The Complainant is Birger Christensen A/S of Copenhagen, Denmark represented by Mazanti-Andersen, Korsø Jensen & Partnere Law Firm of Denmark.
The Respondent is Oversee Domain Management, LLC of California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with NameK 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2011. On May 10, 2011, the Center transmitted by email to NameK a request for registrar verification in connection with the disputed domain name. On May 10, 2011, NameK 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 May 12, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 1, 2011. The Respondent did not submit any formal response but rather submitted communications with the Complainant and the Center prior to the due date for Response.
The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on June 9, 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 contends that it is a Danish company established on July 12, 1928, having been doing business under the Birger Christensen name since 1936, in connection with goods falling under international classes 3, 18, 24 and 25 (e.g., soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices; leather and imitations of leather; textile and textile goods).
The Complainant owns a Danish registration No. VR 1973 02972 for BIRGER CHRISTENSEN, granted on October 5, 1973.
The disputed domain name was registered by the Respondent with the registrar NameKing, Inc., on November 10, 2008. 5. Parties’ Contentions A. Complainant
The Complainant contends the following:
The Complainant contends that it is a Danish company established on July 12, 1928, having been doing business under the Birger Christensen name since 1936, in connection with goods falling under international classes 3, 18, 24 and 25.
The Complainant also contends that it has initiated online sales in 2010 and that it owns the domain name , registered on 1997, long prior to the Respondent registering the disputed domain name on November 10, 2008.
Furthermore, the Complainant contends that it owns trademark registrations for BIRGER CHRISTENSEN. Particularly, it contends that it owns a Danish registration No. VR 1973 02972, granted on October 5, 1973. Moreover, the Complainant contends that it has been using the trademark BIRGER CHRISTENSEN for goods in classes 3, 18, 24 and 25 since 1936, prior to registration of the disputed domain name.
In addition, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the Complainant has not licensed or given any authorization to the Respondent to use the trademark BIRGER CHRISTENSEN.
Moreover, the Complainant contends that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, is not commonly known by the disputed domain name , and is not making a legitimate, noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or tarnish the Complainant’s trademark.
In the connection, the Complainant contends that the Respondent is using the disputing domain name to resolve to a website that contains sponsored links that redirects users to other websites offering competing goods to those offered by the Complainant.
Additionally, the Complainant contends that the Respondent is not commonly known as or identified by “Birger Christensen”, nor has any rights in it.
The Complainant also contends that the Respondent has registered the disputed domain name in bad faith as it knew or should have known the Complainant and its trademark BIRGER CHRISTENSEN at the time of registering the disputed domain name .
In that connection, the Complainant contends that the disputed domain name resolves to a website containing pay-per-click links, which means that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website and other online locations, by creating a likelihood of confusion with the Complainant’s trademark BIRGER CHRISTENSEN as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
In light of the foregoing, the Complainant requests that the dispute domain name be transferred to it. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. However, the Respondent maintained written communications with the Complainant and the Center prior to the due date for Response, in which the Respondent expressly agreed to the transfer of the disputed domain name. 6. Discussion and Findings
For the Complainant to succeed in a UDRP proceeding, under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
Before addressing the above there is one preliminary issue to be addressed, whether or not it is necessary in light of the Respondent's consent to transfer of the disputed domain name that the Panel should proceed to a decision. Respondent's Consent to Transfer
As clearly noted by the Panel in Research in Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0320, when faced with a “unilateral consent to transfer,” panels have taken three different approaches.
“Some panels have granted the relief requested on the basis of Respondent's consent without a review and analysis of the facts supporting the claim. Williams Sonoma, Inc. v. EZ Port,WIPO Case No. D2000-0207; SLUMBERLAND FRANCE V. CHADIA ACOHURI,WIPO Case No. D2000-0195. Others have held that the consent to transfer is effectively a concession that the three elements of the Policy have been satisfied, and ordered transfer on this basis. Qosina Corporation v. Qosmedix Group,WIPO Case No. D2003-0620; DESOTEC N.V. v. JACOBI CARBONSS AB,WIPO Case No. D2000-1398. Still other panels have proceeded to analyze whether the evidence submitted satisfies the three elements of the Policy. Société Française du Radiotéléphone-SFR v. Karen,WIPO Case No. D2004-0386; Eurobet UK Limited v. Grand Slam Co.,WIPO Case No. D2003-0745.”
“If there has been a reason to suspect the respondent's motives and/or a reason to ensure that the respondent's bad faith conduct is not swept under the carpet, some panels have felt it appropriate to proceed to a decision (President and Fellows of Harvard College v. Texas International Property Associates, NA NA,WIPO Case No. D2008-0597).”
Moreover, having reviewed prior decisions and the Policy and the Rules, the Panel is of the view that it will not order transfer without consideration of the merits.
“Additionally, the Panel has sympathy with those panelists who have taken the view that once a complainant has invoked the Policy and paid the fee, it is entitled to what it paid for (Sanofi-aventis v. Standard Tactics LLC,WIPO Case No. D2007-1909; Davis+Henderson, Limited Partnership v. Whois Privacy Protection Service, Inc./Demand Domains Inc.,WIPO Case No. D2008-1162).
Finally, proceeding to a proper consideration of the three elements of paragraph 4(a) of the Policy reduces the risk of an injustice (e.g., the transfer of a domain name to a complainant with no relevant trade mark rights).”
For the above reasons given by the panel in Research in Motion Limited v. Privacy Locked LLC/Nat Collicot, supra, which the Panel adopts in this case, the Panel will proceed to consider the three elements of paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
The Complainant owns a Danish registration for BIRGER CHRISTENSEN, as noted under Section 4, “Factual Background” above.
The disputed domain name incorporates the trademark BIRGER CHRISTENSEN in its entirety.
In view of the foregoing, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights, and therefore, the Complainant has succeeded on this first element under the Policy. B. Rights or Legitimate Interests
According to paragraph 4(a)(ii), the second element that the Complainant must prove is that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Policy in its paragraph 4(c) sets out various ways in which a respondent may demonstrate rights or legitimate interests in a domain name.
Although the Policy states that the complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e., that a respondent has no rights or legitimate interests in respect of a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a clear prima facie showing of a respondent's lack of rights or legitimate interests in a domain name, the burden of submitting evidence therefore shifts to the respondent. The respondent must then by concrete evidence demonstrate its rights or legitimate interests in the domain name in order to refute the prima facie case.
The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the domain name and so the burden of production has effectively been shifted to the Respondent, who did not reply to the Complainant's contentions and, therefore, has not made such showing.
In that connection, the Complainant has submitted relevant evidence showing that the Respondent has not made a bona fide offering of goods or services. The website to which the disputed domain name resolves contains pay-per-click links that redirect Internet users to other online locations offering related goods to those offered by the Complainant.
In the terms of the Policy, such use in the present circumstances does not appear to be a noncommercial or fair use of the disputed domain name and, therefore, the Panel finds that the Respondent is trying to misleadingly divert consumers to the website to which the disputed domain name resolves. Moreover, the Panel finds that the Respondent is attracting Internet users to its website for commercial gain. Such use cannot be considered a bona fide use, or fair or noncommercial use.
Additionally, there is no evidence that the Respondent is commonly known as or identified by “Birger Christensen” or that it has any right in it. Furthermore, there is no evidence showing that the Respondent operates a business or any other organization under the disputed domain name.
These conclusions are reinforced by the fact that the Respondent has expressly agreed to the transfer of the disputed domain name to the Complainant.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the third element that a complainant must prove is that the domain name has been registered and is being used in bad faith.
The Policy in paragraph 4(b) sets out various circumstances, which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith.
The Complainant has identified itself as a Danish company established on July 12, 1928, having been doing business under the Birger Christensen name since 1936 in connection with goods falling under international classes 3, 18, 24 and 25.
Moreover, the Complainant has filed relevant evidence to the Panel’s satisfaction showing that it owns a Danish trademark registration No. VR 1973 02972, for BIRGER CHRISTENSEN, granted on October 5, 1973.
In view of the foregoing, in the absence of a rebuttal from the Respondent and the use of the disputed domain name, the Panel finds that the Respondent was aware or should have been aware of and targeting the trademark BIRGER CHRISTENSEN before registering the disputed domain name , which evidences bad faith registration.
Moreover, as stated by the Complainant and on the basis of the printouts of the website to which the disputed domain name resolves, and in the absence of a rebuttal by the Respondent, the Panel finds that by using the disputed domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line locations, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement.
For these reasons, the Panel finds that the Respondent both registered and is using the disputed domain name in bad faith and that the Complainant has therefore made out the third element of its case. 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 domain name be transferred to the Complainant.
Miguel B. O'Farrell
Sole Panelist
Dated: June 16, 2011
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