WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Bang & Olufsen a/s v. BlueH- INC , and Chris Albano Case No. D2010-0406 1. The Parties
The Complainant is Bang & Olufsen a/s of Denmark represented by Sandel, Løje & Wallberg of Denmark.
The Respondents are BlueH- INC, and Chris Albano both of United States of America. 2. The Domain Name and Registrar
The disputed domain name (“Domain Name”) is registered with FastDomain, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2010. As filed the Respondent was BlueH- Inc. On March 17, 2010, the Center transmitted by email to FastDomain, Inc. a request for registrar verification in connection with the Domain Name. On March 17, 2010, FastDomain, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint as originally filed. The Center sent an email communication to the Complainant on March 22, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 24, 2010 adding Chris Albano as a further Respondent. The Center verified that the amended 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 Respondents of the Complaint, and the proceedings commenced on March 25, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 14, 2010. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on April 15, 2010.
The Center appointed Nick J. Gardner as the sole panelist in this matter on April 21, 2010. 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 is a Danish company. It is a manufacturer of, amongst other things, audio visual apparatus and related equipment. It has been in business since 1926. It owns registered trademarks in respect of the words Bang & Olufsen in numerous jurisdictions throughout the world including the United States of America (“USA”) Such registrations predate the date of registration of the Domain Name.
The Respondents appears to be (1) a company with an address in Utah, USA and (2) an individual with an address in Texas, USA. One or other of the Respondents appears to have registered the Domain Name on March 14, 2009. The Domain Name is, as at the date of the Complaint, being used in relation to a web site which offers reviews of items of equipment manufactured by the Complainant and what appear to be sales advertisements for such equipment (see further below). 5. Parties' Contentions A. Complainant
The Complainant's contentions are expressed relatively briefly but are clear. They are supported by appropriate documentary evidence. The main points may be summarised as follows.
The Complainant is the owner of the trademark BANG & OLUFSEN (the “Trade Mark”).
The Complainant has used the Trade Mark since 1925 and it is extremely well known in, and registered in, many countries throughout the world including the USA.
The Trade Mark has very strong brand recognition.
The Domain Name is confusingly similar to the Trade Mark.
The web site which is operated under the Domain Name (the “Website”) is a web site which uses proprietary software (a program called phpBay Pro for Wordpress) to automatically assemble a series of links to products offered for sale on the well-known Internet auction site eBay. In doing so it generates numerous links to products of the Complainant which are for sale on eBay, as well as, in some cases, to products which purport to be those of the Complainant but which are fakes.
The Respondents are deriving “click through” revenue as result of these activities.
The Respondents have no rights or legitimate interests in respect of the Domain Name.
The Domain Name has been registered and used in bad faith. B. Respondent
The Respondents did not reply to the Complaint. 6. Discussion and Findings
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(1) The Domain Name is identical with or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(2) The Respondents have 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
The Panel finds that the Complainant has rights in the Trade Mark acquired through registration and use. The evidence clearly establishes the BANG & OLUFSEN brand and the Trade Mark as being very well known.
The Domain Name is confusingly similar to the Trade Mark. UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “[w]hen the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
It is established that, where a mark is the distinctive part of a domain name, the domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers,WIPO Case No. D2008-1694).
It is also established that the addition of a generic term (such as here “outlet”) to the disputed domain name has little, if any, effect on a determination of legal identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189).
The Panel finds that the minor change from Bang & Olufsen to bang-olufsen, and the addition of the generic word “outlet”, as a suffix after the words “bang-olufsen”, in the Domain Name, does little to distinguish the Domain Name from the Trade Mark, and the likelihood of confusion between the Domain Name and the Trade Mark is high.
Accordingly the Panel finds that the Domain Name is confusingly similar to the Trade Mark. Accordingly the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondents have rights or legitimate interests in the disputed domain name:
(1) before any notice to the Respondents of the dispute, use of, or demonstrable 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; or
(2) the Respondents (as an individual, business, or other organization) have been commonly known by the domain name, even if the Respondents have acquired no trade mark or service mark rights; or
(3) the Respondents are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondents to register or use the Domain Name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondents' registration and use of the Domain Name. The Complainant has therefore established a prima facie case that the Respondents have no rights and legitimate interests in the Domain Name and thereby shifted the burden to the Respondents to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Panel finds that the Respondents have failed to produce any evidence to establish their rights or legitimate interests in the Domain Name. Accordingly the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondents:
“By using the disputed domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.
By virtue of the confusing similarity of the Domain Name to the Trade Mark and the use of specific software to generate links to eBay offerings of various Bang & Olufsen products on the Website, the Panel finds that the public is likely to be confused into thinking that the Domain Name has a connection with the Respondent, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the Website.
The unusual and entirely non-descriptive nature of the Trade Mark, and the evidence as to the extent of the reputation the Complainant enjoys in the Trade Mark, meant that the Panel concludes the Respondent who registered the Domain Name was undoubtedly aware of the Complainant when it registered the Domain Name, and did so as part of a scheme to generate click through revenue by Internet users who visit the site, believing it to be associated with the Complainant, then clicking through to eBay listings of the Complainant's products for sale.
The Panel adopts the reasoning of the panel in Sanofi Aventis and Aventis Pharma SA v. Advent Innovations,WIPO Case No. D2005-0377
“Also, advertisements and links on websites generally generate income for the website owner dependent on the number of hits that are generated on the website. It is obvious, that a website containing a well known brand is hit more often than a no name website. To this extent, the Respondent is making use of the well known character of the Complainants' trademark for generating profits in his own interests. Therefore, the Panel finds that the domain names are also being used in bad faith”
The Panel further finds in the light of the evidence that the nature of the way the Website is automatically constructed means that it also generates links to products for sale on eBay which purport to be those of the Complainant but which are fakes. The use of the Domain Name and the Website to generate click through revenue in respect of links which offer fake products is a further reason to conclude the Domain Name is being used in bad faith.
As a result, the Panel finds that the Domain Name has been registered and used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 7. Decision
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Nick J. Gardner
Sole Panelist
Dated: May 5, 2010
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