The Complainant is Carlsberg A/S, Denmark, represented by Thomsen Trampedach GmbH, Denmark.
The Respondent is Muslum Degin, Turkey. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2020. On January 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 17, 2020, 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. 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 proceedings commenced on January 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 11, 2020. Several email communications were received from the Respondent on January 18, 20, and 22, 2020, but the Respondent did not submit any formal response. Accordingly, the Center notified the Parties that it was proceeding to panel appointment on February 12, 2020. The Center appointed Marilena Comanescu as the sole panelist in this matter on February 25, 2020. 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 is a Danish brewing company founded in 1847, having more than 40,000 employees, products sold in more than 150 countries, and a market cap of USD 19.3 billion. The Complainant holds more than 200 trademarks for CARLSBERG, including for CARLSBERG GROUP, such as: - the International trademark registration number 838593 for the mark CARLSBERG with figurative element, registered on August 16, 2004, and designating many countries worldwide including Turkey, and covering goods and services in Nice clasases 25, 32, and 43; and - the International trademark registration number 811940 for the mark CARLSBERG-PROBABLY THE BEST BEER IN THE WORLD, registered on September 11, 2003, and designating many countries worldwide including Turkey, and covering goods in Nice class 32. The CARLSBERG trademark has been found as being well-known in its field of activity by previous UDRP panels. See for example Carlsberg A/S v. Xu Guo Xing,WIPO Case No. D2017-0301. The Complainant holds more than 250 domain names incorporating the mark CARLSBERG, such as The disputed domain name was registered on December 14, 2019, and, at the time of filing the Complaint, it was not actively used. According to evidence provided in Annex 9 to the Complaint, the disputed domain name was offered for sale for USD 3,500. Also, before the present proceedings, the Respondent contacted the Complainant’s representatives in several occasions in order to offer the disputed domain name for sale, without specifying the price and threatening to sell it to third parties and thus to damage the Complainant’s reputation. Annexes 5, 6, 7, and 8 to the Complaint support such allegations. The Complainant sent a cease and desist letter on December 22, 2019, and several follow up emails to the Respondent in order to request the transfer of the disputed domain name to the Complainant free of charge. The Respondent’s reaction was to suggest the transfer the disputed domain name in “very reasonable conditions”, insisting on the other thrid parties’ offers received in relation to the disputed domain name. The Respondent was involved in at least one UDRP dispute decided against it, see Amalgamated Bank v. Muslum Design,WIPO Case No. D2018-2875. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is confusingly similar to its well-known trademark CARLSBERG, the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith. B. Respondent The Respondent did not formally respond to the Complainant’s contentions. The Respondent submitted several email communications on January 18, 20, and 22, 2020, claiming it registered the disputed domain name “to create a great campaign and generate online revenue” without knowing about the Complainant. In a couple of days the Respondent claimed that, due to significant traffic on the website associated to the disputed domain name, it made an Internet search and noted the Complainant and therefore he decided to contact it directly to transfer the disputed domain name to the Complainant. The Complainant’s representatives requested the transfer of the disputed domain name free of any charge. 6. Discussion and Findings In view of the absence of a formal Response, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. The Panel will further analyze the potential concurrence of the above circumstances. A. Identical or Confusingly Similar The Complainant holds rights in the CARLSBERG trademark. The disputed domain name Numerous UDRP panels have considered that the addition of other terms (whether descriptive, pejorative, meaningless or otherwise) to trademarks in a domain name is not sufficient to escape a finding of confusing similarity. See section 1.8 of theWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Complainant holds trademark rights in CARLSBERG GROUP which is fully incorporated in the disputed domain name. Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g.,“.com”, “.info”, “.org”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. See section 1.11 of the WIPO Overview 3.0. Given the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark CARLSBERG, and virtually identical with the Complainant’s CARLSBERG GROUP trademark, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests The Complainant asserts that the Respondent does not hold any trademark rights, license or authorization to use the mark CARLSBERG, that the Respondent is not commonly known by the disputed domain name, and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services. Under the Policy, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of theWIPO Overview 3.0. The Respondent has not formally replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case. In the Respondent’s informal communications and from the evidence provided as Annexes to the Complaint, the Respondent claims he registered the disputed domain name in order to create an online campaign without knowing the Complainant and its trademark, and without providing arguments for choosing the disputed domain name. Further, within a few days of registering the disputed domain name, the Respondent contacted the Complainant’s representative in order to ask for a transfer offer and posted the disputed domain name to public sale on an auction website. These are not activities falling under the circumstances listed by paragraph 4(c) of the UDRP as demonstrating the Respondent’s rights or legitimate interests in the disputed domain name, nor an activity from which rights or legitimate interests could arise. For all these reasons, the Panel finds that the second element of the Policy is established, and the Respondent has no rights or legitimate interests in respect of the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith The Complainant has held trademark rights in CARLSBERG for decades. This Panel accepts the Complainant’s evidence that CARLSBERG trademark is well-knwon worldwide in its business. The disputed domain name was created in 2019 and incorporates the Complainant’s mark in its entirety. For the above, the Panel finds that the disputed domain name was registered in bad faith, knowing the Complainant and targeting its trademark. Paragraph 4(b)(i) of the Policy provides a circumstance of bad faith registration and use when the respondent has acquired the domain name primarily for the purpose of selling or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or to a competitor of that complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name. In the present matter, according to the evidence provided in the Complaint, the disputed domain name was offered for sale for USD 3,500. The Panel finds that this amount exceeds the out-of-pocket costs directly related to the disputed domain name. Furthermore, a few days after registering the disputed domain name, the Respondent contacted several representatives of the Complainant asking for transfer offers, threatening he had other proposals received from third parties. This can only be harmful to the Complainant, its trademark, reputation and business and constitutes additional evidence that the Respondent registered the disputed domain name primarily for speculation purposes, to resell it to the complainant for valuable consideration in excess of the documented out-of-pocket costs. Also, as provided in the Complaint, the Respondent has already been the subject of an adverse decision in a previous UDRP proceeding and this falls within the circumstances listed by paragraph 4(b)(ii) of the Policy and supports a finding that the Respondent has engaged in a pattern of bad faith behaviour. Further, it was consistently found by UDRP panels that the mere registration of a domain name that is identical or confusingly similar to a third party’s well-known trademark constitutes, by itself, a presumption of bad faith registration for the purpose of Policy. See section 3.1.4 of the WIPO Overview 3.0. For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii). 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 Marilena Comanescu
Sole Panelist
Date: March 10, 2020
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