WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Den Blå Avis A/S v. Web Administrator Case No. D2009-0722 1. The Parties
The Complainant is Den Blå Avis A/S, Denmark, represented by Lett Law Firm, Denmark.
The Respondent is Web Administrator, Taiwan, Province of People's Republic of China, represented by himself. 2. The Domain Name and Registrar
The disputed domain name () is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2009. On June 3, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On June 4, 2009, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 on June 17, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 7, 2009. The Response was filed with the Center on June 22, 2009.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on July 1, 2009. 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 Complainant has submitted evidence that the Complainant is the owner of the following registered trademark:
DEN BLÅ AVIS, class 16, 35, 38 and 41 with Danish Registration No. VR 1992 04327, dated May 15, 1992.
The Respondent registered the disputed domain name () on February 14, 2007. 5. Parties' Contentions A. Complainant
The Complainant is a company incorporated in Denmark. Since 1992, the Complainant has conducted business under the trademark DEN BLÅ AVIS. The Complainant's trademark is very well known among consumers and especially among Internet users due to the fact that the Complainant conducts business online, providing an online market platform where people buy and sell various products. The Complainant uses the domain names , and for its online platform.
The disputed domain name is identical to the Complainant's registered trademark DEN BLÅ AVIS.
The disputed domain name contains the Danish letter “å”, which when converted to puny code is . The services provided by the Respondent in connection with the disputed domain name are similar to the services offered by the Complainant. The Respondent is using the disputed domain name to tarnish the Complainant's registered trademark and to create a likelihood of confusion in order to mislead consumers for own commercial gain. On the website connected to the disputed domain name, the Respondent is offering a database containing links to various third party websites.
There is no evidence indicating that the Respondent has any rights or legitimate interest with regards to the disputed domain name. The Respondent is not offering any products and cannot claim any legitimate interest in the disputed domain name since it does not in any way describe the nature of the Respondent's services. The domain name was registered with the Complainant's trademark in mind.
The vast majority of Internet users typing the disputed domain name have no intention of visiting the Respondent's website. Instead they have the intention of visiting the Complainant's well-known website “www.denblå” and believe that the Complainant is the owner of the disputed domain name as well. It is the opinion of the Complainant that the registration o the disputed domain name was made in bad faith with the purpose of attracting confused Internet users to the Respondent's website. B. Respondent
The Respondent states that the term “den blå avis” is a generic and descriptive term which can mean “the blue bird” (Latin roots) or “the blue paper” (Danish roots). The Complainant's trademark DEN BLÅ AVIS is not widely known internationally or on the Internet. Furthermore, the Respondent claims that the Complainant conducts business using the domain name and is widely known as “”. The vast majority of users of the Complainant's website type “”. The Complainant has never used the name DEN BLÅ AVIS for its business. The domain name , owned by the Complainant, does not resolve to a valid website. The Complainant cannot claim confusion from customers when the website does not work and when the Complainant has made no effort to use their domain name.
The Respondent registered the disputed domain name on February 14, 2007 and the Complainant registered the domain name on January 26, 2009, which is two years after the Respondent's registration. The Complainant has not used the domain name for legitimate purposes and simply engaged in warehousing domain names.
The Respondent does not offer any products on its website for commercial purposes. The Complainant is a subsidiary of a large American multinational company seeking to wrestle away and commercially exploit the Respondent's domain name. The Respondent operates an origami website because the words “den blå avis” means “the blue bird” or “the blue paper” which perfectly describes the content.
The Respondent's website contains links to various other websites not related to the Complainant's website which proves that the Respondent has no intention of misleading, tarnishing or otherwise infringe upon the Complainant's trademark.
The Complainant failed to undertake the normal due diligence necessary to understand the Respondent's website. The Respondent is making a bona fide use of the disputed domain name. The Respondent has been using the domain for the website since 2007.
The Respondent enjoys origami and on the website the Respondent has posted photos of paper cranes. The Respondent came up with the domain name because “avis” means “bird” in Latin. The Danish words “den blå avis” mean “the blue paper”. Origami is a very popular hobby and royal blue is a preferred color for those making paper cranes. The Respondent has never heard of the Complainant. The Respondent has only a rough familiarity with Danish and has never been to Denmark. The Complainant's Supplemental Filing
The Complainant argues that the letter “å” is distinctive for the Danish language and when transcribed, the letter combination “aa” is used. The Complainant's trademark DEN BLÅ AVIS is transcribed to “Den Blaa Avis” and not to “Den Bla Avis” as claimed by the Respondent. The word “bla” has no meaning in the Danish language. For this reason, the Complainant has not used the domain name . The Complainant is instead using the domain names and .
The Complainant disputes that the basis for the Respondent's website is a hobby site regarding origami. The Complainant has submitted printouts dated May 27, 2009, clearly indicating that the Respondent's website contains links to different product categories. The printouts were made by the Complainant's attorney who declared that the printouts are true copies of the Respondent's website. The Respondent's website does not in any way contain material regarding origami as claimed by the Respondent.
Furthermore, the website is partly in the Danish language, which is peculiar since the Respondent has stated that he only has a rough familiarity with Danish. The Complainant maintains that the Respondent has no legitimate interest in the disputed domain name and that the Respondent's intent is to tarnish the trademark DEN BLÅ AVIS and mislead consumers searching for the Complainant's website “www.denblå”. The Respondent's Supplemental Filing
The Respondent claims that the submitted printouts from the Respondent's website submitted by the Complainant are fake. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant is, according to the submitted evidence, the owner of the registered trademark DEN BLÅ AVIS which predates the registration of the disputed domain name .
The disputed domain name contains the trademark DEN BLÅ AVIS in its entirety.
Having the above in mind, the Panel concludes that the disputed domain name is identical to the Complainant's trademark DEN BLÅ AVIS and that the Complainant has proved the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(a) that he has made 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 prior to the dispute; or
(b) that he is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) that he intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Complainant has not licensed or otherwise consented to the Respondent's use of the trademark DEN BLÅ AVIS in connection with the disputed domain name which is identical to the trademark.
The Respondent has claimed that the Complainant provided fake printouts of the website to which the disputed domain name resolved at the time of submitting the Complaint. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.5, it has been declared that a panel may visit an Internet site linked to the disputed domain name in order to obtain more information about the Respondent and the use of the domain name. The panel may also undertake limited factual research into matters of public record. The Panel has noted that a cached Google version of the above mentioned website, dated April 18, 2009, clearly indicates that the printouts submitted by the Complainant truly reflected the content of the Respondent's website. Having the above in mind, the Panel cannot come to any other conclusion than that the Respondent modified the redirection of the website after the commencement of the dispute in order to conceal the Respondent's use of the disputed domain name.
Thus, from the submitted evidence in this case, the Panel finds that it is established that prior to notice of this dispute the Respondent's website contained numerous sponsored commercial links to third parties. Furthermore, the Respondent's website displayed the following heading: “Denblå What you need, when you need it”. The website contained information not only in English but also in Danish suggesting popular search categories such as cars sales, furniture, bikes, mopeds, apartments, mobile phones, dogs, cats, etc.
The above mentioned use of the disputed domain name does not represent a non-commercial or fair use without intent for commercial gain to misleadingly divert consumers and the Respondent's use does not represent a use in connection with a bona fide offering of goods and services. There is no evidence indicating that the Respondent is commonly known by the domain name.
The Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include:
(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or
(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.
Substantial evidence indicates that the website to which the disputed domain name resolves was modified after the commencement of the dispute. Prior to the dispute, the disputed domain name resolved to a website with numerous sponsored commercial links to third parties and after the commencement of the administrative proceeding, the disputed domain name was redirected to a minimalistic website containing the following text: “Blue Bird Origami” and “Den bla avis means the blue bird in Latin”. Having in mind that the disputed domain name has been redirected after the commencement of the administrative proceeding, the Panel cannot take into account the Respondent's claim that the disputed domain name was registered for a website regarding origami paper cranes since the evidence in the case clearly indicates otherwise.
The Complainant's registered trademark DEN BLÅ AVIS predates the registration of the disputed domain name . The circumstances in the case before the Panel indicate that the Respondent was aware of the Complainant's trademark when registering the disputed domain name and that it has intentionally been used in an attempt to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on a website.
The Panel concludes that the Complainant has proved the requirements under paragraph 4(a)(iii) of the Policy and that the domain name has been registered and used 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 () be transferred to the Complainant.
Johan Sjöbeck
Sole Panelist
Dated: July 15, 2009
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