1.1 The Complainant is HMK Bilcon 2017 A/S of Gistrup, Denmark, represented by Hovmøller & Thorup, Denmark.
1.2 The Respondent is Peter Erlangsen of Walchwil, Switzerland. 2. The Domain Name and Registrar
2.2 The disputed domain names and (the “Domain Names”) are registered with CSL Computer Service Langenbach GmbH dba J (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2018. On October 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On October 4, 2018, 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 contact information for the Domain Names, which differed from the named Respondent and contact information in the Complaint.
3.2 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”).
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 6, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 7, 2018.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on November 19, 2018. 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 a Danish corporation and is a successor in title to another company called BHMK Bitcon A/S, which commenced trading in 1983. The Complainant acquired BHMK Bitcon A/S’s business including all intellectual property owned by it following BHMK Bitcon A/S’s bankruptcy in 1987.
4.2 It is not entirely clear what business the Complainant is engaged in, but in the Complaint it is described as “work[ing] with the bodywork for cars etc” (at least until 1983). From the websites currently operating and promoting the Complainant’s business, that business would appear to build and service various forms of tankers, trailers, and other mobile units.
4.3 The Complainant does not appear to be the registered owner of and does not expressly rely upon any registered trade marks.
4.4 The Respondent would appear to be an individual who is located in Switzerland. The Domain Names and were registered by the Respondent on August 31, 2010 and on December 16, 2010 respectively. At that time the Respondent was a member of the board of HMK Bilcon A/S. He was subsequently appointed as CEO of HMK Bilcon A/S in 2014. However, following that company’s bankruptcy in 1987, the Respondent has not been involved in the operation of the “HMK Bilcon” business.
4.5 Both of the Domain Names have since the date of registration been used for a website promoting the “HMK Bilcon” business, both before and after the Complainant’s acquisition of that business. That use continues as at the date of this decision. 5. Parties’ Contentions A. Complainant
5.1 The Complainant gives the limited description of it business as identified in the Factual Background section of this decision. It also explains how it acquired HMK Bilcon A/S’s business following that company’s bankruptcy and provides a letter from what appears to be the administrator in that company’s bankruptcy, which confirms that the Complainant acquired that company’s intellectual property, websites, and domain name rights.
5.2 The Complainant also describes the circumstances surrounding the Respondent’s registration of the Domain Names. It asserts an “understanding” on its part that the Respondent will not voluntarily agree to the transfer of the Domain Names into the names of the Complainant. However, no further explanation is provided as to the basis for that “understanding”, and no evidence is offered in support of that contention. Further, another professed “understanding” of the Complainant is that if the Respondent were contracted by the Complainant, “he [would] probably shut down the [Domain Names], instantly”. However, notwithstanding the seriousness of that allegation, again no explanation is provided as to why the Complainant understands this, nor is any evidence provided in this respect.
5.3 On the basis of these facts and assertions, the Complainant contends that the various requirements of the Policy are satisfied. B. Respondent
5.4 The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent the Panel from determining the dispute based upon the Complaint, notwithstanding the failure of any Respondent to lodge a Response.
6.2 To succeed in these proceedings the Complainant must make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names (paragraph 4(a)(ii)); and
(iii) the Domain Names have been registered and are being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14(b) 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
6.4 The way that the Complaint has been prepared, so far as claimed trade mark rights is concerned, is unsatisfactory. There is a claim of trade mark rights, but this is little more than assertion and no real attempt to explain what form these trade mark rights take. One interpretation of the Complainant is that trade mark rights are said to arise by reason of some form of property right in the Domain Names themselves. However, if that is so, this does not provide trade mark rights for the Policy.
6.5 Therefore, prima facie, the Complainant has failed to demonstrate trade mark rights for the purposes of the Policy.
6.6 That said, the Panel suspects that it is likely that the Complainant does own, or is able to at least claim rights in, a relevant trade mark. First, it would appear that the Complainant’s business is not insubstantial and the name “HMK Bilcon” has been used (together with the Domain Names) for that business for a number of years. Given this, were the Complainant to provide proper details as to the extent of its business and were also to contend (by reference to the relevant Danish legal principles or provisions) that under Danish law it is able to claim something akin or analogous to common law unregistered trade mark rights, this would most likely satisfy the Panel. The reasons for this are set out in section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and in Robin Food B.V. v. Bogdan Mykhaylets,WIPO Case No. D2016-0264.
6.7 Second, even though oddly no reference is made to it in the Complaint, there would appear to be a registered Danish trade mark (i.e., no. VR 1990 07219) for BILCON that is still registered in the name of the bankrupt company. If that is right and the letter from the bankrupt company’s administrator is accurate, presumably this is something that the Complaint could require be transferred to it. Indeed, it is a matter of some puzzlement to the Panel as to why that has not already occurred.
6.8 Given this, if the existence or non-existence of rights were determinative, it is likely that the Panel would have called for further submissions from the parties in this respect by way of Procedural Order pursuant to paragraphs 10 and 12 of the Rules. However, for reasons that are apparent in the rest of this decision, the Panel has concluded that this is not determinative, and therefore has not done so. B. Rights or Legitimate Interests
6.9 Given the Panel’s findings when it comes to registration in bad faith, it is not necessary to address the question of rights or legitimate interests. C. Registered and Used in Bad Faith
6.10 It is a requirement of the Policy that a complainant must demonstrates that a domain name has been both registered and used in bad faith. It is a requirement that many have contended leads to unfair results where a registrant who innocently registered a domain name starts using it in a manner that takes unfair advantage of the trade mark rights of others. Perhaps because of this there was a line of UDRP cases in 2009 and 2010 that suggested that demonstrating bad faith use alone was sufficient. However, the approach adopted in those cases has been rejected by panelists (see the penultimate paragraph of section 3.2.1 of the WIPO Overview 3.0). Indeed, the rejection of that approach is now considered to constitute such settled UDRP jurisprudence, that it is not uncommon for panels to make a finding of reverse domain name hijacking where it should have been clear to a complainant from the start that the relevant domain name was not registered in bad faith.
6.11 It is this requirement of demonstrating bad faith registration that is problematic for the Complainant, where the Complainant positively contends that the Domain Names were registered by the Respondent in 2010 at a time when he was apparently a member of the board of the Complainant’s predecessor in business.
6.12 The fact that he was a member of the board does not of itself preclude a finding of bad faith registration. Where an officer or an employee is tasked with registering a domain name on behalf of a company, does this in his or her own name rather than in the name of the company, this may indeed be bad faith registration (and this may be so even if it is subsequently used for the benefit of the company). However, this is likely to depend upon the nature of the instruction given and the knowledge or otherwise of the entity involved. If the relevant entity consented to such registration, it is difficult to see how this might constitute registration in bad faith.
6.13 It is undoubtedly inadvisable for a company to allow another entity to register a domain name for it in anything but its own name. It can lead to the sort of problems that the Complainant faces in this case. But it is nevertheless not an uncommon state of affairs. Accordingly, the mere fact that the Domain Names were not registered in the name of the Complainant’s predecessor in business does not of itself demonstrate bad faith.
6.14 Therefore, to justify a finding of bad faith registration the Panel would have expected the Complainant to have at least addressed the question of whether or not its predecessor in business consented to registration in the Respondent’s name. However, there is no attempt to do so in the Complaint. Nor for that matter is there otherwise any attempt to advance any specific allegation of initial registration in bad faith, let alone evidence the same.
6.15 In the circumstances, the Panel finds that the Complainant has failed to demonstrate bad faith registration. It follows from this that the Complainant has failed to make out the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
7.1 For the foregoing reasons, the Complaint is denied.
Matthew S. Harris
Sole Panelist
Date: November 23, 2018
Full & Egal Universal Law Academy