WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Danish Dairy Board v. Syrmobi , Nedal Almalouf
Case No. D2007-1434
1. The Parties
The Complainant is The Danish Dairy Board, of Aarhus, Denmark, represented by Lett Law Firm, Denmark.
The Respondent is Syrmobi, Nedal Almalouf, of Damascus, Syrian Arab Republic, represented by Souha Mourtada, of Damascus, Syrian Arab Republic.
2. The Domain Names and Registrar
The disputed domain names and are registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2007. On September 28, 2007, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the domain names at issue. On October 01, 2007 eNom. Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant as well as the Respondent Syrmobi and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 8, 2007. 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 8, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 28, 2007. The Response was filed with the Center on October 25, 2007.
The Center appointed Ross Carson as the sole panelist in this matter on November 8, 2007. 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
Complainant is the central organization of the Danish dairy industry and promotes the commercial interests of the Danish dairy industry in Denmark and abroad. Complainant and its predecessors have been using the LURPAK trademark for over a century to distinguish dairy products made by Danish farmers and dairies. Complainants also control the quality of dairy products bearing the LURPAK trademarks.
Complainant is the registered owner of the trademark LURPAK registered in Denmark on January 6, 1962. Complainant is the owner Community Trade Mark Registration No.000360966 registered May 27, 1998 for the trade mark LURPAK registered in relation to the goods butter, cheese, milk, and other dairy products, edible oils and fats. The trade mark has been accepted in 24 countries by Community members. Complainant is also the owner of United States Trademark Registration No.1875725 for the trademark LURPAK. The trademark was registered as a certification mark on January 24, 1995 in relation to the good: butter, cheese, milk, preserved milk, and other dairy products, edible oil and fats.
Complainant is the owner of the domain names created on October 31, 1996; created on November 18, 2005; created on November 18, 2005; and created on August 29, 2005.
Respondent is the registrant of the domain names created by the Registrar eNom, Inc. on May 25, 2007, and the domain name created by the Registrar eNom, Inc., on May 25, 2007.
5. Parties’ Contentions
A. Complainant
A.1 Identical or Confusingly Similar
Complainant first registered the LUR brand in 1901 and the brand has since been highly used in Denmark as well as abroad. Today LURPAK is a well-known trademark and the LURPAK products are sold worldwide.
Complainant submits that by registering the domain names and , Respondent is infringing Complainant’s intellectual property rights. LURPAK is a well known trademark and internet users will expect to find a website belonging to Complainant, when looking up the domain names in dispute. Respondent is exploiting the reputation of the LURPAK brand.
A.2 No Right or Legitimate Interests in respect of the Domain Name
Complainant submits that Respondent has no rights to or legitimate interest in the domain names in question what so ever. Furthermore, Complainant is the only entity that has a legitimate interest in using the esteemed trademark LURPAK.
A.3 Registered and Used in Bad Faith
Complainant submits that since the LUR brand is a well known trademark that has been highly used world wide by members of the Complainant organization, Respondent must have known of the trademark LURPAK when it registered the domain names in dispute. It seems highly unlikely, that Respondent would have registered both and without any knowledge of Complainant’s trademarks and domain names for or including LURPAK.
Complainant states that the landing pages associated with the domain names in dispute contain various links to e.g. cheap broadband, shopping, movies, insurance, digital cameras and music. LURPAK is a well known trademark and internet users will expect to find a website belonging to Complainant, when looking up the domain names in dispute. Respondent is exploiting the reputation of the LURPAK brand.
B. Respondent
B. 1 Identical or Confusingly Similar
Respondent did not make any submission on this issue.
B. 2. Rights or Legitimate Interests in respect of the Domain Names
Respondent submits that it is a company that is involved in registering and acquiring and designing Dotmobi websites for customers. Respondent states that it had never heard of Complainant before it acquired the domain names in dispute.
Respondent states it entered into an agreement with Lurka Khaizaran dated May 18, 2007 to design a website on his behalf. Respondent submits that Mr. Lurka’s family name includes a title “Pak”, which is a well established tradition in Syria. E.g. Ali Pak, Salman Pak among others. Respondent filed a document entitled “Copy of Mr. Lurka ID doc.” written in Arabic including a photograph of a gentleman identified below the document as Lurka Machhour Khaizaran. Respondent states that Mr. Lurka was the one to choose names for his domains that include his family’s name and title namely “LurPak”, which Respondent reserved on his behalf.
Respondent submits that his client has rights and legitimate interests to use his family name “Lurka” and title “Pak” as part of the domain names in dispute.
B. 3. Registered and Used In Bad Faith
Respondent states it is a company that reserves domains for agents, and the domains names in dispute were reserved upon some local customer’s request who wanted Respondent to develop them as personal sites. The surname letters of the client, if written in English, would be identical compared to Complainant’s trademark LURPAK.
Respondent submits that neither it or those around it were aware of the trademark LURPAK prior to receipt of the cease and desist letter and e-mail from Complainant dated August 13, 2007. Respondent states that after registration of the domain names in dispute on May 25, 2007, the domain names in dispute were linked to “Enom’s” DNS as parked domains without Respondent’s instructions. Respondent states that the domains were reserved for work until receipt of Complainants cease and desist letter and e-mail of August 13, 2007, in which Complainant informed Respondent of its trademark rights in the trademark LURPAK. Respondent advises that upon receipt of the cease and desist letter, it stopped everything related to the domain names in dispute and requested Lurka Khaizaran to stop everything until a suitable solution could be reached. Enom was requested by Respondent to take down the landing pages associated with the domain names in dispute and did so.
Respondent Syrmobi forwarded an e-mail to Complainant on September 17, 2007 advising Complainant: “The domain was already available to be purchased. On the other hand, we are a company interested only in domains, trade and designs, and have NO interest or intent to use the name or keeping it, and we basically offer it for sale. So we are ready for negotiations about the mechanism of transferring the domain to your ownership. So, please contact us to follow up on the needed steps.” In the next paragraph Respondent stated: “We absolutely didn’t intend to damage your fame; on the contrary, we wanted to provide it with an offer on behalf of our company to you, so we can design the web and launch it the way you like. Actually, this is our job exactly (Designing Dotmobi websites). This is how we deal with the largest and international companies.”
In the Response filed October 25, 2007, Respondent states that pursuant to the contract to acquire and design the website associated with the domain names in dispute for its client, it cannot cancel or transfer the domain names in dispute to Complainants without opening itself to a penalty to its client under the contract.
6. Discussion and Findings
Paragraph 15(a) of 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”.
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:
(1) 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) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy Complainant must establish rights in a trademark and secondly prove that the domain name in dispute is confusingly similar to the trademarks in which Complainants have rights.
Complainant is the owner of trademark registrations in Denmark, the European Community, the Madrid Agreement and the United States of America for or including the trademark LURPAK registered in connection with the goods: butter, milk, and other dairy products as set out in paragraph 4 above. Complainant’s trademark LURPAK has been in use as a collective mark and certification mark by farmers and dairies in Denmark on their products sold around the world since 1901. The domain names in dispute incorporate the whole of Complainant’s registered trademark LURPAK. Numerous UDRP panels have held that a domain name is confusingly similar to a trademark when the domain name incorporates the mark in its entirety. See, e.g., America. Online, Inc., v. , NAF Case No. FA0207000117319, (noting that “aolgirlsgonewild” incorporated complainant’s “entire mark” and implied “an affiliation that simply does not exist”).
The addition of a generic top-level domain name such as “.org,” “.net,” or “.com” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark. See, e.g., Aous Uweyda v. Abdallah Sheet NAF Case No. FA165119 (August 1, 2003). The addition of “.mobi” to Complainant’s trademark is irrelevant in determining confusing similarity.
The addition of the term “world” to Complainant’s trademark LURPAK as found in the domain name in dispute is descriptive of the availability of LURPAK dairy products around the world. The addition of the term “world’ is found in Complainant’s domain name registered on August 25, 2007. Respondents domain name is confusingly similar to Complainants registered trademark LURPAK.
The panel finds that Complaint has proven that the domain names in dispute are confusingly similar to Complainant’s trademark LURPAK.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the domain names in dispute.
On the material before the Panel, Respondent has not used trademarks for or including LURPAK or any variation thereof in association with any bona fide goods or services offered by Respondent.
Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s trademarks for or including LURPAK or any trademark confusingly similar thereto.
Respondent stated in its letter of September 17, 2007 to Complainants that it is a company interested only in domain name trade and web page design and “have NO interest or intent to use the name or keeping it”. The domain names in dispute were linked to Enom’s DNS prior to commencement of the proceedings. The home page associated with each of the domain names in dispute was an advertising page containing links to e.g. cheap broadband, shopping, movies, insurance, digital cameras and music. The use of the confusingly similar domain names in dispute with the general advertising pages was not a bona fide offering of goods or services in association with the domain names in dispute. There is no evidence that Respondent or Respondent’s client stated Lurka Khaizaran made demonstrable preparations to use the domain names in dispute in association with a bona fide offering of goods or services before any notice to them of the dispute; nor has the Panel been persuaded on the available record that either is commonly known by the disputed domain names.
The Panel finds that Complainant has proven on balance that neither Respondent or his client have rights or legitimate interests in the domain names in dispute.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4 (a) (iii) of the Policy Complainant must prove that the domain names in dispute have been registered and used in bad faith.
Complainant is the owner of trademark registrations in Denmark, the European Community, the Madrid Agreement and the United States of America for or including the trademark LURPAK registered in connection with the goods butter, milk, and other dairy products as set out in paragraph 4 above. Complainant’s trademark LURPAK has been in use as a collective mark and certification mark by farmers and dairies in Denmark on their products sold around the world since 1901.
Complainant is also the owner of the domain names created on October 31, 1996; created on November 18, 2005; created on November 18, 2005; and created on August 29, 2005.
Respondent, a company interested in domain name trade and web page design states that its client for whom it registered the domain names in dispute and was to design a webpage chose the domain names in dispute. Respondent states that its client Lurka Khaizaran chose the domain names in dispute and wanted Respondent to develop them as personal sites for him. Respondent states that the surname letters of his client if written in English if compared to Complainant’s trademark would be identical. Respondent further states that Mr. Lurka’s family name includes a title “Pak”.
Respondent’s client’s family name is Lurka, which combined with the title “Pak’ would appear to be “Lurka Pak”, not found in either of the domain names in dispute. The second domain name in dispute is identical to Complainant’s domain name which Complainant registered in 2005, except for the domain name indicator. The panel finds that Lurka Khaizaran, who the Panel is prepared to accept as the beneficial owner of the domain names in dispute and who chose the domain names in dispute, was on balance aware of Complainant’s trademark LURPAK and Complainant’s domain name before registration of the domain names in dispute. The panel finds that Respondent, who states that he registered the domain names in dispute on his clients instructions, is deemed for purposes of this proceeding to have registered the domain names in dispute in bad faith.
On September 12, 2007, Complainant advised Respondent by e-mail that they had commenced a UDRP proceeding against Respondent relating to the domain name in dispute. A copy of the Complaint was attached to the e-mail. In response, Respondent forwarded an e-mail to Complainant dated September 17, 2007 offering to sell the domain names in dispute to Complainant and advising Complainants that Respondent was ready for negotiations. Respondent also invited Complainant to use its website designing services. No mention is made in the e-mail of Respondent dated September 17, 2007 that the domain names in dispute were beneficially owned by its client Lurka Khaizaran. There is no evidence that Complainant responded to Respondent’s late offer to sell.
Complainant’s trade mark registration No. 846814 for the trade mark LURPAK and design registered under the Madrid Agreement discloses that the mark was granted protection in Syria prior to registration of the domain names in dispute by Respondent. Respondent evidence is that his client Lurka Khaizaran who chose the domain names in dispute which includes his family name and title “Pak”. The domain names in dispute do not incorporate his clients family name but only include the first three letters of his client’s family name. The second of the domain names in dispute includes the word “world” which is part of the domain name registered by Complainant in 2005. Complainant’s trade mark LURPAK has been in use as a collective mark by Danish farmers and dairies since 1901 commencing with butter. The trade mark LURPAK and design had been granted protection in Syria were Respondent and his client reside before the domain names in dispute were registered. The panel finds that on a balance of probabilities Lurka Khaizaran the beneficial owner of the domain names in dispute chose the domain names in dispute with knowledge of Complainants trade mark rights in LURPAK and knowledge of Complainant’s domain name . Respondent acting as the agent for his principal Lurka Khaizaran is deemed to have the knowledge of his principal for the purpose of filing the domain names in dispute on his clients instructions.
Registration of a domain name which is likely to cause confusion with a well known trade mark with knowledge of the well known trade mark has been considered to be evidence of opportunistic bad faith. See eg. Pavillion Agency v. Greenhouse Agency Ltd.,WIPO Case No. D2000-1221.
The only evidence of past use of the domain names in dispute show the domain names in dispute being used with an advertising page contain links to third parties. Internet users visiting such pages would be Internet users familiar with Complainant’s trade mark LURPAK. The only indication of proposed use of the domain names in dispute in good faith is a statement by Respondent that Lurka Khaizaran intends to develop personal sites in association with the domain names in dispute. The contract between Lurka Khaizaran and Respondent for development of the website is silent as to the purpose of the website. The purported use of the domain names in dispute as personal websites is not convincing in the circumstances noting inter alia that the client’s name Lurka is no incorporated in the domain names in dispute. The inclusion of the word “world” in one of the domain names in dispute is strong evidence that the intended use of the domain names in dispute was to use the domain names in dispute to confuse Internet users familiar with Complainant’s trade mark LURPAK and domain name to visit the websites in order for the beneficial owner of the website to obtain click through payments from visitors to the websites in dispute. As stated by the Panel in Telstra Corp. v. Nuclear Marshmallows,WIPO Case No. D2000-0003, “It is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as being a passing off, an infringement of consumer protection legislation, or an infringement of Complainant’s rights under trademark law.”
The Panel finds that Complainant has proven that Respondent has used the domain names in dispute in bad faith as set out in paragraph 4.(b) of the Policy.
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 names, and be transferred to the Complainant.
Ross Carson
Sole Panelist
Dated: November 19, 2007
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