Complainant is Mejeriforeningen Danish Dairy Board of Viby J, Denmark, represented by Zacco Denmark A/S, Denmark.
Respondent is Domain Manager, Y of Dunstable, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), internally-represented. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2014. On May 5, 2014, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. Due to technical issues, the request for registrar verification was resent to the Registrar on May 8, 2014. On May 8, 2014 the Registrar transmitted by e-mail to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on May 14, 2014. On May 30, 2014, Respondent requested a 14 day extension to file a Response, to which Complainant agreed, on June 2, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 17, 2014. The Response was filed with the Center on June 17, 2014. On July 7, 2014, Respondent submitted an unsolicited supplementary submission.
The Center appointed Robert A. Badgley, Petter Rindforth and David E. Sorkin as panelists in this matter on July 10, 2014. 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.
On July 12, 2014, Respondent submitted still more unsolicited materials, much of which was redundant of Respondent’s initial Response and prior supplemental submission. In its discretion the Panel decided to consider all of these materials. 4. Factual Background
Complainant is the Danish Dairy Board, part of whose activity is the safeguarding of policies and standards in relation to butter and other food products. Complainant is the owner of the trademark LURPAK, registered in a number of countries/regions, such as Denmark and the United Kingdom. One example is IR 1167472 LURPAK, registered on October 30, 2012. It is alleged, and not disputed, that LURPAK is a well-known mark, particularly in the United Kingdom where Respondent is located.
The Domain Name was registered on March 28, 2014. The Domain Name does not resolve to an active website. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has satisfied all three elements required for a transfer of the Domain Name under the Policy. B. Respondent
Respondent states that it was registered as a company on March 31, 2014. According to Respondent, it registered the Domain Name and thousands of other domain names in order to “create a domain name directory and a new system based on that directory to record the sending and receipt of e-mails.” This business plan “involves recruiting businesses and others who are large users of e-mails to be entered in an Internet directory and to adopt a recording system for e-mails in the same way that registered mail registers the sending and arrival of a letter.” In addition, Respondent states, “the e-mails would not be able to be read by the Respondent or anyone else associated with the system.”
Respondent also states that the Domain Name will not resolve to a website. Rather, the Domain Name is intended to serve as “a behind the scene technical link for Yoyo’s system to connect Lurpak with the Respondent’s directory and e-mail hosting service. The Internet user does not use the disputed domain name, it uses its own Yoyo e-mail address to send the e-mail to Lurpak which goes to Lurpak via the user’s own e-mail client or it may send the e-mail directly via Yoyo’s e-mail website once the user has logged on.”
In a Statement submitted with the Response, Respondent’s Managing Director asserts that Respondent will provide the foregoing services to the Internet user and the e-mail target company (here, Complainant) free of charge. The Managing Director adds, however, that “we do intend to commercialize the system by various means which will be explored as the system develops.”
Respondent’s Managing Director also avers that Respondent has engaged in significant preparatory activities and incurred significant expense in aid of this business model. Respondent’s alleged outlays to date total roughly GBP 78,000, and include: purchase of domain names with the generic Top-Level Domain (“gTLD”) , in the amount of GBP 50,000, and hiring seven staff members or contractors.
In its supplemental submission, Respondent discusses several other cases where its domain names have been challenged by trademark owners, and seeks to clarify its prior assertions about its plans to “monetize” the domain names in its portfolio. Apparently, in another proceeding, Respondent’s Managing Director had stated: “We do intend to make money by the value of having large numbers of active users, people linked to the service. Social media engagement through web flow; a charge could be levied here…”
Respondent’s supplemental submission sought to clarify this “tiny error” by stating that “naturally, there will be some commercialization of the website, but it will be within the Rules.” In sum, Respondent states, “Respondent is a business and like all businesses, needs to make a return on its investment.”
Respondent asserts that none of the three elements under the Policy has been satisfied by Complainant. These points will be taken up, to the extent pertinent to the Panel’s disposition of this case, below. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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. Identical or Confusingly Similar
The relevant part of the Domain Name is “lurpak.” The added gTLD (“.email”) – being a required element of every domain name – is generally irrelevant when assessing whethera mark is identical or confusingly similar, and in this case does nothing to distinguish the Domain Name from Complainant’s trademark.
Respondent has also clearly admitted that Complainant holds a valid trademark registration for LURPAK, and that the Domain Name contains the word “lurpak”.
The Panel therefore concludes that is identical to Complainant’s trademark LURPAK.
Accordingly, paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
Complainant has not authorized Respondent to register a domain name containing its registered mark LURPAK, nor is Respondent commonly known by . As noted above, Respondent’s apparent business plan is to register a large number of domain names with the “.email” gTLD and operate a domain name directory and an e-mail courier and confirmation service. A similar motive was advanced by Respondent in another case decided under the Policy, Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Giovanni Laporta / y,WIPO Case No. D2014-0686. In that case (where, somewhat inexplicably, Respondent had registered not only the domain name but also the domain name specific to one Sheraton Hotel location, ), the panel rejected Respondent’s “rights or legitimate interests” argument, offering the following apt observations:
“The main weakness in the Respondent’s argument is that nothing the Respondent has put before the Panel either explains or justifies why the Respondent actually has to register and own the disputed domain names for this purpose. The analogy with a directory does not hold: any person may indeed be free to compile a directory of domain names, or telephones or addresses or similar, but need not for that purpose actually own any related domain names, by registration or otherwise. To compile a list or directory of trademarks, or company names, or business or trading names, the compiler need not acquire any rights whatsoever in those names. In most cases it would in fact render the directory pointless if he did. Here the Respondent has not established beyond bald assertion, how and why he needs to own the registered domain names for the purpose of establishing his intended service. This is not a case where his rights or interests can be established by the nature of the intended or activated website to which the relevant domain name resolves. For the Panel to hold otherwise i.e. that the Respondent’s interests vest on mere registration of a domain name incorporating a third-party trademark would render the Policy ineffective based on his mere indications of intention, which cannot be permitted to occur.”
This Panel agrees with the Sheraton panel on this score. Nothing in the record here indicates why Respondent is compelled to register this Domain Name, , in order to carry out its prospective directory/courier/certification service.
The Sheraton panel also observed:
“Further, the Respondent asserts that it has registered many similar domain names, and the evidence before the Panel establishes that these registered domain names commonly incorporate other high profile trademarks. The Respondent submits that without a very large portfolio of such domain names its service cannot be viable. However, this reinforces the fact that the Respondent seeks to be in a position where the trademark owner is deterred from refusing its recorded delivery services, based partly on the Respondent’s prior possession of domain names incorporating that very party’s own trademark.”
Again, this Panel agrees with the Sheraton panel that it is not legitimate for Respondent to seek to put itself in a position where trademark owners like Complainant are induced to sign up for Respondent’s service (which is planned somehow to make money) because Respondent holds a domain name entirely incorporating that owner’s distinctive trademark. This Panel concludes, on the present record (as supplemented twice by Respondent), that the juxtaposition of the distinctive trademark LURPAK with the descriptive gTLD “.email” is likely to convey to Internet users the false impression that the Domain Name belongs to or is approved by Complainant.
To register another’s well-known trademark as a domain name and then to use that domain name by connecting it to a web service with the specific goal to earn money, from active users and advertising connected to the use of the trademark-related web service, cannot be considered as a legitimate interest. The Panel therefore finds that Complainant has established that Respondent has no rights or legitimate interests in .
Accordingly, paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to 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 documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
It is undisputed that Respondent had knowledge of Complainant’s trademark at the time the Domain Name was registered. For reasons largely overlapping with the Panel’s conclusion that Respondent lacks a legitimate interest in the Domain Name, the Panel also concludes that Respondent has registered and is using the Domain Name in bad faith within the meaning of the Policy and the non-exclusive factors of bad faith articulated in Policy, paragraph 4(b).
In this vein, it bears repeating that Respondent concedes that it intends to make a profit (a “return on investment” as Respondent put it) from its business in some manner, including a profit associated with the Domain Name at issue here. It also bears repeating that nothing in this record demonstrates why Respondent needs to own this Domain Name (which incorporates Complainant’s distinctive mark in its entirety) in order to carry out its anticipated directory/courier/certification service. As the Sheraton panel put it in similar circumstances:
“Respondent admits that it deliberately registered the disputed domain names, as it makes clear that a purpose of owning it was to oblige the Complainant to join its system. It professes to do this as part of a free service, but nonetheless it seeks to extract a benefit from the Complainant by the preemptive registration. The Panel would be reluctant to lend its approval to the registration of a domain name incorporating another party’s trademark for the purpose of being able to establish a system or scheme in relation to which the trademark owner becomes a supplicant. This would set the clock back on the Policy in a way that was never intended.”
In the instant case, as Respondent has registered the Domain Name with clear knowledge of Complainant’s prior trademark rights, with the specific goal to use the Domain Name to get more users of Respondent’s services and thereby earn money, the Panel concludes on this record that this is both bad faith registration and use.
Accordingly, paragraph 4(a)(iii) of the Policy is satisfied. 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 Complainant.
Robert A. Badgley
Presiding Panelist
Petter Rindforth
Panelist
David E. Sorkin
Panelist
Date: July 23, 2014
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