svenskaspel.com

AB Svenska Spel v. Andrey Zacharov

Case No. D2003-0527

The Complainant is AB Svenska Spel, Stockholm, of Sweden, represented by Linklaters Advokatbyrå AB, Sweden.

The Respondent is Andrey Zacharov, Riga, of Latvia, represented by Advokatbolaget Facere HB, Sweden.

The disputed domain name <svenskaspel.com> is registered with Go Daddy Software.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 3, 2003. On July 3, 2003, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On July 7, 2003, Go Daddy Software 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.

The Center verified that 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 July 8, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response August 10, 2003. The Response was filed with the Center August 10, 2003.

In accordance with the Respondents election of having the dispute decided by a three-member Administrative Panel, the Center appointed P-E Petter Rindforth, Anders Janson and Stefan Abel as panelists in this matter on September 9, 2003. 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.

The Projected Decision Date was September 23, 2003. However, due to the desire of the Panelists to further consult regarding their decision in this case it was issued an extension of the due date for the decision to October 3, 2003.

The Complainant is the holder of the Swedish trademark registration No 357 397 "SVENSKA SPEL", registered on August 23, 2002, in respect of goods and services in classes 9, 16 and 41 for inter alia gaming machines (and lease thereof) and lottery and gaming activities (copy of the Certificate of Registration provided as Annex 3 of the Complaint).

Complainant’s trade name AB Svenska Spel was registered on December 27, 1996, for business consisting of lotteries, betting and business related thereto (Extracts from the Swedish company name Registry provided as Annex 4 a and b).

Complainant is also the holder of the domain name <svenskaspel.se>, registered on January 17, 1997 (Whois information provided as Annex 6 of the Complaint).

The disputed Domain Name was registered on August 9, 1998.

The Complainant states that rights to a registered trademark is granted as from application date under Swedish trademark law, and therefore claims protection for the mark SVENSKA SPEL (registered on August 23, 2002) from July 18, 2000 (the application date).

The Complainant also refers to "the so called crosswise protection for trade names and trademarks", granted by the Swedish Trademark Act Section 3 last paragraph and Section 14 (6) first paragraph, thereby concluding that the Complainant has acquired rights to SVENSKA SPEL also as a trademark for the services and products that are provided in the business for the registered trade name AB Svenska Spel since December 27, 1996. The Complainant contends that its registration of "svenskaspel.se" has established further rights to SVENSKA SPEL. References in support of the aforesaid have been made to Shoosmiths Solicitors v. Fun Ken Lin,WIPO Case No. D2002-1000, as well as to the Report of the Second WIPO Internet Domain Name Process, Chapter 7, Section 312.

It is further stated that AB Svenska Spel is the largest actor in the Swedish gaming industry, being well known and of good repute. Since 2001, the Complainant also runs casinos through its wholly owned subsidiary Casino Cosmopol AB.

The Complainant contends that the Domain Name is identical to the registered trademark "SVENSKA SPEL" and, in all relevant aspects, also to the registered tradename AB Svenska Spel. The Respondent, "an individual who seems to be residing in Latvia" is not commonly known by the domain name or own any trademark or conduct business under a trade name corresponding to the Domain Name, nor does the Respondent personally conduct any business consisting of gaming activities related to Sweden or Swedish games. The Respondent has therefore no legitimate interest in the Domain Name, which translated to English would be "Swedish games".

The Complainant has not given the Respondent any license or other permission to register or use the trademark/trade name "SVENSKA SPEL" as a domain name.

It is further stated that the Respondent uses the Domain Name to gain financially from selling advertising space to various companies that provide services or products related to gaming and that such use of the Domain Name likely mislead and attract consumers to the web site under the disputed Domain Name. The Complainant claims that the ownership of the Domain Name registration is merely a tactical measure with the purpose of protecting the advertising companies from the Complainant’s claim for inter alia trademark and trade name infringement.

The disputed Domain Name (registered on August 9, 1998) was originally owned by Mr. Niklas Bråthén, who today is the president of the Latvian company Baltic Gaming A/S (according to extract from the web site of Baltic Gaming, provided as Annex 9 a of the Complaint). The Domain Name was therefore registered after the Complainant established rights to SVENSKA SPEL. Mr. Bråthén earlier offered the Complainant the opportunity to buy the domain name for USD100 000 which indicates that the domain name primarily was registered "opportunistically" (copy of a letter from Mr. Bråthén’s representative provided as Annex 10).

On October 6, 2002, i.e. after the Complainant established rights to "SVENSKA SPEL" and only five weeks after the trademark "SVENSKA SPEL" was registered, the domain name was transferred to the Respondent. The contact details for the Respondent are the same as for Baltic Gaming A/S, which shows that the Respondent is clearly connected to this company and thereby also to the previous owner of the domain name. Consequently, the Respondent ought to have actual knowledge of the Complainant’s rights to "SVENSKA SPEL".

Baltic Gaming A/S and the Swedish company Svensk Spelservice HB have informed the Complainant that the Respondent uses the web site under the domain name to sell advertising space for the Companies (Annex 13 a. of the Complaint). According to information from Baltic Gaming A/S’s web site "www.balticgaming.lv" and the web site "www.svenskaspel.com", it seems that Baltic Gaming A/S is a privately owned Latvian company that runs a casino in Riga and provides Internet games and games on gaming machines and that Svensk Spelservice HB is conducting business related to gaming machines. The Companies are obviously conducting business in the same field as the Complainant. The information on the web site "www.svenskaspel.com" indicates that the site is in fact a common Swedish marketplace for these companies. For example, the text on the homepage (i.e. the first page of web site) states that anyone who has questions regarding "our businesses" may e-mail "[email protected]. This information is posted at the bottom of the page, thereby indicating that Svensk Spelservice HB is also included in the business. Further, besides the logo of Baltic Gaming A/S (and its products) and the advertisement for Svensk Spelservice HB, the website contains texts from "Skåningen" and "Norrlänningen" (Annex 14 a – h). The texts contain discreditable information of the Complainant and praises the Tower Casino run by Baltic Gaming A/S. In the Complainant’s opinion the texts are only disguised as "opinions" and should naturally be regarded as advertisement for Baltic Gaming A/S.

The web site is completely in Swedish and must therefore be considered to be directed especially towards the Swedish market and thereby infringing the Complainant’s rights to "SVENSKA SPEL" in Sweden. Mr. Bråthén is connected not only to Baltic Gaming A/S but also to Svensk Spelservice HB (see page 6 in WIPO Case No. D2001-1388), a fact supported by the Respondent (Annex 13 b), and by the information on Baltic Gaming A/S’s web site stating that it has "related business in Sweden" (Annex 9 b). There is clearly a strong link between the companies using the domain name and the previous and current owner of the domain name.

Considering the relationship between the former and present owner of the Domain Name and the companies using the domain name, the Complainant strongly questions that the Respondent personally is in practice the holder of the Domain Name in the sense that he is in control of the same and the information posted on the web site.

In the Complainant’s opinion the companies have separated the ownership and use of the Domain Name to be able to use it to attract and mislead consumers on the Swedish market and at the same time, to the greatest possible extent, by the transfer to a Latvian individual, try to avoid the Complainant’s claims of trademark and trade name infringement and of unfair marketing practice under Swedish law. This opinion is supported by information on the web site posted by "Kolingen", which states that the web site belongs to a Swedish privately owned company group that has been conducting gaming activities since the 1980’s, through Svensk Spelservice HB (Annex 12 a and b). The story by "Kolingen" - provided by the companies and/or the Respondant after the transfer of the domain name from Mr. Bråthén to the Respondent - also contains misleading information on the price that the former owner of the Domain Name was willing to sell the name for to the Complainant. Thus, the information further proves use in bad faith.

It is at least evident that the Respondent uses the domain name to gain financially from the Companies’ possibility to attract consumers by use of the domain name and that use of the domain name in bad faith is at hand.

The Complainant requests the Administrative Panel to issue a decision that the contested domain name be transferred to the Complainant, and that the jurisdiction of the Swedish courts shall be the only mutual jurisdiction for the parties.

The Respondent, referring to AB Svenska Spel v. Niklas Bråthén, WIPO Case No. D2001-1388, states that this proceeding is Res Judicata, as "the legal grounds now stated are in practical the same stated before. In accordance to Swedish law, it is not possible to have new proceedings when its already tried once. The change of ownership to the domain name does not affect the situation neither does the registration of the trademark Svenska Spel".

The Respondent informs that Mr. Bråthén (the original holder of the disputed Domain Name) has been operating games and game systems since 1985. In 1994, he started and registered the Swedish company Svensk Spelservice HB. This was before the company Svenska Spel AB even existed. In 1991, Mr. Bråthén started his business in Latvia and in the beginning he and the group of companies were operating casinos, slot machines and trading of gaming equipment. The Domain Name is claimed to be a description of the services provided by Svensk Spelservice HB and the web site, such as playing Swedish games on the Internet.

Today Mr. Bråthén is engaged in the same group of companies including Svensk Spelservice HB and Baltic Gaming A/S. This group of companies includes partnership, ownership and shared interest with a lot of individual owners. The Respondent is Senior Partner in this group. The Respondent states that this group of companies are well known in Balticum as a Swedish group of companies with a very good and solid reputation.

Mr. Bråthén is permanently living in Riga, Latvia, since 1993. He visits Sweden sometimes, to act on behalf of Svensk Spelservice HB. Due to the Swedish rules of taxes, he is forced to have only limited connection to Sweden at all. After the decision in WIPO Case No. D2001-1388 he thought that this matter was settled once and for all. Svenska Spel AB recently wrote to him again and stated that they were considering initiating legal proceedings in Sweden. Mr. Bråthén did not want to be part of this proceeding in Sweden and therefore the management of the Latvian and Swedish group of companies decided to let the Respondent act as representative in all matters concerning the domain name <svenskaspel.com>.

The Respondent further states that the name and trademark "Svenska Spel" translated to English would be "Swedish Games", which is almost identical to the name "Swedish Game Service" - the correct translation of the name for the business operation of Mr. Bråthén, the Respondent and the group of companies. This also explains why Mr. Bråthén initially chose the name <svenskaspel.com> for his and his partners website.

The mark and the Domain Name is a combination of a descriptive element and a generic element and must in the Respondents opinion be considered as non-distinctive.

Svenska Spel AB and the owners of the Domain Name operate in different markets. The games provided on the website are not even provided in Sweden. The Respondent is operating in an international market, whereas AB Svenska Spel AB is not, according to its articles of association, even allowed to operate outside the geographical market of Sweden. In practice this means that AB Svenska Spel and Svensk Spelservice HB does not compete for the same potential group of customers.

The web site "www.svenskaspel.com" does not provide the same services as <svenskaspel.se> and does not aim for the same purpose. <svenskaspel.se> is for the most part an information site about the services provided by AB Svenska Spel, with only a limited amount of gaming services accessible on the web site. The games that the partners of the Swedish/Latvian group provides are different. "www.svenskaspel.com" is a website which provides gaming services exclusively operated on the Internet under another legal framework and with another customer base. This kind of gaming is not even legal on the web site "svenskaspel.se" and Svenska Spel AB cannot use <svenskaspel.com> due to its own articles of association.

Mr. Bråthén has been operating under the name Svensk Spelservice since 1994, and he still does. He has thus obtained a legitimate purpose in using the name <svenskaspel.com>, as his trade name is similar to the name of the web site. The name of the web site is also referring to the activity that is and will be provided by the site, that is, Swedish games not available in Sweden. Mr. Bråthén and Svensk Spelservice are familiar as Swedish in all Balticum and this gives them "a kind of status interesting for customers prepared to bet money on Internet gaming, sometimes a lot of money".

Respondent and his partners are operating on an international market closed for Svenska Spel AB by its articles of association. In this international market, Balticum, Russia and parts of Europe, the Respondent is commonly known by the names Svensk Spelservice, svenskaspel.com and Baltic Gaming. The Respondent has not yet acquired any trademark rights in ways other than by use but trademark applications have been filed in Latvia and Lithuania.

The Respondent states that the Domain Name was registered before the Complainant had any kind of rights to the non-distinctive mark SVENSKA SPEL.

When the Complainant first contacted Mr. Bråthén about the Domain Name he offered the Complainant the opportunity to buy the same for its market value, as "Mr. Bråthén understood that Svenska Spel should not give up easily and he was not interested in long and expensive proceedings". At this time the web site was closed only because Mr. Bråthén and the group of companies had a lot of others business to deal with. After the proceedings where WIPO denied Svenska Spels requested remedies, the web site is open and it is no longer for sale. As now stated, the domain name was not registered primarily for the purpose of selling. The Respondent and the Complainant are not competitors and the registration of the domain name was not made to disrupt the Complainants business.

Some customers have used the guest books at <svenskaspel.com> to describe their point of view to the monopoly of AB Svenska Spel. The Respondent claims that his material is only picked up from the guest book and of course the Respondent is not responsible for this material.

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

The disputed Domain Name has already been the issue of a UDRP proceeding, namely WIPO Case No. D2001-1388. Both the Complainant and the Respondent have referred to the said case in their argumentation and asked this Panel to consider the previous case as parts of the evidence and background for the decision in the present dispute. Further, the Respondent states that this proceeding is Res Judicata.

A "Re-filed Complaint" within the scope of the Policy, means basically situations where the same Complainant files a Complaint against the same Respondent and regarding the same domain name as in a previously decided Complaint. As discussed in several previous cases (i.e. Grove Broadcasting Co. Ltd. V. Telesystems Communications Limited,WIPO Case No. D2000-0703; Creo Products Inc. V. Website In Development, WIPO Case No. D2000-1490) re-filing may only be allowed in exceptional circumstances.

As stated by the Panel in WIPO Case No. D2000-1490 "in determining the circumstances in which Refiled Complaints should be entertained under the Uniform Policy, a distinction should be drawn between (i) Refiled Complaints that concern the act which formed the basis of the original complaint, and (ii) Refiled Complaints that concern acts which have occurred subsequent to the decision on the original complaint." For the first type, acceptance of Re-filed Complaints should be exceptional. "In relation to the second type… a different approach is warranted. With a Refiled Complaint of this type, the concept of res judicata does not arise. Because the subsequent complaint concerns acts which occurred after the original decision, it is not an action upon which an adjudication has already taken place; the subsequent complaint is truly a new action under the Uniform Policy. It follows that, subject to one exception, the merits of a Refiled Complaint of this type should be determined in the same manner as any new complaint under the Uniform Policy. The exception is that the acts on which the Refiled Complaint is based should not be, in substance, the same as the acts on which the previous complaint was based (even if those previous acts would likely be included as part of the facts and arguments asserted in the new complaint)."

In this present case, the Complainant and the Domain Name are the same as in WIPO Case No. D2001-1388. The Domain Name has, since then, been transferred to a new holder within the same group of companies/owners as in the previous case. Further, the Domain Name is now in use, and the Complainant now has a registered trademark. This Panel therefore concludes that the present dispute concerns a number of acts that have occurred subsequent to the decision of the original Complaint and the present dispute shall be seen as a new action under the Policy.

In addition to that, the Panel notes that the preceding Complaint was filed against a different Respondent. Therefore, the Complaint cannot be regarded as a re-filing and the complaint is admissible.

However, as both Parties have referred to WIPO Case No. D2001-1388 this Panel will consider the facts and circumstances described in that case in deciding the present dispute in the extent this Panel finds appropriate.

Paragraph 3(b)(xiii) of the Rules states that the Complainant will submit, with respect to any challenges to a decision in the administrative proceeding canceling or transferring the domain name, to the jurisdiction of the courts in at least one specified Mutual Jurisdiction.

Mutual Jurisdiction is further specified as: a court jurisdiction at the location of either (a) the principal office of the Registrar (provided the domain-name holder has submitted in its Registration Agreement to that jurisdiction for court adjudication of disputes concerning or arising from the use of the domain name) or (b) the domain-name holder's address as shown for the registration of the domain name in Registrar's Whois database at the time the complaint is submitted to the Provider.

The Complainant has stated the following: "In accordance with Paragraph 3(b)(xiii) of the Rules, the Complainant will submit…to the jurisdiction of the courts at the location of the domain name holder’s address, as shown for the registration of the domain name in the concerned registrar’s WHOIS database at the time of the submission of the Complaint to the Center. However, due to the structure of the ownership and use of the domain name, the Complainant is of the opinion that the strong link to Sweden entails that the jurisdiction of the Swedish courts is more expedient than any other jurisdiction and requests the Administrative Panel to decide that, in this particular case, thejurisdiction of the Swedish courts shall be the only mutual jurisdiction for the parties."

This Panel finds in this case that it cannot decide on any other Mutual Jurisdiction than defined in the Rules. Accordingly, and as defined in the Complaint, the Mutual Jurisdiction in this case is identified as the jurisdiction of the courts at the location of the domain name holder’s address, as shown for the registration of the domain name in Registrar's Whois database at the time the complaint is submitted to the Provider.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

The relevant part of the Disputed Domain name is "svenskaspel", which is identical to the Complainant’s trademark No 357 397 SVENSKA SPEL, registered in Sweden August 23, 2002 (application filed July 18, 2000).

This Panel notices that the copy of the Certificate of registration (provide as Annex 3 of the Complaint) is not translated into the language of the proceeding. The existence of a pending application for SVENSKA SPEL (in the name of the Complainant) is however established in WIPO Case No. D2001-1388, and in the present case the Respondent refers to "the trademark ‘Svenska Spel’" and has further not opposed Complainant’s statement that the trademark SVENSKA SPEL is now registered in Sweden. Accordingly, the Panel has no reason to question that Complainant is the owner of the Swedish trademark registration SVENSKA SPEL.

The Domain Name was registered on August 9, 1998. However, as stated in Digital Vision, Ltd v. Advanced Chemill Systems,WIPO Case No. D2001-0827 and other cases, Paragraph 4(a) (i) of the Policy does not require that the trademark be registered prior to the domain name. The fact that the disputed Domain Name predates Complainant’s trademark registration may only be relevant to the assessment of bad faith pursuant to Paragraph 4(a) (iii), which is considered below.

The Panel therefore concludes that the Complainant has satisfied the requirements of Paragraph 4(a) (i) of the Policy.

The Respondent states that "Svenska Spel" translated to English would be "Swedish Games", "which is almost identical to the name Swedish Game Service, which would be the correct translation of the name under which Mr. Bråthén, the Respondent and the group of companies organize its operating", namely, Svensk Spelservice. The Respondent further states that he and his related group of companies are commonly known as "Svensk Spelservice, svenskaspel.com and Baltic Gaming", although with no registered trademark rights.

The Complainant asserts that the Respondent is not commonly known by the Domain Name, that the Respondent does not personally conduct any business consisting of gaming activities related to Sweden or Swedish games and that no license or other permission is granted to the Respondent in relation to SVENSKA SPEL. The Respondent has therefore no legitimate interest in the Domain Name, which translated to English would be "Swedish games".

This Panel is not convinced by the Respondents arguments regarding the rights or legitimate interests to <svenskaspel.com>.

The Respondents trade name is Baltic Gaming A/S, and the related company Svensk Spelservice HB is not identical to SVENSKA SPEL or AB Svenska Spel, although there are some conceptual similarities. The Respondent has not filed any evidence to prove his claim to be "commonly known" by the Domain Name.

Accordingly, this Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name.

To fulfill the third requirement, the Complainant must prove that the domain name has been registered and is being used in bad faith.

The Respondent is clearly in the same or at least closely related business as the Complainant. At the web site of "www.svenskaspel.com", the Respondent compares the services of the Complainant to the ones provided by Respondent and his related group of companies. The business activities of the Respondent is both directed to and localized in "Scandinavia, Northern Europe and the Baltic States" (Annex 14B of the Complaint, prints from the web site of "www.svenskaspel.com") and all relevant information on the web site of "www.svenskaspel.com" is in Swedish.

The Respondent states that Mr. Bråthén, the original holder of the Domain Name, "has been operating games and game systems since 1985", that he started his business in Latvia in 1991, and registered Svensk Spelservice HB in 1994. It is further informed by the Respondent that the reason for Mr. Bråthén to transfer the Domain Name to the current holder was to avoid legal proceedings regarding the Domain Name in Sweden.

AB Svenska Spel was registered in December 1996 and the Domain Name in August 1998. Although Mr. Bråthén was by then living in Latvia, he had interests in the Swedish gaming market and presumably good knowledge on the local Swedish competition. This Panel finds it likely that Mr. Bråthén registered the Domain Name with the Complainant specifically in mind, with the intention to sell it to the Complainant for a large sum of money and/or with a view to blocking the Complainant from registering it itself. As informed by the Respondent in WIPO Case No. D2002-1388, "AB Svenska Spel was established…when the Swedish Parliament decided to merge the two state lotteries because of the growing competition on the Swedish lottery market". Mr. Bråthén must have been aware of the fact that the Complainant was a serious competitor to him, and that SVENSKA SPEL could develop to be a well-known trademark in the same field of business. The fact that the trademark SVENSKA SPEL was not registered until August 2002, can therefore not be taken as an indication of Respondent’s good faith registration of the Domain Name.

This Panel concludes that the Domain Name was registered primarily for the purpose of disrupting the business of AB Svenska Spel, a competitor to the Respondent as well as to the previous holder.

Mr. Bråthén offered the Complainant to buy the Domain Name for USD 100 000, at the time when the Domain Name was not yet in use for any web site (according to a letter from Mr. Bråthén’s representatives, dated April 17, 2001, – Annex 10 of the Complaint). Although the Panel cannot take into consideration Annex 10 as Complainant has failed to provide a translation of that letter into the language of the proceeding, the Panel finds the sales offer to be sufficiently proven, as Respondent does not oppose to that allegation but admits that Mr. Bråthén has offered to sell the domain "for its market value".

The Respondent is, according to the Response, a Senior Partner of the group of companies including Svensk Spelservice and Baltic Gaming. Mr. Bråthén is the president of Baltic Gaming and the founder of Svensk Spelservice. Baltic Gaming operates casinos under the trademark TOWER CASINOS (Annex 9B of the complaint, printout from the web site of "balticgaming.lv"). The Response refers to Mr. Zacharov only once, whereas the main part of the response relates to Mr. Bråthén and the group of companies in which he is obviously taking a very active part. It is therefore obvious that the previous holder of the Disputed Domain name is, in practice, still in control of the name and the information provided on the web site of "www.svenskaspel.com".

The web site of "www.svenskaspel.com" uses the words SVENSKA SPEL both to identify the web site, the companies Baltic Gaming and Svensk Spelservice, but also referring to AB Svenska Spel, thereby creating a confusion among the Internet users. Further, it is this Panel’s opinion that the customer opinions from the alleged guest book are in fact (slightly disguised) advertisements for the Respondent’s business activities.

Thus, this Panel concludes that the Domain Name is both registered and used in bad faith.

In light of the foregoing, the Panel concludes (a) that the domain name <svenskaspel.com> is identical to the Complainant’s registered trademark SVENSKA SPEL, (b) that the Respondent has no rights or legitimate interests in respect of the Domain Name and (c) that the Respondent has registered and used the Domain Name in bad faith.

Therefore, pursuant to paragraphs 4 of the Policy and 15 of the Rules, the Panel orders that the domain name <svenskaspel.com> be transferred to the Complainant AB Svenska Spel.