The Complainants are Terminalen Birkerød A/S of Birkerød, Denmark and Nic Christiansen Holding A/S of Kolding, Denmark, represented by Andersen Partners, Denmark.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / James Rittinger of Edmonton, Alberta, Canada. 2. The Domain name and Registrar
The Disputed 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 April 15, 2016. On April 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 18, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on April 19, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on April 21, 2016.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 12, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 13, 2016.
The Center appointed Anders Janson as the sole panelist in this matter on May 22, 2016. 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
The Complainant Terminalen Birkerød A/S is in the business of marketing and sales of vehicles, and is situated in Birkerød, Denmark. The company is a subsidiary to the other Complainant Nic Christiansen Holding A/S (below "NCH").
NCH is the registered proprietor of the Danish trademark TERMINALEN (figurative mark), registered on January 24, 2002, in the classes 09, 11, 12, 35, 36 and 37. NCH also applied for a European Union Trade Mark TERMINALEN (word mark), in the classes 12, 35, 36, 37, 39 on February 12, 2016.
Further, NCH is the registered owner of the domain name , registered on April 12, 1999.
The Disputed Domain Name was registered on April 7, 2016, with the registrar GoD LLC, with the registrant making use of a privacy service. The underlying registrant of the Disputed Domain Name has thereafter been disclosed as being the Respondent James Rittinger, who is the current registrant of record of the Disputed Domain Name.
The Complainant has submitted evidence showing that the Disputed Domain Name previously resolved to a website with the same look and feel of the Complainants' website, in particular making use of the Complainants' figurative trademark TERMINALEN. 5. Parties' Contentions A. Complainant
The Disputed Domain Name is identical to the company name Terminalen Birkerød, disregarding the generic Top-Level Domain ("gTLD") ".com". The trademark TERMINALEN is included in its entirety in the Disputed Domain Name, which also contains the city where the Complainant Terminalen Birkerød is situated.
The Complainants have not consented to the Respondent's use of the website at the Disputed Domain Name. The Respondent has registered, used and maintained the Disputed Domain Name in bad faith, leading visitors to the Disputed Domain Name to believe they were entering into agreements with the Complainants regarding the purchase of vehicles. As an effect thereof, the Respondent has received wired amounts from third parties.
The Respondent has intentionally attempted to attract Internet users to the website for commercial gain, by creating a likelihood of confusion with the Complainants' mark. The Respondent has no rights or legitimate interests in the Disputed Domain Name and the Disputed Domain Name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings A. Preliminary Issue: Consolidation of the Complainants
The Panel notes that the present case has been filed by two separate but commercially related entities. The Panel determines that in the circumstances of the present case it is appropriate for the present filing to be brought jointly by the Complainants due to the parent-subsidiary relationship between them, and in light of the Complainant NCH's licensing of its trademark to the Complainant Terminalen Birkerød. B. Substantive Findings
Given the Complaint and evidence submitted by the Complainants, and the Respondent's failure to file a Response, the Panel accepts as true the reasonable contentions of the Complainants. However, in order for the Panel to conclude that the Disputed Domain Name should be transferred, the Complainants must establish each of the following elements in accordance with Paragraph 4(a) of the Policy:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name has been registered and is being used in bad faith. C. Identical or Confusingly Similar
The Panel finds that the Complainant NCH has registered trademark rights to the figurative mark TERMINALEN.
The Panel further finds that the Complainant Terminalen Birkerød has the licensed right to use the trademarks held by NCH.
The Disputed Domain Name is , which contains the trademark TERMINALEN owned by the Complainant NCH and licensed by the Complainant Terminalen Birkerød. It also contains the city where the Complainant Terminalen Birkerød is situated, with a common adjusted spelling of the Danish letter "ø", i.e., "oe". The Disputed Domain name therefore contains the Complainants' registered trademark. The additional gTLD ".com" is insufficient to avoid a finding of confusing similarity.
The Panel therefore finds that the Disputed Domain Name is confusingly similar to the Complainants' trademark.
Accordingly, the Panel finds that the Complainants have satisfied the requirements under paragraph 4(a)(i) of the Policy. The Panel finds for the purposes of the Policy that "Terminalen" is the dominant textual component of the Complainant's trademark and the relevant component for comparison under the first element of the Policy. D. Rights or Legitimate Interests
In this case, the Complainants have submitted convincing argumentation and evidence of their respective right to the trademark TERMINALEN.
The Complainants have asserted that no permission has been granted to the Respondent to register the Disputed Domain Name. Further, the Complainants have stated that the Disputed Domain Name has been used for commercial gain and that the Respondent is fraudulently using the Disputed Domain Name website to attract Internet users to the website, by creating a likelihood of confusion with the Complainants' mark and business.
The Panel finds that the Complainants have made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name.
Therefore, the burden of production shifts to the Respondent to bring forward appropriate allegations or evidence of its rights or legitimate interests. The Respondent has not replied to the Complainants' contentions. The failure to file a response leaves the Panel to decide the case on the basis of the available record and the evidence provided by the Complainants. Upon consideration of the available record, the Panel is satisfied that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
Accordingly, the Panel finds that the Complainants have satisfied the requirements under paragraph 4(a)(ii) of the Policy. E. Registered and Used in Bad Faith
The Complainants have submitted evidence that the Respondent has been posing fraudulently as the Complainant Terminalen Birkerød on the website under the Disputed Domain Name. Therefore, the Panel finds that the Respondent is well aware of the Complainants and, their trademark and their activities.
The Panel finds that the Disputed Domain Name was registered in bad faith. The Respondent has used the website to delude visitors to believing it is the Complainant Terminalen Birkerød's website, in order to have visitors sending money in the belief a purchase has been made from Terminalen Birkerød.
The above constitutes evidence of registration and use of the Disputed Domain Name in bad faith in accordance with paragraphs 4(a)(iii) and 4(b)(iv) 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 the Complainant Nic Christiansen Holding A/S.
Anders Janson
Sole Panelist
Date: June 5, 2016
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