The Complainant is Björn Borg Brands AB of Stockholm, Sweden, represented by IPQ IP Specialists AB, Sweden.
The Respondent is Jan Onstwedder, Just Underwear B.V. of Rijen, the Netherlands. 2. The Domain Name and Registrar
The disputed domain name is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2016. On September 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 7, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and noting that the language of the registration agreement for the disputed domain name is Dutch.
Pursuant to the Complaint submitted in English and the Registrar’s confirmation that Dutch is the language of the registration agreement, on October 7, 2016, the Center requested that the Parties submit their comments on the language of the proceeding. On October 7, 2016, the Complainant submitted its request for English to be the language of the proceeding, by referring to the Complaint. The Respondent did not submit any comment on the language of the proceeding.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on October 13, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 3, 2016.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on November 10, 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 Björn Borg Brands AB is based in Sweden. According to the Complainant its Björn Borg brand was established in the first half of the 1990s and today has a strong position in its established markets, particularly in the largest product group, underwear.
The Complainant has various word and device mark registrations for BJÖRN BORG, inter alia European Union trademark No. 000798660, registered on December 16, 1999.
The Respondent Jan Onstwedder, Just Underwear B.V. is a reseller of underwear located in the Netherlands.
The disputed domain name was registered on June 20, 2016. At the time of filing of the Complaint, the disputed domain name did not resolve to an active website. 5. Parties’ Contentions A. Complainant
The Complainant asserts that it has registered its trademark BJÖRN BORG in the form of a word mark and a device mark in a number of jurisdictions. It asserts that it has strong sales under that mark, which it has heavily promoted, in the underwear sector, and in particular in Sweden and the Netherlands. The Complainant has been active in this market by reference to its BJÖRN BORG trademark since the 1990s. The Complainant asserts that its mark is well known.
According to the Complainant the disputed domain name is confusingly similar to its registered trademark as it wholly and accurately incorporates that mark. The Complainant submits that the suffix “.store” is of no relevance to the question of similarity between the mark and the disputed domain name. It has often been decided by UDRP panels that the suffix is to be ignored for purposes of comparison, according to the Complainant.
The Complainant asserts that the Respondent is not known by the disputed domain name and has not conducted legitimate business by reference to that name. The Respondent has not been licensed to use the relevant trade mark of the Complainant in any manner or guise. According to the Complainant its BJÖRN BORG mark is a well-known mark and the Respondent cannot fail to be aware of it, and can thus not claim any rights or legitimate interests of his own in that regard.
The Respondent runs an online store that specializes in sales of underwear of various brands. According to the Complainant its BJÖRN BORG mark is well established in the clothing business. In the circumstances it cannot be a coincidence or random choice of the Respondent to register the disputed domain name.
The Responded answered the Complainant’s letter of demand by indicating he intended to open an online store by use of the disputed domain name and sought a collaboration agreement with the Complainant to that effect. The Complainant in its response refused to entertain that possibility. The Respondent then asserted in further correspondence that it had other plans for the disputed domain name and that the Complainant could not lay claim to any and every domain name that contained the terms BJÖRN BORG. The Respondent also asserted that it was not making any infringing use of the disputed domain name and that the Complainant still had available to it many other domain names including the terms BJÖRN BORG for registration. The Complainant then issued the present proceeding.
According to the Complainant, as a reseller of several brands of underwear online, the Respondent is well aware of the reputation of the Complainant’s BJÖRN BORG trademark. The Complainant asserts that the Respondent has also registered multiple other domain names incorporating clothing brand names and extensions such as “.kaufen” and “.store”. According to the Complainant this amounts to a pattern of conduct expressly forbidden by paragraph 4(b)(ii) of the Policy.
The Complainant asserts that the disputed domain name is passively held, but that in the circumstances, the relevant mark being widely known with a strong reputation, such holding still amounts to use in bad faith. There is, according to the Complainant, no possible legitimate use of the disputed domain name incorporating its trademark open to the Respondent. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
The Respondent is based in the Netherlands and the Complainant in Sweden. The Complainant conducts its business well beyond the borders of the latter country. The Respondent replied to the Complainant’s correspondence in competent English. The Respondent never raised any language issues in the course of that correspondence. The Respondent has not replied to the Center’s communication regarding the language of the proceedings or the Complainant’s request for English and the Respondent chose not to file a Response. In the circumstances there is no unfairness in this proceeding being conducted in English and the Panel decision being rendered in that language. In accordance with paragraph 11 of the Rules, the Panel decides that English shall be the language of the proceeding. 6.2. Substantive Issues A. Identical or Confusingly Similar
The disputed domain name is identical to the registered trademark BJÖRN BORG of the Complainant. The only difference is the absence of a space between the two terms that make up the relevant mark, but that is simply an incident of its rendering in the online environment. The suffix or extension “.store” is typically not to be taken into account for the purposes of comparison under the Policy; if it were, it does nothing other than further strengthen the suggestion of a legitimate connection between the Complainant and the disputed domain name, which does not in fact exist.
Therefore the Panel holds that the disputed domain name is identical to the Complainant’s trademark. B. Rights or Legitimate Interests
The Respondent is not known as “Björn Borg” and does not conduct business under that name. The Respondent would be well aware of the Complainant’s rights in the terms BJÖRN BORG as a trademark, since he is engaged in the business of selling underwear emanating from various brands online. The Respondent has not in fact made any use of the disputed domain name. Although in pre-commencement communication the Respondent indicates that it intends to make some presumably legitimate use of the disputed domain name in the future, it chose not to participate in this proceeding and has not come forward with any evidence of demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Therefore the Panel holds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Respondent is in the business of offering underwear for sale via the web. In any case, the Respondent entered into correspondence with the Complainant offering a collaboration in relation to the sale of BJÖRN BORG underwear via an online store. It is clear that the Respondent knows all about the Complainant’s underwear business and is familiar with the reputation attaching to the BJÖRN BORG brand of such clothing items. The reputation of the Complainant’s relevant trademark was well established before the registration date of the disputed domain name and the Complainant asserts that the Netherlands, where the Respondent resides, is one of its prime markets.
Further, the Respondent offered to come to an agreement with the Complainant to collaborate around the establishment of an online store for BJÖRN BORG goods resolving to the disputed domain name. The Respondent has no basis for proposing such an arrangement as he has no rights in the mark reproduced in the disputed domain name. Those rights belong exclusively to the Complainant. Further, the Respondent has, according to the Complaint, registered a number of other well established fashion brands with the “.store” or “.kaufen” extensions, presumably with a view to similar unfounded approaches to trademark owners. It is apparent that the Respondent is engaged in an attempt to extend his business opportunities at the expense of trademark owners. Its actions are in bad faith in this regard as it has no rights, claims or legitimate interests in the relevant marks.
Therefore the Panel holds that the disputed domain name was registered and used in bad faith. 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.
William A. Van Caenegem
Sole Panelist
Date: November 23, 2016
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