In an earlier edition of the Bird & Bird IT & E-commerce law Bulletin we reported on the Swedish TLD opening up Swedish ccTLD Opens Up (December 2002).
The new set of rules for registration of domain names under “.se” which were implemented during April 2003 (“New Rules”), provide that a prior assessment of an application for registration will no longer be made. Therefore all applications for registration that meet with the technical requirements will be registered by NIC-SE (the registry and co-ordinator of the Swedish TLD). NIC-SE will apply a first-come-first-serve principle.
With the old set of rules the Swedish TLD was spared from cyber squatters and name napping since the old rules required underlying rights to the names. Since this is not the case with the New Rules and since the New Rules do not include a prior assessment to be made there is an obvious need for some sort of dispute resolution procedure. The New Rules therefore also include a dispute resolution procedure (“ADR”) in order to deal with apparent abuse, e.g. where someone has registered some other party’s registered trade mark, company or surname without a legitimate interest in the name and where a domain name has been registered with a view to selling or transferring it, preventing a third party from using its distinctive mark as a domain name or disrupting the business operations of a competitor.
The ADR does not only apply to domain names registered in accordance with the New Rules but may be applied retrospectively, i.e. on domain names that were registered under the old set of rules (even though it is highly unlikely that very many such disputes will take place since, as mentioned above, the old rules required underlying rights to the names).
The ADR is intended to be used in cases where it is clear that (i) the domain name is identical or confusingly similar to the Applicant’s trade mark (registered or not), company name or surname, (ii) the domain name holder has no right or legitimate interest in the designation that constitutes the domain name and (iii) the domain name has been registered and used in bad faith.
As at August 2003 eight disputes have been resolved through the ADR. The outcome of half of the disputes has been in favour of the party requesting the ADR, (the “Applicant”) e.g. (i) Google Technology Inc. who was awarded the right to <google.se>, (ii) SVT, the Swedish public service television, who was awarded the right to <svt24.se> which is the name for SVT´s digital channel with newscasts around the clock and (iii) SAS, the Scandinavian Airline company who was awarded the right to <snowflake.se> which is SAS´ name for its low fare travelling service.
The Snowflake decision, which inter alia deals with the requirement for “legitimate interest”, is one of the more interesting decisions under the ADR. The background is that in March 2003, SAS launched a low fare flight service under the name “Snowflake”. SAS also filed an application for registration of a combined figure- and wordmark. The mark inter alia included the words “Snowflake” and “SAS”.
During late April 2003 the domain name <snowflake.se> was registered by the defendant. The defendant also applied for a publishing licence since the defendant intended to publish a lifestyle magazine under the name Snowflake. The defendant received the publishing licence during mid-May 2003. The defendant also held other domain names such as <billigt-flyg.se> (Eng. “cheap flights”) and marketed and sold low fare flights.
The website, www.snowflake.se, was activated and included a text stating that a “lifestyle magazine, called SNOWFLAKE, will be launched but until then we are delighted to provide you with the below hyperlinks”. There was also a text stating that “if you search for SAS Snowflake you will find information here” and there was a hyperlink. If the website visitor clicked on the hyperlink a new window opened with the text “SAS Snowflake flies with low fares to” and a number of cities were mentioned. There was also a text stating “if you search for other destinations we can recommend www.billigt-flyg.se.” and there was a hyperlink to that website.
The adjudicator found that
(i) the domain name was confusingly similar with SAS trade mark application since the word “Snowflake” was the dominant word of the trade mark applied for and the combination with SAS did not reduce the distinctiveness of the dominant word “Snowflake”;
(ii) Snowflake, through SAS´ launch in March, had become established, at least within the relevant target group for the services, prior to the date on which the defendant received registration of the domain name. The adjudicator did not think that the fact that the defendant had received a publishing authorisation was relevant since the publishing authorisation was received after SAS had established its trade mark right through the trade mark application;
(iii) the defendant had no legitimate interest to the domain name in question;
(iv) the defendant had registered the domain name with the intention to promote its own business and disrupt the business operations of SAS.
It is clear from the Snowflake-case that an intention to publish a lifestyle magazine does not constitute a legitimate interest even though one has received a publishing licence. If a publishing licence would have been sufficient to establish legitimate interest then SAS would not have been successful because of the requirement in the New Rules require that the domain name holder should have no right or legitimate interest in the designation that constitutes the domain name.