Complainant is Imerco A/S of Herlev, Denmark represented by Moalem Weitemeyer Bendtsen Advokatpartnerselskab, Denmark.
Respondent is Imer Co. of Charlestown, Saint Kitts and Nevis, internally represented. 2. The Domain Name and Registrar
The disputed domain name (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 September 20, 2013. On September 23, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response confirming Respondent as the registrant and provided 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 7, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was October 27, 2013. The Response was filed with the Center on October 25, 2013. Complainant thereafter submitted a supplemental filing on November 1, 2013.
The Center appointed Alexandre Nappey as the sole panelist in this matter on November 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 paragraph 7 of the Rules. 4. Factual Background
Complainant is Imerco A/S, a Danish Public Limited company based in Herlev, Denmark. Complainant has been active in the ironmongery business since 1928 and currently operates up to 150 stores in Denmark.
Complainant holds a number of registered trademarks based on or incorporating the word “Imerco”, among which are the following:
- IMERCO Danish word trademark registration No. VR 1993 03024 registered on July 26, 1993, for products and services in class 02, 03, 05, 06, 07, 08, 11,13,14,16,18, 20, 22, 23, 24,25, 26, 27, 28, 31,34, 37 and 38; and
- IMERCO community trademark registration No. 0917964 registered on February 12, 2007, for services in class 35;
Complainant provides also numerous registrations for trademarks combining IMERCO with other words and/or signs: IMERCO PLUS, IMERCO + and various drawings of the mark.
Complainant also owns various country code top-level domain names consisting or including IMERCO, notably, and , which operate Complainant’s main website since 1998.
The Disputed Domain Name was registered in 2002 and acquired by Respondent in 2012. It is currently inactive. 5. Parties’ Contentions A. Complainant
Complainant alleges that the Disputed Domain Name is identical or confusingly similar to Complainant’s trademark IMERCO. Having noticed that the Disputed Domain Name was displaying a website in Danish with links to websites offering products similar to those provided under the trademark, Complainant sent a cease and desist letter to the proxy service appearing on the WhoIs database at that time (June 2013). Further to several reminders, Complainant received a response from Respondent’s administrative contact, indicating that Respondent was unwilling to transfer the Disputed Domain Name. Thereafter, Respondent removed the content available from the website linked to the Disputed Domain Name.
According to Complainant there is no indication that Respondent has made any preparation to use the Disputed Domain Name in connection with a bona fide offering of goods and services.
There is no evidence that Respondent is intending to make a legitimate noncommercial or fair use of the Disputed Domain Name. It does not appear that Imer Co. is commonly known by the Disputed Domain Name.
The Disputed Domain Name has been registered on March 20, 2002, nine years after Complainant’s first registration of the IMERCO trademark. Furthermore, Respondent acquired the Disputed Domain Name about one year ago.
Complainant finally claims that it is very unlikely that Respondent was unaware of Complainant’s business and registered trademarks when it purchased the Disputed Domain Name.
Further, use of the Disputed Domain Name was intended to confuse and misdirect customers seeking Complainant’s website and suggest affiliation and endorsement by Complainant of Respondent’s website.
Therefore, it is Complainant’s opinion that Respondent’s registration and use of the Disputed Domain Name was in bad faith. B. Respondent
Respondent provided its Response in due time, in which it accepts the validity of Complainant’s trademark registrations. However, it alleges that Complainant’s rights to the Disputed Domain Name are not superior to any other company with the word “Imer” as a company name.
Respondent claims that the Disputed Domain Name contains its full company name (“Imer Co.”) and that a website has been in development by its web designer since May 2013.
Respondent also provides a copy of a Certificate of Good Standing issued by the Island of Nevis (Office of the Registrar of Companies) to refute allegations on lack of rights or legitimate interests.
It also points out that the action has been brought more than 11 years after the Disputed Domain Name zwas registered and one year after the acquisition of the Disputed Domain Name by Respondent.
At last, Respondent alleges that the Disputed Domain Name was not registered with Complainant’s trademark in mind nor to sell it to Complainant. Upon notice from Complainant, the holding page containing links to Complainant’s competitors was immediately removed.
Therefore, Respondent is not acting in bad faith but claims that Complainant attempts to reverse hijack a desirable domain name. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, Complainant must establish each of the following elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has marks;
(ii) Respondent has no rights or legitimate interest in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith. A. Preliminary issue: unsolicited supplemental filing by Complainant
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) provides the following:
“4.2 Will the WIPO Center put an unsolicited supplemental filing before a panel, and in what circumstances would a panel accept such filing?
Consensus view: As the UDRP Rules grant the panel sole discretion to request further statements and determine the admissibility of evidence which may include an unsolicited filing, such filings, when received from a party, would typically be put before the panel upon the panel’s appointment - at no additional charge - for determination as to admissibility, and assessment of need for further procedural steps (if any). Normally in such cases, a panel would include a ruling on admissibility of any such received filings in its decision, or in the event that an opportunity to reply is offered to the other party, in an administrative panel order. Panels have discretion whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. Most panels that have allowed unsolicited filings have also tended to require some showing of ‘exceptional’ circumstances. Panels which accept a supplemental filing from one side typically allow the other party the opportunity to file a reply to such supplemental filing. In either scenario, or on its own initiative, a panel may in its discretion request further evidence, information or statements from one or other of the parties by way of administrative panel order.”
With respect to the present case, the Panel notes that paragraph 12 of the Rules provides that the Panel, in its sole discretion, may request further statements or documents from either Party.
Complainant’s communication to the Center on November 1, 2013, which was forwarded to the Panel, was an unsolicited supplemental filing. It was not requested nor were there any “exceptional circumstances”. Therefore, it is not admitted to this proceeding in accordance with paragraphs 10 and 12 of the Rules. B. Identical or Confusingly Similar
Complainant has established its rights in the trademark IMERCO since 1993, which pre-date both the initial registration of the Disputed Domain Name in 2002 according to the Parties and Respondent’s acquisition of the Disputed Domain Name in 2012.
The Disputed Domain Name is identical to Complainant’s trademark. It is well established that domain name suffixes may be disregarded for the purpose of this comparison.
The Panel concludes that the Disputed Domain Name is identical to a trademark in which Complainant has rights.
Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. C. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue” (Policy, paragraph 4(c)).
Respondent indicates that it has plans to use the Disputed Domain Name “as part of its business”.
Respondent alleges that it has rights or legitimate interests in the Disputed Domain Name on the basis of its “certificate of Good Standing” provided by the Registrar of Companies of Saint Kitts and Nevis on August 12, 2013, stating that the company has been established under the laws of the State on August 6, 2012.
First, “Imer Co.” is not strictly identical to the designation “Imerco”. “Co” stands for a “corporation” and may be understood as the legal structure of the entity in the name of which Respondent has registered the Disputed Domain Name. Therefore, if Respondent has rights in a business name, it may be for “Imer”, rather than “Imerco”.
Paragraph 4(c)(ii) of the Policy indicates that a party may demonstrate rights or legitimate interests in a domain name as a consequence of having been commonly known by the domain name. It is reasonable to consider that a party owning rights in a trademark or a business name has been known by that trademark or business name, and therefore by an identical domain name.
However, that presumption is not conclusive. It is sometimes the case that a domain name registrant has registered a trademark in circumstances indicating that the registrant was seeking to take unfair advantage of the owner of previously existing trademark rights. See for instance Chemical Works of Gedeon Richter Plc v. Covex Farma S.L.,WIPO Case No. D2008-1379.
The Panel finds that the facts in the present case indicate that Respondent established a company in Saint Kitts and Nevis to take an unfair advantage of Complainant’s previously existing trademark rights in IMERCO:
1. Respondent was certainly aware of Complainant’s trademark when it registered the name of its company and subsequently acquired the Disputed Domain Name; the only use of the Disputed Domain Name by Respondent was in relation to a parking page with qualified pay-per-click links to Complainant’s competitors. Even if Respondent claims that such use was immediately stopped upon receipt of Complainant’s notice, Respondent had full control and responsibility for any use in connection with the Disputed Domain Name.
2. The only use of the Disputed Domain Name by Respondent was to operate a parking page displaying pay-per-click links to competitors of Complainant; at the present time, the Disputed Domain Name is not used despite various statements of Respondent in the Response that its website is in development since May 2013.
3. Respondent has provided no evidence whatsoever of “use in commerce” in Saint Kitts and Nevis or elsewhere of the business name Imer Co. and the Disputed Domain Name nor provided any evidence to support its claim that its website has been in development since May 2013.
The Panel determines that Respondent’s registration of “Imer Co.” as a business in Saint Kitts and Nevis does not establish that Respondent has been commonly known by the Disputed Domain Name within the meaning of paragraph 4(c)(ii) of the Policy, nor does it otherwise establish that Respondent has rights or legitimate interests in the Disputed Domain Name.
Complainant has established that Respondent does not have rights or legitimate interests in the Disputed Domain Name. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides the following circumstances which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith:
“the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
While it does not appear that Respondent has acquired the Disputed Domain Name primarily for the purpose of selling, renting or transferring it to Complainant or a competitor, it results however from the circumstances of the case that Respondent has acquired the Disputed Domain Name with Complainant’s trademark in mind.
The fact that the present case was brought by Complainant many years after the Disputed Domain Name was registered is not relevant here, and contrary to Respondent’s claim, it is certainly not a case to apply a defense of laches, as the Disputed Domain Name has been acquired by Respondent only one year ago; that is exactly the time when the Disputed Domain Name started to be used in a way that Complainant could find detrimental to its rights in the trademark IMERCO.
As stated in Pernod Ricard v. Pernod Records,WIPO Case No. D2001-1471, several facts are contrary to good faith in this case. There is no evidence about the company Imer Co. run by Respondent. The Disputed Domain Name has been used only in bad faith by Respondent prior to legal notice by Complainant. Respondent did not provide any evidence of bona fide investment deserving protection or at the very least preparation to use the Disputed Domain Name in relation to a bona fide offering of goods or services.
Considering all circumstances, the Panel finds that Respondent’s actions constitute bad faith registration and use of the Disputed Domain Name. As a consequence, the Panel finds for Complainant under paragraph 4(a)(iii) of the Policy. 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 Complainant.
Alexandre Nappey
Sole Panelist
Date: November 25, 2013
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