The Complainant is Den Braven Sealants B.V., Oosterhout, Netherlands, represented by Holla Advocaten, Netherlands.
The Respondent is Bross Holding AD, Varna, Bulgaria. 2. The Domain Names and Registrar
The disputed domain names and are registered with PDR Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2012. On October 31, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 1, 2012, 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.
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 November 6, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 26, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 28, 2012.
The Center appointed Marilena Comanescu as the sole panelist in this matter on December 6, 2012. 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.
The language of the proceeding is English pursuant to paragraph 11 of the Rules. 4. Factual Background
According to its assertions, the Complainant is one of the worldwide biggest producers of chemical products. The Complainant is using the trade name “Den Braven” since 1974, the sign “Den Braven” being also a part of the company name and the family name of its two directors.
The Complainant owns trademark registrations for or including DEN BRAVEN worldwide, including the Benelux mark ZWALUW DEN BRAVEN no. 0969822 filed on July 25, 2000 for goods in classes 1, 2, 17 and the Community Trademark DEN BRAVEN no. 10166271 filed on August 1, 2011 for goods in classes 1, 2, 3, 8, 17, 19 and 20.
Both disputed domain names and were created on March 4, 2000. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(i) The disputed domain names and are identical (or at least confusingly similar) to its trademark DEN BRAVEN:
The Complainant is one of he biggest worldwide manufacturers of chemical products using the trade name “Den Braven” since 1974. The Complainant holds trademark registrations for numerous trademarks for or including DEN BRAVEN mark and covering a wide range of goods.
The disputed domain names are identical (or at least confusingly similar) from visual and auditory point of view to Complainant’s trade name and trademark.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names:
The Respondent is not making a legitimate noncommercial or fair use of the disputed domain names; in fact at the time of filing the Complaint the disputed domain name was used for a parking page and the disputed domain name was completely inactive.
As the disputed domain names were registered since 2000 and, according to Complainant’s knowledge they have not been used ever since, it is unlikely that the Respondent is preparing to use the name in connection with a bona fide offering of goods and services.
The Respondent attempted to register several trademarks of the Complainant in Bulgaria, including inter alia, for the words “Den Braven” and the matters were settled before the courts of law, the decisions stating mainly that the Respondent has acted in bad faith when trying to acquire such rights.
(iii) The disputed domain names were registered and are being used in bad faith:
The registration and (non-)use of the disputed domain names have the primarily purpose of disrupting the Complainant’s activity.
The Complainant was founded in 1974 and is specialized in production of high-quality sealants, being present on more than 100 markets worldwide, including in all Balkan States and Eastern Europe, where the Respondent is also active. The Respondent was incorporated in 1996 and is a supplier of chemical raw materials and resins. Thus, both entities are offering competing products on the same markets and therefore they are direct business competitors.
The Complainant’s trademark is not a dictionary word found in the English or Bulgarian dictionaries, nor a generic term or a common name therefore the disputed domain names are obviously connected with the well-established trade name and trademark DEN BRAVEN. The registration and/or use of the disputed domain names by the Respondent is implying opportunistic bad faith.
By registering the disputed domain names under generic top level domains and by occupying markets in which it is not active itself, the Respondent is preventing the Complainant to reflect its corresponding trademark through such generic top level domains and is infringing not only the European and Bulgarian DEN BRAVEN trademarks, but also the Benelux marks.
The Bulgarian Court of Appeal has decided- several times –that the Respondent has acted in bad faith against the Complainant trying to acquire rights over, inter alia, the DEN BRAVEN trademark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In accordance with paragraph 4(a) of the Policy, the Complainant must prove to the Panel that the following three circumstances are cumulatively met in order to obtain the transfer or cancellation of the disputed domain names:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent does not have rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used by the Respondent in bad faith.
The Respondent’s failure to respond does not automatically result in a decision in the favor of the Complainant, the latter must establish each of the three elements provided by paragraph 4(a) of the Policy, above listed.
Consequently, the Panel shall further analyze the eventual concurrence of these circumstances in the present case. A. Identical or Confusingly Similar
There are two requirements that a complainant must establish under this element, namely: that it has rights in a trademark, and, if so, that the disputed domain names are identical or confusingly similar to its mark.
The Complainant has rights in the DEN BRAVEN trademark, holding registrations for or containing “den braven” words worldwide since 2000.
The disputed domain names and are formed of the Complainant’s trademark in its entirety and without any alteration at all.
Further, the indicators for generic top level domains (e.g. “.com”, “.info”, “.net”, “.org”) may be disregarded when considering the identity / confusing similarity between a trademark and a domain name.
For all the above, the Panel finds that the disputed domain names and are virtually identical to the Complainant’s trademark DEN BRAVEN.
Accordingly, the Panel finds that the first element of the Policy is established, and the Complainant has proven that the disputed domain names are identical to its trademark, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Complainant has provided a prima facie case under this element of the Policy showing that it has had no relationship with the Respondent and has not granted the Respondent any right to register and use domain names containing its DEN BRAVEN trademark. Therefore, in line with prior UDRP decisions, the burden of production on this element shifts to the Respondent to demonstrate its rights or legitimate interests in the disputed domain names.
There is no evidence before the Panel to suggest that the Respondent has made a bona fide use of the disputed domain names, or has been known by these disputed domain names, or is making any legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
At the time the Complaint was filed, the disputed domain name was inactive and the disputed domain name was used in connection to a parking page displaying sponsored listings. According to the information provided in the Complaint, the Respondent is a direct competitor of the Complainant who has made several attempts to acquire in bad faith trademark rights over the DEN BRAVEN trademark in Bulgaria, and therefore the use of both disputed domain names (passive holding and use in connection to a pay-per-click (PPC) website) definitely do not fall within the bona fide use principles.
Although properly notified by the Center, the Respondent failed to submit any Response in the present procedure. Considering the other relevant circumstances of the case, the silence of the Respondent may support a finding that it has no rights or legitimate interests in respect of the disputed domain names. See also Alcoholics Anonymous World Services, Inc., v. Lauren Raymond,WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S.,WIPO Case No. D2000-0011.
For all these reasons, the Panel finds that the second element of the Policy is established, and the Respondent has no rights or legitimate interests in respect of the disputed domain names, pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires proof of bad faith in both the registration and use of the disputed domain names.
When assessing the bad faith in the registration requirement, the following should be considered (1) whether the Respondent knew of the Complainant and its trademark, and (2) whether the Respondent targeted the Complainant to benefit from confusion generated by the similarity between the disputed domain names and the trademark. See Avon Products, Inc. v. Mary Ultes,WIPO Case No. D2009-0471.
According to the evidence provided in the Complaint, the Complainant’s oldest trademark was registered in July 2000, whereas the disputed domain names were created in March 2000. However, according to the Complaint and evidence before the Panel, the Complainant is performing its activity under the trade name DEN BRAVEN ever since 1974, is well known on the relevant market and is present on more than 100 markets worldwide, including in Bulgaria (where the Respondent is located) since 1996. The trademark DEN BRAVEN is not a dictionary, generic or common term, having no meaning in the relevant field of industry. In the same time, the Respondent seems to be a direct competitor of the Complainant and, shortly after registering the disputed domain names, it has tried to obtain in bad faith the registration of, inter alia, the trademark DEN BRAVEN.
Accordingly, it is not difficult for this Panel to infer that indeed the Respondent had knowledge of the Complainant’s trademark and business and the disputed domain names were registered with the Complainant’s trademark in mind and that the aim of the registrations was to take advantage of the confusion between the disputed domain names and Complainant’s rights.
At the time the Complaint was filed, the disputed domain name was inactive while the disputed domain name was used for a sponsored listing website. According to the Complainant’s knowledge, the websites corresponding to the disputed domain names were inactive since their registration in 2000.
Paragraph 4(b) of the Policy sets out a nonexclusive list of circumstances that shall be evidence of bad faith registration and use of a domain name. One was mentioned in the Complaint, respectively that the Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor (paragraph 4(b)(iii) of the Policy). Indeed, this seems to be the case in this file particularly because the Respondent is distributing goods analogue to and mutually replaceable with those manufactured and distributed by the Complainant, both entities are activating on the same markets covering Balkan and East European countries and the Respondent is not actively using the websites corresponding to the disputed domain names since 2000.
Further, the Respondent chose not to participate in these proceedings and has not contested any of the allegations made by the Complainant, and did not provide any evidence whatsoever of any legitimate noncommercial, or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or tarnish the Complainant’s trademark. Such passive attitude of the Respondent can be considered further evidence of bad faith in the present circumstances. See also Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Kabushiki Kaisha Toshiba v. Shan Computers,WIPO Case No. D2000-0325; Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
Furthermore, there are several court decisions involving the parties, all ruling that the Respondent has tried to acquire in bad faith rights over the Complainant’s trademarks in Bulgaria, including inter alia the DEN BRAVEN mark.
For all these reasons, the Panel finds that the third element of the Policy is established on the record in these proceedings, and accordingly that the disputed domain names were registered and are being used in bad faith, pursuant to the Policy, paragraph 4(a)(iii). 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 names and be transferred to the Complainant.
Marilena Comanescu
Sole Panelist
Date: December 17, 2012
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