The Complainant is Elkjøp Nordic A/S of Lørenskog, Norway, represented by Horten Advokatpartnerselskab, Denmark.
The Respondent is Name Redacted, Mexico. 2. The Domain Name and Registrar
The disputed domain name (the “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 July 16, 2013. On July 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 16, 2013, the Registrar transmitted by email to the Center its verification response confirming the name of the Respondent 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 July 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2013. The Response was filed with the Center on August 13, 2013.
On August 20, 2013, at the request of the Complainant, the Center suspended the proceeding until September 20, 2013. On August 30, 2013, the Complainant requested the Center to re-instate the proceeding and the Center did so on September 2, 2013.
The Center appointed Alan L. Limbury as the sole panelist in this matter on September 6, 2013. 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
Since 1994, the Complainant has established 29 stores in Denmark and 75 stores in Sweden as well as a website trading in consumer electronics under the name ELGIGANTEN.
Through its Danish subsidiary the Complainant has several trademark registrations, including Danish registration No. VR 2005 01853 registered on May 24, 2015, EU registration No. 005908678 for the word mark ELGIGANTEN, registered on May 30, 2007 and EU registration No. 005908116 for the figurative mark ELGIGANTEN MEGA STORE, registered on August 14, 2008. The Complainant’s parent company owns EU registration No. 011148913 for the figurative mark ELGIGANTEN, registered on March 6, 2013, based on a filing dated August 29, 2012.
The Domain Name was registered on January 17, 2013. Prior to this Complaint, it resolved to a website offering consumer electronics. 5. Parties’ Contentions A. Complainant
ELGIGANTEN is an extremely well known mark that enjoys wide protection.
The Domain Name is confusingly similar to the Complainant’s ELGIGANTEN mark and the Respondent has no rights or legitimate interests in the Domain Name, which was registered and is being used in bad faith. No licence to use the mark has been given to the Respondent, who is not commonly known by the Domain Name and did not use it before it was registered on January 17, 2013.
The website to which the Domain Name resolves offers the same goods and services as the Complainant and displays the ELGIGANTEN figurative mark in the left corner, thereby giving the impression that the website is an official Elgiganten site. By using the Complainant’s trademark in the Domain Name, the Respondent intentionally attempts to attract, for commercial gain, consumers to the Respondent’s web shop by creating a likelihood of confusion with the Complainant’s trademark. This is confirmed by the display of the ELGIGANTEN figurative mark in the left corner of the Respondent’s website and by a reference to one of the Complainant’s physical stores under “Our Stores”. Further, an address in Denmark is given which, on inspection, does not appear in any way connected to the business of Elgiganten Wholesale, and the telephone number for the support hotline is that of a Danish company which appears to have no connection to Elgiganten Wholesale. The website states that the business has its headquarters in Denmark, yet the CBR number given is not a Danish CBR number and no company with a similar name has been registered in the Danish Business registry. B. Respondent
The Respondent says he has no title or possession of the Domain Name; he has no relation to or makes use of it; he does not know the Complainant and should be disregarded from this procedure and that the alleged email addresses of the Respondent contained in the Notification of Complaint and Commencement of Administrative Proceeding from the Center are unknown to the Respondent. 6. Discussion and Findings Preliminary Matter – Redaction of the Respondent’s Name
As in Moncler S.r.l. v. Name Redacted,WIPO Case No. D2010-1677, Boehringer Ingelheim Pharma GmbH & Co. KG v. Name Redacted,WIPO Case No. D2012-0890 and Saudi Arabian Oil Company v. Name Redacted,WIPO Case No. D2013-0105, this is a case in which the Panel finds that the Domain Name was registered by a third-party without the involvement of the person identified in the WhoIs as the registrant of the Domain Name, against whom the Complaint was filed. The Panel has accordingly redacted the name of that person from the caption and body of this Decision. The Panel has attached as an Annexure to this Decision an instruction to the Registrar regarding transfer of the Domain Name that includes the name of that person so as to enable effect to be given to the Panel’s order. To this end, the Panel authorises the Center to transmit the Annexure to the Registrar and the parties but further directs the Center and Registrar, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that the Annex to this Decision shall not be published in this exceptional case.
Henceforth, references in this Decision to the Respondent are to the unknown person who registered the Domain Name in the name of the Respondent. Consideration of the Merits
Under the Policy, paragraph 4(a), the Complainant must prove each of three elements of its case in order to obtain the requested relief:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant. See Reuters Limited v Global Net 2000, Inc,WIPO Case No. D2000-0441. See also Microsoft Corporation v. Freak Films Oy,WIPO Case No. D2003-0109; SSL INTERNATIONAL PLC v. MARK FREEMAN,WIPO Case No. D2000-1080 and ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al.,WIPO Case No. D2000-0848. A. Identical or Confusingly Similar
The Complainant has produced registration certificates demonstrating that, through its subsidiary, it has rights in the ELGIGANTEN word mark. The Domain Name is not identical to that mark since it adds the descriptive word “Wholesale”. The hyphen is inconsequential. The Generic Top-level domain “.com” is typically disregarded; See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525.
The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone; See Wal-Mart Stores, Inc. v. Traffic Yoon,WIPO Case No. D2006-0812. The content of a respondent’s website is generally disregarded (See A&F Trademark, Inc. and Abercrombie & Fitch Stores, Inc. v. Justin Jorgensen, WIPO Case No. D2001-0900) unless that content might indicate an intention on the part of the respondent to confuse Internet users, in which case the conclusion that the domain name is confusingly similar to the trademark may more readily be drawn. (See RapidShare AG and Christian Schmid v. majeed randi, WIPO Case No. D2010-1089.)
Here the addition to the Complainant’s trademark ELGIGANTEN of the word “wholesale“ does nothing in the Panel’s opinion to detract from the distinctiveness of the Complainant’s mark. This alone justifies a finding of confusing similarity. Further, in this case the content of the Respondent’s website appears designed to reinforce the Internet user’s impression that the Domain Name belongs to the Complainant.
The Panel finds the Domain Name to be confusingly similar to the Complainant’s ELGIGANTEN mark. The Complainant has established this element. B. Rights or Legitimate Interests
The Panel accepts that the Complainant’s ELGIGANTEN mark is distinctive and well-known. The Complainant’s assertions are sufficient to constitute a prima facie showing of the absence of rights or legitimate interests in the Domain Name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that he does have rights or legitimate interests in that name; See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and the cases there cited. The Respondent has made no attempt to do so.
As mentioned, the content of the website to which the Domain Name resolved at the time of this Complaint appeared designed to reinforce the Internet user’s impression that the Domain Name belongs to the Complainant. The website is presented as if it were an official website of the Complainant. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847 ( Use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services).
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant has established this element. C. Registered and Used in Bad Faith
The Panel accepts the Complainant’s submission that, by using the Domain Name as described above, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that website and of the products offered on that website. Under paragraph 4(b) of the Policy this shall be evidence of both the registration in bad faith and use in bad faith of the Domain Name for the purposes of paragraph 4(a)(iii) of the Policy.
In the absence of any evidence of registration for a permissible purpose, the Panel finds that the Complainant has established this element. 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.
Alan L. Limbury
Sole Panelist
Date: September 16, 2013.
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