights are weak because the word “rusta” is both a dictionary word, defined in Swedish dictionaries as “to equip” or “to refurbish” and also refers to a geographic location in Norway. The Complainant’s weak rights in and the issue of distinctiveness of the RUSTA mark, in this case plays a more important role in deciding whether the Respondent has a right or legitimate interest in the Disputed Domain Name.
The Panel finds that the Disputed Domain Name is identical to the Complainant’s RUSTA trade mark.
B. Rights or Legitimate Interests
There are a number of factors generally taken into account in deciding whether a respondent has made out a case of rights or legitimate interests in a domain name that is descriptive, or consists of a dictionary word. One is the extent of the rights that a complainant has acquired in its trade mark e.g. whether it is famous or well known, another is the manner in which the respondent is using the domain name, and a further is whether the respondent has registered other domain names containing dictionary words. See WIPO Overview of WIPO Panel Views on selected UDRP Questions, Second Edition, paragraph 2.2 (“WIPO Overview 2.0”). Paragraph 4(c) of the Policy also does not provide an exhaustive list of circumstances which may demonstrate a respondent’s rights or legitimate interests in a domain name. In this instance, the Panel takes cognizance of the following factors in finding that the Respondent has indeed demonstrated rights or legitimate interests in the Disputed Domain Name:
a) The Respondent registered the Disputed Domain Name as long ago as 2001;
b) The Disputed Domain Name has both a dictionary meaning and refers to a geographic location;
c) “Rusta” appears to be a relatively common word used for descriptive and commercial purposes, as demonstrated by the results delivered by any search engine for this word. It is not associated exclusively with any single party;
d) None of the sponsored links which appear on the website attached to the Disputed Domain Name are in direct competition with the products offered by the Complainant, which would be an important consideration in determining whether the Respondent’s conduct may be considered fair. In this respect, the Panel accepts the Respondent’s explanation that the combination of the word “rusta” with the name of a location for one of the Complainant’s warehouses appeared on the website under discussion as an automated link based on user search behaviour;
e) The Respondent has not made any attempt to sell the Disputed Domain Name to the Complainant over the past eleven years in which it held ownership of it, which may be consistent with the conduct of a domain name owner who has a legitimate interest in its domain name; and
f) The Respondent has registered other descriptive domain names, not only in Swedish, but also in French, Spanish, Chinese, Japanese, Italian and English languages.
g) The Respondent could not be expected to have known of the Complainant when it registered the Disputed Domain Name. At the time, only the one Swedish registration for RUSTA was in place (and did not have the Complainant recorded as its owner) and, on investigation by the Panel, it found that the Complainant’s own domain name <rusta.se> was only registered in 2005, about four years after the registration of the Disputed Domain Name by the Respondent.
Altogether, the Panel therefore finds for the above reasons that the Respondent has indeed demonstrated sufficient legitimate interests in the Disputed Domain Name, and accordingly the Complainant has not succeeded in these Policy proceedings in proving its case.
C. Registered and Used in Bad Faith
The Complainant’s case should meet all three requirements and if it does not meet the second requirement in connection with the Respondent’s rights or legitimate interests, it is not necessary for this Panel to consider the issue of the registration and use of the Disputed Domain Name in bad faith any further. However, with regard to the Doctrine of Laches advanced by the Respondent as a defence to the Complainant’s case, the Panel expresses the view that laches has not been accepted as a defence, per se, in UDRP proceedings, but a complainant’s conduct in standing by may be a factor when consideration is given to a respondent’s bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders unanimously that the Complaint be denied.
Charné Le Roux
The Hon Neil Brown QC
Dated: February 2, 2012