The Complainant is Carlsberg Breweries A/S of Copenhagen, Denmark, represented by Wallberg IP Advice, Denmark.
The Respondent is n/a, Panayiotis Christodoulou of Paphos, Cyprus, represented per se. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2013. On March 25, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 25, 2013, 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 April 5, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response April 25, 2013. The Response was filed with the Center April 23, 2013.
The Center appointed James A. Barker, Warwick A. Rothnie and Tony Willoughby as panelists in this matter on May 8, 2013. The Panel finds that it was properly constituted. Each member of 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 brewing company founded in 1847 with its headquarters in Copenhagen, Denmark. In 2012, the Complainant was the 4th largest brewery group in the world. The Complainant has a registered mark for SOMERSBY, including a mark registered in the European Community. The Complainant also holds several domain names containing the SOMERSBY mark, including . The mark is particularly applied to the Complainant’s “Somersby” apple cider.
The disputed domain name was first registered in February 2005. The ownership of the disputed domain name was obtained by the Respondent in October 2012.
The current business of the Respondent is not clear, but the Respondent provides evidence of having obtained a Master of Electrical and Electronic Engineering. The Respondent is the registrant of a number of geographic domain names. 5. Parties’ Contentions A. Complainant
The Complainant says that the disputed domain name is relevantly identical to its mark.
The Complainant, secondly, says that the Respondent has no rights or legitimate interests in the disputed domain name. In this connection, the Complainant says that the Respondent has no permission from it to use its trademark, did not use the disputed domain name as a trademark, company name, business or trade name prior to the registration of the disputed domain name, and is not commonly known by reference to the disputed domain name.
The Complainant notes that, although Somersby is the name of at least two very small geographical locations, the Registrant has his address in Cyprus, and thus does not have any immediate natural link to any of the places named Somersby. The Complainant also says that the Respondent’s website does not have any concrete content and the Registrant can thus not legitimately claim to have invested money, time or effort in a geographically-themed website. The website appears to be setup with the sole purpose of “legitimizing” the purchase of the disputed domain name, since the Respondent has also offered the disputed domain name for sale.
Thirdly, the Complainant claims that because of the distinctive nature and widespread use of its SOMERSBY mark, it is inconceivable that the Respondent registered the disputed domain name without knowledge as to the existence of the Complainant and the Complainant’s trademark. The Complainant says that this is supported by the fact that the term “Somersby” on the Internet is predominantly related to the Complainant’s brand. The disputed domain name was acquired primarily for the purpose of selling it to the Complainant. The basis for this claim is correspondence from someone apparently representing the Respondent, with an email initially on October 22, 2012 to the Complainant’s then Vice President, International Premium Brands. In that email, the Respondent’s representative states that “I wanted to get in touch with you to let you know that we've been hired by the owner of S to market this premium domain name and are currently in the process of contacting several potential buyers who might benefit from owning such a name.” B. Respondent
The Respondent says that the disputed domain name was first registered in 2005 when the SOMERSBYtrademark didn’t exist. The Complainant’s trademark SOMERSBY was registered in November 2007 for alcoholic beverages.
The Respondent says that there are hundreds of other companies that use the word “Somersby” in their names. Somersby is a name for geographical places and others. The Respondent refers to various streets, roads and towns by that name. The Respondent also claims to be a fan of Lord Tennyson and his poetry and states that “There are hundreds of books and articles that were written for Lord Tennyson’s life and all of them are referred to Somersby village.”
The Respondent provides evidence that he was studying and living in Manchester, United Kingdom of Great Britain and Northern Ireland from 2007. The Respondent says that he returned to Cyprus in 2012 to continue his studies as a PhD student.
The Respondent provides evidence of owning other geographical domain names, including , and . The Respondent says that he bought the disputed domain name through S because Somersby is a geographical, descriptive and generic word and it was familiar to him. Furthermore Somersby Cider was introduced in the United Kingdom in March 2013, months after the Respondent bought the disputed domain name. When the Complainant registered the SOMERSBY trademark in Cyprus and started promoting the product in 2011 the Respondent was still studying and living in Manchester, United Kingdom.
In relation to the Complainant’s claim, that Google searches on the Internet give results that predominantly related to the Complainant’s brand, the Respondent says that Google’s page rank system is subject to several optimizations (i.e., search engine optimizations) to push a specific website to a higher ranking. The Respondent argues that a company like the Complainant can take advantage of its wealth to pay for such an optimization to satisfy its marketing strategies for its product. Other search engines like “B” confirm the geographical location in the top results.
The Respondent says that his domain broker found several websites and businesses that contained the word “Somersby” and tried to get in touch with them just to see if there was any interest in the sale of the disputed domain name. The Respondent provides a list of email addresses for persons he said were contacted by his domain broker, but does not provide direct evidence of such correspondence. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed 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 was registered and is being used in bad faith.
In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. These elements are discussed in turn below. A. Identical or Confusingly Similar
There is no dispute that the Complainant has rights in its SOMERSBY mark. The disputed domain name is relevantly identical to that mark. The Respondent provides no real argument to the contrary. As such, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Because of the Panel’s findings below, it is not necessary to address the issue of whether the Respondent has rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b)(i) of the Policy provides that there is evidence of bad faith where the Panel finds that a respondent registered a domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark, or to a competitor of that complainant, for valuable consideration in excess of its out-of-pocket costs.
The Complainant says that this is what the Respondent has done. The Complainant says that the Respondent must have been aware of its SOMERSBY mark. With this awareness, the Complainant says that the Respondent registered the disputed domain name primarily to sell it to the Complainant, through his domain broker.
On the other hand, the Respondent says that the disputed domain name has a number of associations unrelated to the Complainant’s mark, including a geographic association. The Respondent says that the English town of Somersby is associated with the poet Tennyson. The Respondent says that he registered the disputed domain name because of this geographic association. He provides evidence of having registered other domain names with geographic associations, claims to “deal” in such domains, and provides evidence of being a registrant of other geographic domains.
The Panel has considered the evidence on both sides. Despite some dubiousness in the Respondent’s claims, the Panel cannot rule out the possibility that the Respondent registered, and sought to exploit, the disputed domain name because of its geographic association. It follows that the Panel cannot find that the Respondent was primarily motivated by a specific intention to exploit the Complainant’s trademark. In making this finding, the Panel has taken the following into account:
Firstly, the Panel has considered “the established principle that a geographical name standing alone is difficult to protect under the UDRP unless there are extraordinary circumstances.” Ipiranga Produtos de Petróleo S.A. v. Domain Admin, Mrs. Jello, LLC,WIPO Case No. D2011-0163. This case involves such a domain name. The Respondent provides evidence that the disputed domain name is associated with a number of geographic locations.
Secondly, the disputed domain name was first registered in 2005, before (on the evidence) the earliest filing of the Complainant’s mark in 2006. While the Respondent’s registration of the disputed domain name was in October 2012, the earlier creation date of the disputed domain name in 2005 does suggest that it may have associations unconnected with the Complainant’s mark. The Complainant provides evidence of the reputation of its mark. It may be that the Respondent was aware of the Complainant’s mark. But mere awareness of the mark is not sufficient for a finding of bad faith under paragraph 4(b)(i) of the Policy: in the Panel’s opinion, this paragraph of the Policy requires that the Complainant’s mark was directly targeted. However, the alternate associations of the term “Somersby” make it difficult for the Panel to conclude that the Respondent was primarily motivated by an intention to exploit that particular mark.
Thirdly, it is plausible that the Respondent registered the disputed domain name because of its geographic connotation. The Respondent provides evidence of registering a number of geographic domain names. This suggests that the Respondent has some track record of targeting such domain names.
Fourthly, there are numerous cases under the Policy that indicate that the purchase and resale of generic domain names may be an entirely legitimate activity: Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964. The Respondent’s conduct indicates a clear intention to trade in the disputed domain name. Almost immediately after acquiring it, the Respondent sought to sell it through a domain broker. Given the number of potential associations of the disputed domain name, it seems at least possible that a number of them may have motivated the Respondent.
This does not mean that the Respondent provided a compelling case. As evidenced in the Complaint, a Google search for “somersby” in the United Kingdom indicates the Complainant’s Somersby apple cider in the top results. The Respondent’s website contains little more than the claim that “Somersby is a village in the East Lindsey district of Lincolnshire (England) and also the home of Lord Tennyson”. This begs the question as to why, if the Respondent sought immediately to sell the disputed domain name to a number of potential buyers, and claims the disputed domain name has a large number of associations, he bothered to dress up a website as particularly relating the small town of Somersby in England. The Respondent’s apparent attempts to dress up his website suggest that he may not have been confident of the rights he claims. The Respondent’s claim to be a fan of Lord Tennyson also appears a little too coincidental in this context. Further, the Respondent only provides indirect evidence of his domain broker contacting other parties regarding the potential sale of the disputed domain name.
Notwithstanding this, the burden is on the Complainant to show that the Respondent was primarily motivated to exploit the value of its trademark. While the Panel has doubts about the Respondent’s story, it is far from implausible, for the various reasons set out above. As such, the Panel cannot sensibly conclude that the Respondent primarily intended to target the Complainant’s mark. The Panel therefore finds that there is not sufficient evidence to show that the disputed domain name has been registered and is being used in bad faith. 7. Decision
For the foregoing reasons, the Complaint is denied.
James A. Barker
Presiding Panelist
Warwick A. Rothnie
Panelist
Tony Willoughby
Panelist
Date: May 22, 2013
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