The Complainant is Danske Spil A/S of Brøndby, Denmark, represented by Zacco Denmark A/S, Denmark.
The Respondent is WhoisGuard of California, United States of America / Chrisper Economy ApS, Christian Dam Rasmussen of Frederiksberg C, Denmark. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2011. On February 15, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 16, 2011, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 25, 2011 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 amended Complaint on March 2, 2011.
The Center verified that the Complaint together with 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 Respondent of the Complaint, and the proceedings commenced on March 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 30, 2011. The Respondent sent an email communication on March 10, 2011 but did not submit a formal response. Accordingly, the Center notified the Respondent’s default on April 1, 2011. Thereafter, the Center received two email communications from the Respondent, on April 4 and 7, 2011.
The Center appointed Arne Ringnes as the sole panelist in this matter on April 14, 2011. 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 gaming company based in Denmark. The disputed domain name was created on July 29, 2009. The disputed domain name currently resolves to an error page. The Complainant owns the registered trademark DANSKESPIL. The earliest registration has priority from January 5, 2001. 5. Parties’ Contentions A. Complainant
The Complainant submits that it has exclusive rights to DANSKESPIL which predates the Respondent’s registration of the disputed domain name . According to the Complainant no license has been granted to use the trademark in the disputed domain name .
The Complainant further submits that the Respondent has used the disputed domain name for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s trademark. By using the disputed domain name the Respondent has intentionally misled the consumers and confused them by making them believe that the website behind the links on the page were associated or recommended by the Complainant. As a result the Respondent may have generated unjustified revenues and illegitimately capitalized on the Complainant’s trademark and its fame. B. Respondent
The Respondent did not submit a formal response. The Panel notes that after the Complaint was notified, the Respondent sent an email communication on March 10, 2011 indicating in part as follows: “Regarding domain, . The domain has already been transferred to Danske Spil A/S ([…….]) and I consider this dispute as closed.” After the Center notified the Respondent’s default, the Respondent sent an email on April 4, 2011 saying: “I don't understand why the case carries on. […….] has already confirmed receiving the domain and there is no dispute.” On April 7, 2011, the Respondent sent another email communication indicating: “Today I received (sic) different information from […..]. She claims that she has not received the domain, even though we gave her the EPP code and the domain transfer has completed.” 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
According to previous UDRP panels a registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant has registered trademark DANSKESPIL in Denmark. The earliest registration has priority from January 5, 2001, registration number VR 2001 00116, 20010105.
The disputed domain name includes the Complainant’s trademark in its entirety and as a dominant element. The disputed domain name differs from the registered DANSKESPIL trademark by the additional gTLD “.net”. Previous UDRP panels have ruled that the mere addition of the gTLD “.net” to the disputed domain name does not avoid confusing similarity, cf F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent has not responded and thereby failed to assert any such rights, or legitimate interests.
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of evidence shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)).
The Panel finds that the Complainant established such a prima facie case inter alia due to the fact that the
Complainant has not licensed or otherwise permitted the Respondent to use its trademark.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may be evidence of bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name after the Complainant registered its trademarks. According to the evidence filed by the Complainant, the Complainant owns a registration for the DANSKESPIL trademark since the year 2001. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Further, the Panel holds, as confirmed by previous UDRP decisions, that passive holding of a domain name with knowledge that the domain name infringes on another party’s trademark rights is evidence of bad faith registration and use. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and Companhia Brasileira de Bebidas - CBB v. Pedro Cuesta Unkhoff and IA LTDA. aka Indústria Amazônia Ltda, WIPO Case No. D2005-0634.
Under these circumstances, and taking into consideration the fact that the Respondent has not provided any evidence of any good faith use of the disputed domain name, the Panel considers on balance that the Respondent has registered and used the disputed domain name in bad faith. Thus, the Panel finds the third requirement of paragraph 4(a) of the Policy is satisfied. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Arne Ringnes
Sole Panelist
Dated: April 28, 2011
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