1.1 The Complainant is Nilfisk-Advance A/S of Brøndby, Denmark, represented by Bech-Bruun Law Firm, Denmark.
1.2 The Respondent is Domain Admin, Damon Nelson – Manager, Quantec, LLC/Novo Point, LLC of Dallas, Texas, United States of America / Whois Privacy Service Pty Ltd of Fortitude Valley, Queensland, Australia. 2. The Domain Name And Registrar
2.1 The disputed domain name (the “Domain Name”) is registered with F (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2015. On April 15, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 15, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 21, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 23, 2015.
3.2 On April 23, 2015, the Center received an email from a Mr Nelson which stated as follows:
“My position as court appointed manager of the portfolio of domain names controlled by the Receivership was vacated by the US District Court on 2/28/14. See Case 3:09-cv-00988-L Document 1368 Filed 02/28/14 IN THE UNITED STATES DISTRICT COURT, FOR THE NORTHERN DISTRICT OF TEXAS, DALLAS DIVISION. ...
I no longer represent this domain name, or any other domain name assets in the Portfolio LLCs or the Receivership. Please remove my name from this email thread, as well as all future correspondence concerning this particular domain name.
The receivership itself, was discharged March 27, 2015. See Case 3:09-cv-00988-L Document 1447 Filed 03/27/15 IN THE UNITED STATES DISTRICT COURT, FOR THE NORTHERN DISTRICT OF TEXAS, DALLAS DIVISION. ....”
In that email Mr Nelson requested that all “future domain name purchase or transfer questions” be referred to two email addresses.
3.3 The Center responded on April 24, 2015, stating that the Panel would be made aware of this email and that “any consideration of the Respondent’s identity / pending court case (for any Receivership issues) shall be for the Panel (once appointed) to determine”.
3.4 On April 24, 2015, the Center also noticed that the WhoIs details for the Domain Name had changed and asked for an explanation from the Registrar as to how this had happened given that paragraph 8(a) of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) provides that a domain name registration may not be transferred during a pending administrative proceeding. The Registrar responded by email on April 27, 2015. It claimed that “[t]he change in the whois contact was made in error and has been reverted back.” No further explanation was offered of what this “error” was.
3.5 The Center then proceeded to verify that the Complaint as amended satisfied the formal requirements of the Policy, 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”).
3.6 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 April 27, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 17, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 21, 2015.
3.7 Later that day the Center received an email from one of the email addresses mentioned in Mr Nelson’s earlier email of April 23, 2015. The email stated as follows:
“This is the first I have seen of this UDRP dispute.
Please forward to me all of the original documents and allow a reasonable time to examine and respond to the allegations.”
3.8 The following day the Center sent the Respondent an email detailing the steps it had taken to forward the relevant papers to the Respondent. That email also attached a further copy of the Complaint.
3.9 The Center appointed Matthew S. Harris as the sole panelist in this matter on June 8, 2015. 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
4.1 The Complainant is based in Denmark and a manufacturer of commercial and professional cleaning machines and cleaning equipment. It is over 100 years old. It now has production facilities in Asia, Europe and the USA and has sales companies in 44 countries. Its products are promoted under various brand names including NILFISK and ADVANCE.
4.2 The Complainant is the owner of various trade marks around the world that comprise or incorporate the terms “Nilfisk” or “Nilfisk Advance”. They include:
(i) Community Trade Mark No. 001044429 for the word mark NILFISK ADVANCE, filed on February 19, 1999 in classes 3, 5, 7, 11, 16, 37 and 42;
(ii) Community Trade Mark No. 002882504 for the word mark NILFISK, filed on October 8, 2002 in classes 3, 7 and 21; and
(iii) International Trade Mark No. 813249 for the word mark NILFISK, registered on July 4, 2003 in classes 3, 7 and 21 and designating over 40 countries including the United States.
4.3 The Complainant also the owner of and maintains a website promoting its products under the domain name . The Complainant has been the proprietor of that domain name since 1998.
4.4 The Respondent would appear to be an entity based in the United States.
4.5 The Domain Name was registered on December 6, 2005. It has been used at least recently for a pay-per-click landing page that contains links and searches related to cleaning products, including but not limited to the Complainant's products.
4.6 On Mach 15, 2015, the Complainant’s lawyers sent an email to the operator of the WhoIs Privacy service being used in relation to the Domain Name briefly setting out the Complainant’s claims and asking that the operator of that service to reveal who was behind that Domain Name. The operator of that service did not respond to that request notwithstanding that two chasers were also sent by email in this respect.
4.7 It appears that subsequent to the filling of a Complaint in these proceedings the page operating from the Domain Name changed to one containing German text. It may be that this had something to do with the change in WhoIs details recorded in paragraph 3.2 of this decision above. However, since then the page reverted to a pay-per-click landing page. That pay-per-click landing page continues to be in operation as at the date of this decision. 5. Parties’ Contentions A. Complainant
5.1 The Complainant contends that the Domain Name is confusingly similar to the trade marks it relies upon, including those identified in the factual background section of this decision above. So far as its NILFISK ADVANCE mark is concerned, it asserts that the Domain Name is simply the words in that mark in reverse combined with the “.com” Top Level Domain (“TLD”).
5.2 The Complainant further contends that the pay–per-click use being made of the Domain Name does not provide any right or legitimate interest in the Domain Name as it is said to involve use that profits upon and takes advantage of the reputation of the Complainant's trade marks. It also asserts that the Respondent has no trade mark rights in the “Advance Nilfisk” and that the registration and use of the Domain Name has been without the licence or consent of the Complainant.
5.3 The Complainant further maintains that the use made of the Domain Name shows that it has been both registered and used in bad faith. In short, it claims that the Domain Name has been registered and used “to profit from an illegal exploitation of the reputation related to the Complainant's well-known trade[ ]marks”.
5.4 It also contends that this is a case where the use of a proxy service demonstrates bad faith. B. Respondent
5.5 The Respondent did not reply to the Complainant’s contentions. 6. Discussion And Findings
6.1 Before considering the substantive issues in this case it is necessary to consider Mr Nelson’s email of April 23, 2015. It would appear from this email that the Domain Name is part of a larger portfolio of domain names that have been the subject of receivership proceedings in the United States. Domain names forming part of that portfolio have previously been the subject of the following proceedings under the Policy:
- Saia, Inc. v. Whois Privacy Services Pty Ltd / Damon Nelson - Manager, Quantec, LLC/Novo Point, LLC, WIPO Case No. D2014-1158;
- Amegy Bank National Association v. Domain Hostmaster, Whois Privacy Services Pty Ltd / Quantec, LLC/Novo Point, LLC,WIPO Case No. D2015-0100;
- Comerica Bank v. Domain Admin: Damon Nelson - Manager Quantec, LLC / Novo Point, LLC,WIPO Case No. D2015-0108.
6.2 Details of the history of those receivership proceedings is addressed by the panels in those decisions. However, in summary it would appear that the receivership process is over and that the domain names are back in the control of Quantec, LLC / Novo Point, LLC, who can be treated as the Respondent for the purposes of these proceedings. However, even if this were not the case, in the opinion of the Panel there is no good reason why this should prevent the Complainant’s claim from being evaluated and these proceedings from continuing. The Panel notes that in the Saia case supra, the panel reached a similar conclusion.
6.3 The Panel also concludes the there are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the present dispute based upon the Complaint, notwithstanding the failure of any person to lodge a Response.
6.4 Notwithstanding this default, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (Policy, paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (Policy, paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
6.5 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the panel shall "draw such inferences therefrom as it considers appropriate". A. Identical or Confusingly Similar
6.6 The Complainant clearly has trade mark rights in the marks NILFISK and NILFISK ADVANCE. The Panel accepts that the Domain Name can only sensibly be read as the terms "Advance” and “Nilfisk” in combination with the ".com" TLD. The fact that the term “Nilfisk” appears in the Domain Name is sufficient to justify a finding of confusing similarity to the NILFISK mark in this case for the reasons set out in some detail in Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227. Further, there is also confusing similarity with the NILFISK ADVANCE mark. The fact that the terms “Advance” and “Nilfisk” have been reversed in the Domain Name does not so change the natural reading of the Domain Name to preclude such a finding. The Complainant has, therefore, made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.7 The registration of a Domain Name for use in connection with a page that displays pay-per-click links does not provide a right or legitimate interest if that use is intended to capitalise on the reputation and goodwill of a third party's trade mark (as opposed to descriptive or generic terms in the domain name). In the respect, see paragraph 2.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). Indeed, such activity will usually constitute positive evidence of a lack of rights or legitimate interests (see, for example, this Panel's decision in Premier Farnell Corp. v. BlueH, Bluehost Inc / Newark del Peru S.A.,WIPO Case No. D2010-2111).
6.8 For the reasons that are set out under the heading "Registered and Used in Bad Faith" below, the Panel finds that the Domain Name has been registered with either this use in mind or some other use that would take unfair advantage of the reputation of the Complainant's NILFISK and NILFISK ADVANCE marks. In the circumstances, the Complainant has sufficiently shown that the Respondent has no rights or legitimate interests in the Domain Name and made out the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
6.9 The Panel accepts, that it is more likely than not that the Respondent was aware of the Complainant’s activities and marks prior to the registration of the Domain Name and that the Domain Name was registered with the Domain Name in mind. The reasons for this are as follows:
(i) The term “Advance Nilfisk” recorded in the Domain Name has no obvious generic or descriptive meaning. Given this, the most likely explanation of the choice of this term was that it represented a reversal of the words in the Complainant’s NILFISK ADVANCE mark; and
(ii) The Panel accepts that this is a product that had at least some degree of international fame as at the time of the registration of the Domain Name and had prior to the date of registration been using the domain name for a web site that promoted its products.
6.10 The Panel also accepts given this and the subsequent use of the Domain Name to display pay-per- click links connected with products and services that are related to the products which the Complainant provides under its marks, that it is more likely than not that it was with such pay-per-click use (or some similar use which sought to take advantage of the reputation of the Complainant’s marks) that the Domain Name was registered. Such activity falls with the scope of the example of circumstances that may indicate bad faith registration and use set out at paragraph 4(b)(iv) of the Policy.
6.11 This is sufficient for a finding of bad faith registration and use in this case. The Panel also relies upon the Respondent’s use of a privacy service in respect of the Domain Name. As is recorded in paragraph 3.9 of the WIPO Overview 2.0, although the use of such a service is not in and of itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith. The Panel accepts that use of a WhoIs service may well be a factor pointing to bad faith particularly where, as happened here, a complainant’s requests to the operator of that service that the identity of the respondent be revealed have been ignored and no explanation of this has been given. However, it would appear that on this occasion the Complainant made its request at about the time that the receivership was being discharged. Accordingly, on this occasion the Panel has not relied upon that failure in coming to its conclusions on bad faith.
6.12 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
7.1 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.
Matthew S. Harris
Sole Panelist
Date: June 19, 2015
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