The Complainant is Nordic Nest AB, Sweden, represented by Hansson Thyresson AB, Sweden.
The Respondent is Anette Grostad, United States of America.1
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2021. On August 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 24, 2021, 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 Complainant on August 29, 2021, 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 amendment to the Complaint on August 30, 2021.
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 August 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2021. An initial Response was filed with the Center on August 31, 2021, and then an updated Response was filed with the Center on September 19, 2021.
The Center appointed Antony Gold as the sole panelist in this matter on September 30, 2021. 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.
The Complainant is a company based in Kalmar, Sweden. It was established in 2002 under the name “Scandinavian Design Center” but changed its trading name to “Nordic Nest” in May 2019. The Complainant markets and retails a variety of homeware products, including furniture, tableware, lighting, rugs, and textiles, which are sold in over 70 countries. It presently has 350 employees.
The Complainant has protected its NORDIC NEST brand through trade mark registrations in various countries including:
- European Union Trade Mark, registration number 013823778 for NORDIC NEST, in classes 21, 24, and 27, registered on July 9, 2015;
- United States Trade Mark, registration number 5887810 for NORDIC NEST in classes 21, 24, and 27, filed on March 1, 2019 and registered on October 22, 2019.2
The disputed domain name was registered on November 9, 2016. It resolves to a website branded as “Nordic Nest” which offers for sale a variety of products under the categories of “Gifts”, “Essentials”, “Kids”, “Lifestyle”, “Yarn Shop”, and “Scandinavian Candy”.
5. Parties’ Contentions A. ComplainantThe Complainant says that the disputed domain name is identical or confusingly similar to a trade mark in which it has rights. It refers to its NORDIC NEST trade marks, full details of one of these marks having been set out above, and says that its mark is incorporated in the disputed domain name in its entirety. The addition of the generic term “shop” in the disputed domain name does not serve to distinguish it from the Complainant’s NORDIC NEST mark.
The Complainant says also that the Respondent does not have rights or a legitimate interest in respect of the disputed domain name. The Respondent does not have any trade mark rights in “Shop Nordic Nest”, nor is the respondent a licensee of the Complainant, nor has the Complainant given the Respondent any authorization to register its trade mark in a domain name.
In earlier decisions under the Policy, UDRP panels have said that the use of a domain name cannot be considered reasonable where the domain name falsely suggests an affiliation with the trade mark owner or if it is used as a pretext to obtain commercial gain. The Respondent is using the trade mark NORDIC NEST in conjunction with the generic addition “shop” and is selling identical products to the Complainant. The intention is to confuse consumers into believing that there is a connection with the Complainant’s business and to tarnish the Complainant’s trade mark or to solicit an offer on the disputed domain name from the Complainant. There is no evidence that the Respondent has been commonly known by the disputed domain name, enabling it to establish rights or legitimate interests in the disputed domain name. Nor is the Respondent making a legitimate non-commercial or fair use of it.
Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. The Complainant has been well exposed under its trade mark for many years through its own marketing channels and website. The Complainant registered its trade mark before the disputed domain name was registered. The fact that the disputed domain name incorporates the Complainant’s distinctive mark and uses similar visual content, suggests that the Respondent was aware of the Complainant’s prior rights and business upon registration. The disputed domain name is not being used as a genuine noncommercial website but is rather a pretext for cybersquatting. The circumstances indicate that the Respondent registered the disputed domain name for the purpose of disrupting the Complainant’s business. Further, the Respondent’s actions suggest that the disputed domain name was registered and is being used primarily to capitalize on, or otherwise take advantage of, the Complainant’s trade mark rights for commercial gain.
B. RespondentThe Respondent says that she and her partner are Norwegians that live in San Carlos, California, United States who wanted to offer Scandinavian products to their local community. Their previous trading style had been as “Go Living”, the logo for which had featured a bird in a bird house. Hence, the name “Nordic Nest” continued the ongoing home and bird theme. The disputed domain name was registered on November 8, 2016 and a business registration certificate in the name of “Go Living Inc dba3 Nordic Nest” obtained from the City of San Carlos, California, United States. Prior to commencing use of the disputed domain name in October 2017, a search was conducted by the Respondent to check that the Respondent’s trading style did not interfere with any United States trade marks, the Respondent conducting business only in the United States. The Respondent did not find any United States trade mark for NORDIC NEST, although, it established that a website operated by a Swedish company at “www.nordicnest.com” was selling plastic mats which were similar to well-known Papelina mats. At that point, there were no products on that website which competed with those which the Respondent intended to sell. Accordingly, as from October 2017, the disputed domain resolved to an ecommerce website selling the Respondent’s range of products.
The website at “www.nordicnest.com” appears to have been inactive throughout 2018. It was only in or around May 2019 that it was expanded to include more product categories and brands. However, the Respondent has only used its website as an extension of its local shop in San Carlos, California. It only sells to its United States market and has never attempted to act as if it were affiliated with the Complainant. The Respondent is primarily a gift and yarn shop and has a very different product selection from the Complainant. It has not intended to confuse consumers into believing there is a connection with the Complainant’s business, nor to tarnish its trade mark.
6. Discussion and FindingsParagraph 4(a) of the Policy provides that the Complainant must prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(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.
A. Identical or Confusingly SimilarThe Complainant has provided details of a number of the registered trade marks it owns for NORDIC NEST, as set out above, which establish its rights in this mark.
As a technical requirement of registration, the Top-Level Domain, that is “.com” in the case of the disputed domain name, is typically disregarded when assessing confusing similarity. The only difference between the Complainant’s NORDIC NEST mark and the disputed domain name is the addition of the word “shop”, which precedes the mark. This additional component does not prevent the disputed domain name from being considered confusingly similar to the Complainant’s mark. As explained at section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
The Complainant’s NORDIC NEST trade mark is the dominant component of, and is clearly recognizable within, the disputed domain name. The Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate InterestsIn order to consider the second and third elements under the Policy, it is necessary to understand the historic and current uses of both the disputed domain name and the Complainant’s website at “www.nordicnest.com”. This has required the Panel to undertake some limited online research. The circumstances in which a panel may do so are outlined at section 4.8 of the WIPO Overview 3.0, which explains that; “Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name”.
The Panel has accordingly visited a number of the cached pages of the parties’ websites, which have been retained on the Internet archive known as the Wayback Machine, and has also visited their active websites. The following is evident;
- as at the date of registration of the disputed domain name by the Respondent in November 2016, the Complainant’s was making use of both the brand, NORDIC NEST and its website at “www.nordicnest.com”, albeit the only products which were promoted at that time were rugs. Internet users who wished to purchase rugs displayed on the website were redirected to the Complainant’s (then) website at “www.scandinaviandesigncenter.com”;
- whilst the Respondent has said that it is only supplying to the United States market, its Shipping & Returns policy indicates that it will supply outside the United States. Nevertheless, the Respondent’s website appears primarily to be an adjunct to its shop in San Carlos, California, United States, rather than a website whose principal function is to attract international customers. For example, in the “About Us” section of the website, the opening hours of its shop are given and visitors to the website are invited to “Shop online or stop by to see us at our new location”. Moreover, archived webpages tend to reinforce the local orientation; by way of example, in April 2019, the Respondent’s “Upcoming Events” included “Felted Soap Making” sessions, which were to take place at the Respondent’s shop in San Carlos California, United States.
- there is some product overlap between the parties’ current website offerings, particularly in relation to tableware and cookware. The Complainant’s main product categories are Tableware, Home accessories, Cookware & kitchen accessories, Rugs & textiles, Lighting and Furniture. The Respondent’s product categories are Gifts (which comprises jewelry and stationery) Essentials (which comprises Baking, Tableware and Party), Kids (which includes products such as night lamps, hair-ties and small dolls), Lifestyle (including products such as blankets, soap and hand lotion) and Scandinavian Candy. Overall, however, the differences between the parties’ product ranges are appreciably greater than the areas of overlap.
Turning now to the second element, paragraph 4(c) of the Policy provides, without limitation examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name or a name corresponding to the domain name, or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue.
Section 2.2 of the WIPO Overview 3.0 provides guidance as to what might qualify as a bona fide offering of goods and services. Some of the factors to which reference is made relate to the circumstances in which a respondent’s claims to be about to, or to be in the process of, establishing a business may be accepted. Here, the Respondent established a business some years ago. The material factors are whether the circumstances indicate a bona fide registration and use of the disputed domain name and whether there is “other evidence generally pointing to a lack of indicia of cybersquatting intent”.
So far as these factors are concerned, two issues require consideration. The first is whether the Respondent’s decision to trade under an identically-named business and to register a confusingly similar domain name points to an inherent lack of bona fides or cybersquatting intent on its part. The word “Nordic” in the disputed domain name denotes products which originate from Nordic countries, which are generally considered as comprising Denmark, Finland, Norway, Iceland, and Sweden. “Nest” is an expression which is sometimes used in a retail context to denote products, services or activities which relate to the home. Accordingly, the words “Nordic Nest”, when used as a brand, are apt to be perceived as describing a business which supplies products sourced from Nordic countries which are intended for use in the home. It is a trading style capable of being conceived of and used, independently of the Complainant. There is nothing in the evidence which points to the Respondent having copied the Complainant’s NORDIC NEST mark, nor any reason to disbelieve the Respondent’s explanation as to how it conceived of this name for its business.
The second issue is whether there is any aspect of the Respondent’s use of its website, which would point to a lack of bona fides or to cybersquatting intent. The Respondent’s website lacks any indicia that might suggest that it has attempted to claim any form of association with the Complainant, or to have copied its range of products, or to have intended to cause confusion with the Complainant’s customers. Nor is there any indication that the Respondent has attempted to piggyback on the Complainant’s reputation or that it has sought to sell the disputed domain name to the Complainant or a competitor of it. The Respondent, acknowledges that, as at the date of registration of the disputed domain name in November 2016 it was aware that the Complainant was selling rugs through a website at “www.nordicnest.com”. However, whilst the Complainant had an European Union Trade Mark at that point in time, it did not have a United States trade mark. The Complainant’s registered trade mark rights as at that date did not therefore extend into the United States. In these circumstances Panel does not find the registration and use of the disputed domain name to point to lack of bona fides on the part of the Respondent nor to indicate a cybersquatting intent. See, in broadly similar circumstances (save that the respondent was found to have had no knowledge of the complainant prior to registration of the domain name in issue) United Rentals, Inc. v. United Rental Services, Ltd.,WIPO Case No. D2006-0529.
The Complainant has, subsequent to the Respondent’s registration and use of the disputed domain name secured trade mark protection for NORDIC NEST in the United States, which covers a wide range of goods and services. However, the function of the Panel is to determine the Complaint by reference to the Policy, the Rules, and the Supplemental Rules and not by reference to the nature and extent of the Complainant’s trade mark rights. See Schweizerische Bundesbahnen SBB v. Gerrie Villon,WIPO Case No. D2009-1426 and also the remarks of the panel in Regency Furniture of Laurel, Inc. v. David Lively,WIPO Case No. D2018-0919; “And a good faith use of a mark in the physical world may be considered bona fide, even where the Complainant has a plausible infringement claim that has not been validated by a judicial ruling”.
For these reasons, the Panel considers that the Respondent has rebutted the claim that it has not used the disputed domain name in connection with a bona fide offering of goods and services. Moreover, the Respondent has established that its bricks and mortar shop is branded as “Nordic Nest” and, therefore, that it is known by a name which substantially corresponds to the disputed domain name; see Argenta Spaarbank NV v. Barbara Lesimple / Argenthal Private Capital Limited,WIPO Case No. D2015-0467.
The Complainant has therefore failed to establish the second element under the Policy.
C. Registered and Used in Bad FaithAs the requirements under paragraph 4(a) of the Policy are cumulative, the fact that the Complainant has not established the second element is determinative of the Complaint. However, for completeness, the Panel also considers whether the disputed domain name has been registered and used in bad faith.
Paragraph 4(b) of the Policy sets out four circumstances, without limitation, which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. These include, in summary;
- if a respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise it to the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name;
- if the respondent has registered the domain name primarily for the purpose of disrupting the business of the complainant;
- if by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
Sections 3.1.1, 3.1.4 and 3.2 of the WIPO Overview 3.0 set out factors which have been considered by UDRP panels to be material to an assessment of circumstances suggesting bad faith registration and use by a respondent under paragraphs 4(b)(i) and 4(b)(iv) of the Policy. The factors which typically are suggestive of bad faith registration and use by a respondent are absent from the circumstances of these proceedings. By way of example only, there is no website content unequivocally targeting the Complainant’s trade mark, the Respondent has given a credible explanation for its registration of the disputed domain name and it has made genuine and good faith use of the disputed domain name, which commenced prior to the Complainant’s rebranding of its wider product offering to NORDIC NEST.
The Panel does not therefore find that the disputed domain name was registered or is being used in bad faith.
7. DecisionFor the foregoing reasons, the Complaint is denied.
Antony Gold
Sole Panelist
Date: October 14, 2021
1 The Complaint was initially filed against GoDaddy.com, LLC. In response to the Registrar’s verification request, the Registrar disclosed the name and address of the entity in whose name the disputed domain name is currently registered. The Complainant amended the Complaint in order to name the underlying registrant as the Respondent.
2 Full details of this mark were obtained from the United States Patent and Trademark Office website.
3 An abbreviation for “doing business as”.