WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Intrum Justitia Licensing AG v. PieterFloris Case No. D2009-0914 1. The Parties
1.1 The Complainant is Intrum Justitia Licensing AG, of Zug, Switzerland, represented by Melbourne IT Digital Brand Services, Sweden.
1.2 The Respondent is PieterFloris recherche, of ZH, Netherlands. 2. The Domain Name and Registrar
2.1 The disputed domain name (the “Domain Name”) is registered with GoD, Inc (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2009. On July 8, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant 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 July 14, 2009. 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” 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”).
3.2 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 July 15, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2009. A purported Response was filed by the Respondent with the Center on August 2, 2009.
3.3 The Center appointed Matthew S. Harris as the sole panelist in this matter on August 14, 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
4.1 The Complainant would appear to form part (and is possibly the rights holding arm) of a credit management services business that was founded in Sweden in 1923 and which now operated in 24 markets. The Complainant was incorporated in the Canton of Zug in Switzerland in 2001.
4.2 The issue of the Complainant's trade mark rights is addressed in greater detail in this decision. However, it appears to be the owner of at least registered Community Trade Mark No. 6721716 filed on March 4, 2008 in classes 35, 36, 41 and 45 which takes the following form:
4.3 The identity of the Respondent is not entirely clear, but he would appear to be an individual with the name Pieter Floris who resides in the Netherlands.
4.4 The Domain Name was registered on December 20, 2007. Whilst the name “Pieter Floris recherche pieter.floris@” is recorded as the registrant of the Domain Name, the technical and administrative contacts for the Domain Name are recorded as “Doorn, RJ pieter.floris@”.
4.5 No website appears to have operated from the Domain Name from the date of its registration, although this is an issue to which the Panel again will return later in this decision.
4.6 On February 23, 2009, Melburne IT wrote a letter addressed to both “Mr Doorn” and “Mr Floris” on behalf of the Complainant in which it referred to the Community Trade Mark described above and claimed that the Domain Name infringed the Complainant's trade mark rights.
4.7 There appears to have been correspondence between the parties thereafter. On March 22, 2009, an email was sent by Mr. Floris to the Complainant. It contained the following statement:
“As said, if you want to contact us for discussing our offer to give you complete ownership of the , for the amount of 6000€ (that does not include transfer fees), you can contact my lawyer at a.van.doorn@”.
4.8 Melborne IT responded the following day by email, asserting that the registration of the Domain Name was in breach of the Policy. 5. Parties' Contentions A. Complainant
5.1 The Complaint refers to the size history and extent of the “Intrum Justitia” business. There is no real explanation of the Complainant's exact relationship to that business.
5.2 The Complainant claims to have registered the trade mark Intrum Justitia as word mark “all over the world, including in the Netherlands”. Unfortunately, the material that is annexed to the Complaint and which is said to support that assertion is less than helpful. It comprises a table comprising a list of countries, represetations of what would appear to be three different types of mark and a list of what would appear to be classes in respect of each type of mark. No specific registered trade mark number is identified in that table, nor is a copy of any trade mark certificate or other third party evidence of the existence of registered trade mark rights provided.
5.3 The Complainant contends that the Domain Name comprises its “INTRUM JUSTITIA” trade mark in its entirety. It asserts that the Domain Name creates a likelihood of confusion with that mark and that the Respondent's use of the Domain Name may result in dilution and other damage to that mark.
5.4 The Complainant asserts that the Respondent does not have any trade marks that correspond to the Domain Name, that he is not using the Domain Name in any way which might give him “legitimate rights” in the name and that he is not licensed to use the mark. It cites the cases of, Chinatrust Commercial Bank, Ltd. and Chinatrust Bank (U.S.A.) v. China Holding Company, IncorporatedWIPO Case No. D2001-0826, and Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055, which are said to support a finding of no right or legitimate interest in such circumstances.
5.5 The Complainant contends that its trade mark is “well known in Europe and is an extremely valuable asset” and that “[i]t is highly unlikely that the Respondent would not have known of the Complainant's legal rights in the name at the time of the registration”. It further maintains that as the Complainant's trade mark is “a well known trademark at least in Europe”, the case of Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc.,WIPO Case No. D2001-1314 “established that any use of such a trademark in a domain name would violate the rights of the trademark owner”.
5.6 The Complainant also appears to claim that the mere registration of a domain name does not give its owner a right or legitimate interest in the absence of “demonstrable preparations” to put the Domain Name to use.
5.7 On the issue of bad faith registration and use, reference is again made to the extent of “Intrum Justitia's” business. The Complainant asserts that the “the brand awareness in Europe for the INTRUM JUSTITIA trademark is 80%”, although no explanation is provided as to the segments of the public in which that percentage recognition is said to exist nor is any evidence appended to the Complaint to support that claim. It contends that it is “highly unlikely that the Respondent was not aware of the Complainant's rights in the trademark INTRUM JUSTITIA at the time of registration of the Domain Name”.
5.8 The Complainant also complains that the Respondent is using the Domain Name in his email addresses. This is said to have the consequence that people receiving emails from him are likely to be confused into thinking that he is authorised by or connected to the Complainant.
5.9 The Complainant refers to the correspondence between Melborne IT and the Respondent prior to the proceedings. This is explained in some detail and it is claimed that at one point an “Abraham Wirstonivicz” left a message with Melborne IT about this matter. The Complainant contends that this correspondence clearly indicates an intention by the Respondent to sell the Domain Name “for valuable consideration in excess of the Respondent's out-of-pocket costs”.
5.10 The Complainant also makes reference to Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 in support of the proposition that the passive holding of a domain name after registration can constitute bad faith registration within the meaning of the Policy. Further, decisions are cited in this respect, including Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 and SSL International Plc v. Mark Freeman,WIPO Case No. D2000-1080. B. Respondent
5.11 The Respondent did not file a formal response in these proceedings. Instead it sent a letter dated July 11, 2009 to the Center on August 2, 2009. This letter provided no address for the Respondent (apart from an email address using the Domain Name) and failed to comply with the requirements of paragraph 5(b) of the Rules.
5.12 Statements made by the Respondent in this letter include the following:
(i) that he would like to conduct his defence in Dutch and that he is subject to Dutch law;
(ii) that “claiming is not sufficient to establish right in a trademark or service mark”;
(iii) that the Complainant has failed to prove that it was with the Complainant's business and reputation in mind that the Domain Name was registered”;
(iv) that the Domain Name was registered by an individual for use “for a private weblog to let the ‘world' know what I am doing in my private life”, although the Panel notes that no supporting evidence in respect of this alleged weblog use is provided;
(v) the rather curious statement that the “Domin Name, at the time of the Complainant's filing, was not being used to generate revenues via the pay per click system to the present domain name holder. Which would indicate a legitimate, non commercial, or fair use of a domain name”; and
(vi) an assertion that he was not intentionally attempting to attract for commercial gain Internet users to his website. 6. Discussion and Findings
6.1 The Complainant must make out its case in accordance with the requirements set out in paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.2 The Panel will address each of these issues in turn. However, before it does so it is convenient to address two procedural matters. They are:
(i) the Respondent's assertion that it should be entitled to conduct its case in Dutch; and
(ii) the admissibility of the Respondent's letter of July 11, 2009 as a Response in these proceedings. A. Procedural Issues
6.3 The issue of language can be very easily dealt with. The Registrar in its Registrar response dated July 8, 2009 confirmed that the language of the registration agreement that applied to the Domain Name was English. Paragraph 11(a) of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
6.4 There is no evidence before the Panel to suggest that the Parties agreed to these proceedings being conducted in any language other than the language of the registration agreement. Further, the Panel notes that the letter of July 11, 2009 and the Respondent's previous communications with the Complainant evidence a good command of the English language.
6.5 In the circumstances, these proceedings were correctly commenced in English and the Panel sees no good reason why it should order that they should proceed in any other language.
6.6 The issue so far as the admissibility of the Response is concerned is that it does not comply with the requirements of paragraph 5(b) of the Rules. This is not a trivial omission. For example, this is important from an evidential perspective. Proceedings under the Policy are not court proceedings. There are no formal rules of evidence and a panel is given a wide degree of discretion as to what it treats as evidence and the weight to be given to that evidence in proceedings (see paragraph 10(d) of the Rules). Frequently, panels can and will take into account statements of fact to be found in submissions filed by the parties in this regard. The evidential weight that is accorded such statements may vary from case to case depending on various factors. These include the inherent credibility of what is stated, the extent to which the party making the statement may be expected to have knowledge of the matters claimed and the extent to which the statement is consistent with other material before the Panel. However, the fact this might be considered as “evidence” at all means that as a bare minimum a party must certify that the information contained in submission is “to the best of [the relevant party's] knowledge complete and accurate” (see paragraphs 3(b)(xiv) and 5(b)(viii) of the Rules).
6.7 It is therefore, unsurprising that in such circumstances some panels have declined to take any notice of a statement or submission that is non-compliant with this aspect of the Rules. In this case the Panel has decided not to adopt that approach. However, as will become apparent, the lack of the relevant statement is something that has led the Panel to conclude that little or no weight should be given to the factual assertions in the Respondent's document. B. Identical or Confusingly Similar
6.8 To some extent the Panel has some sympathy with the Respondent when it contends that the Complainant has failed to prove that it holds the necessary rights to succeed in these proceedings. Whilst there are assertions of trade mark ownership not a single specific mark is identified in the Complaint or in the specific table attached to the Complaint that is said to evidence the Complainant's registered trade mark rights.
6.9 The table appears to comprise a list of countries in which the Complainant claims to own different types of marks. Perhaps the Panel could have conducted its own searches in the trade mark databases of the relevant countries to establish whether there were marks of the type claimed in those countries in the Complainant's name. However, it is not for the Panel to evidence a party's case in this way. The very least a Panel can expect where registered marks are claimed is for there to be proper identification of the marks concerned and preferably a copy of some material (such as a trade mark certificate) that evidences these marks' existence. The Complainant (or rather its counsel) has failed to provide this basic information in this case.
6.10 Nevertheless, from a date that predates these proceedings the Respondent has been placed on notice of at least one specific mark that is owned by the Complainant. That is Community Trade Mark No. 6721716, which was expressly referred to by the Complainant in pre-action correspondence. The Panel has conducted an online search in respect of that mark on the OHIM website and has verified that this mark does exist, is owned by the Complainant and that it takes the form identified in paragraph 4.2 above.
6.11 The mark in question comprises a circular device, which appears to incorporate the letters “i” and “j”, combined with the words “Intrum Justitia” in stylised text. The words form a prominent part of the mark as a whole. As was explained by this panel in Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227, paragraph 4(a)(i) of the Policy provides a “threshold” or “standing requirement”. In the circumstances, the Panel has little difficulty in concluding that the Domain Name is confusingly similar to this registered trade mark.
6.12 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
6.13 The Panel has not relied on the Complainant's contentions that the Respondent “is exploiting the goodwill and the image” of the Complainant's mark in coming to this conclusion. As is also explained in Research in Motion Limited supra, such claims (even if true) are normally not relevant at this stage of the assessment. C. Rights or Legitimate Interests
6.14 The Complainant cites a number of cases to support its claim of no rights or legitimate interests. Each case is said to support various different propositions. The way in which matters are expressed by the Complainant is at times uncontroversial but at other times it is somewhat more problematic.
6.15 For example, at one point the Complainant cites J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing,WIPO Case No. D2000-0035 as authority for the proposition that where there is an absence of evidence of “demonstrable preparations” to put a domain name to use then “the owner of the domain name could not be considered as having any rights or legitimate interests”. This is a very short decision in the early days of the operation of the Policy in which there was a finding of abusive registration where the Respondent had registered the name of a well-known bank and appeared to have had a history of registering domain names that corresponded to the names of various financial institutions. In the circumstances, the Panel does not accept that this case is somehow good authority for the general proposition that in the absence of “demonstrable preparations” there cannot be a right or legitimate interest in a domain name.
6.16 More often than not the assessment of rights and legitimate interests will turn on its specific facts. The fact that a domain name has not been used may well undermine a respondent's claim that it was intended to be used for some legitimate purpose. However, ultimately this is an issue of fact and evidence rather than an issue of principle.
6.17 In the present case it seems clear that the Respondent has no trade mark rights in the term “intrum justitia”. In the circumstances, whether or not he has rights or a legitimate interest under the Policy is likely to be determined by an assessment of the Respondent's motivations at the time of registration of the Domain Name and his actual and intended use of the Domain Name as at the time of the complaint.
6.18 As is explained in greater detail under the heading of bad faith below, the Panel has on the balance of probabilities reached the conclusion that the Domain Name was registered and held with the “Intrum Justitia” business in mind and with a view to taking advantage of the reputation of the “Intrum Justitia” brand. It was not with a view to any use of that term that was unconnected with that particular business.
6.19 Such use does not provide a right or legitimate interest for the purposes of the Policy (see, for example Express Scripts, Inc. v. Windgather Investments LtdWIPO Case No. D2007-0267). The Complainant has, therefore, made out the requirements of paragraph 4(a)(ii)of the Policy. D. Registered and Used in Bad Faith
6.20 There are a number of difficulties with the way in which the Complainant puts its case so far as bad faith is concerned. First, there is the fact that the Complainant's association and involvement in the “Intrum Justitia” business is not properly explained in the Complaint. This is not unimportant. There are a number of cases under the Policy that would suggest that to succeed in allegations of bad faith, it must be shown that the bad faith in question must be directed to the complainant rather than some third party (see, for example, Do The Hustle, LLC v. Monkey Media LLC,WIPO Case No. D2000-0625).
6.21 Nevertheless, it is necessary to approach the Complaint with a degree of common sense. In its Complaint the Complainant refers to itself at least as if it were the “Intrum Justitia” business. Therefore, it seems reasonably clear that the Complainant is claiming that it forms part of that larger business. Also once again, the pre-action correspondence with the Respondent clarifies matters somewhat. In its letter of February 23, 2009 the Complainant's representative assert that the Complainant forms part of the “Intrum Justitia Group of Companies” and the representative claims to represent that group as a whole. The Panel sees no reason not to accept that assertion. And if this is correct, it is sufficient for the Complainant to show that the bad faith in question is addressed as a whole to the group of companies of which the Complaint forms a part and which use the INTRUM JUSTITIA mark (see Aspis Liv Försäkrings AB v. Neon Network, LLCWIPO Case No. D2008-0387).
6.22 Second, and somewhat more problematic, is the Complainant's assertion that the INTRUM JUSTITIA mark is well-known in Europe. Unfortunately, the Complainant does not back this up with any real supporting evidence. There is an assertion of 80% brand awareness, but what exactly is meant by this is not explained nor is any further material provided in this respect.
6.23 Nevertheless, these assertions of reputation are not substantively denied by the Respondent in his purported Response. In the circumstances, the Panel is prepared to accept the Complainant's contention that the “Intrum Justitia” group is a substantial business and that the “Intrum Justitia” name is one with some degree of pan-European reputation.
6.24 More compelling is the nature of the Domain Name itself. The Domain Name appears to comprise the words “intrum” and “justitia” in combination. “Justitia” is the Latin word for “justice” but the word “intrum” although suggestive of Latin has (as far as the Panel is aware) no meaning in that language. In short, it is difficult to see how the Domain Name is capable of being used in some descriptive sense that is unrelated to the “Intrum Justitia” business.
6.25 Next there is the fact that there is no credible explanation offered by the Respondent as to why he registered the Domain Name. He claims that Domain Name has been registered and used “for a private weblog to let the ‘world' know what I am doing in my private life”. However, there are a number of problems with this. First it is, absent further explanation, inherently incredible. Why did he choose the specific words “intrum justitia” for that purpose? Second, the Panel is not prepared to give any weight to such a claim that is included in a purported response that does not comply with paragraph (b)(viii) of the Rules. Third, no supporting evidence is offered by the Respondent in support of that claim.
6.26 Further, there is the fact that on March 22, 2009 the Respondent offered to sell the Domain Name to the Complainant for Euros 6,000. The Panel accepts that in the absence of any credible explanation from the Respondent as to his reasons for registration, this suggests that the Domain Name was registered with a view to selling it to the group of companies to which the Complainant belongs (or one of its competitors) for a sum in excess of the Respondent's “out-of-pocket costs”. This is given as an example of circumstances indicating bad faith registration and use in paragraph 4(b)(i) of the Policy.
6.27 Paragraph 4(b)(i) of the Policy requires this to be the “primary” purpose of registration. However, whether or not this was the Respondent's primary purpose in this case does not matter. When the matter is considered as a whole, the Panel concludes on the balance of probabilities that the Respondent's intention in registering the Domain Name was to obtain some unfair advantage for himself (whether by sale or the Domain Name or otherwise) of the reputation of the INTRUM JUSTITIA mark. That is sufficient to support a finding of bad faith registration.
6.28 Further, the Panel accepts the Complainant's contention that even though the Domain Name has not been actively used after registration for the operation of a website, the mere holding of the Domain Name with a view to taking unfair advantage of the reputation of another's mark is sufficient to support a finding bad faith use.
6.29 The Complainant has therefore made out the requirements of paragraph 4(a)(iii)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 name, be transferred to the Complainant.
Matthew S. Harris
Sole Panelist
Dated: August 18, 2009
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