The Complainant is Vassfjellet Vinterpark AS, Norway, represented by IMMER advokat AS, Norway.
The Respondent is Bogdan Temchenko, Ukraine.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2021. On September 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 22, 2021, 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 October 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 3, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 4, 2021.
The Center appointed Luca Barbero as the sole panelist in this matter on November 15, 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.
On December 28, 2021, the Panel issued the Administrative Panel Order No. 1 (“Panel Order No. 1”), notified by the Center to the Parties on the same day, requesting the Complainant to provide evidence, on or before January 5, 2022, to prove that it had unregistered trademark rights in the geographic term “Vassfjellet” for purposes of the Policy in order to have a standing to file this case, and the Respondent was granted the opportunity to comment on the Complainant’s filing on or before January 12, 2022.
The Complainant filed its filing in response to the Panel Order No. 1 on January 11, 2022. The Respondent did not submit any reply to the Complainant’s filing.
Upon the Panel’s request, on January 25, 2022, the Complainant provided a copy of Judgment of the ECG C-108-109/97 (CHEMSEE), which was mentioned in the Complainant’s submission to the Panel Order No. 1.
4. Factual BackgroundThe Complainant is a privately owned ski resort outside the city of Trondheim, Norway. The resort consists of six ski lifts, 12 courses, café, shop, and ski rental. The Complainant’s annual revenue is of about USD 3.5 million.
The Complainant has been operating its ski resort since 1982, until 2019 under the previous company name “Vassfjellet skiheiser AS”, and then under its current company name “Vassfjellet Vinterpark AS”.
The Complainant also currently promotes its services online via the website at “www.vassfjelletvinterpark.no”.
The disputed domain name
The Complainant claims trademark rights for VASSFJELLET according to the Norwegian law of trademarks (2010/03/26) § 3, based on the use of the sign to identify its company and the related services since 1982.
The Complainant submits that the disputed domain name was originally registered by the Complainant (whose name at that time was Vassfjellet skiheiser AS) and was used by the Complainant to promote its services under the trademark VASSFJELLET until 2018, when, due to a mistake, the disputed domain name was not renewed upon expiry. The Complainant further states that the disputed domain name was subsequently registered by the Respondent, which copied the contents of the Complainant’s website reproducing them on the website at the disputed domain name.
In order to substantiate its claims, the Complainant submits as annex 2 to the Complaint a “Domain History Checker” report showing the nameservers used in connection with the disputed domain name from 2002 to 2020. According to such report, the prior nameservers were replaced with new ones mentioning the “pendingrenewaldeletion” in their names in the end of 2018 and remained the same until disputed domain name was dropped in mid-December 2019 and was moved to new nameservers in February 2020.
The Complainant also submits as annex 4 to the Complaint screenshots of the website at the disputed domain name dated September 21, 2021, saved via a screenshot recorder application, showing the use of the disputed domain name to provide information about the Complainant-run Vassfjellet winter park.
The Complainant contends that the Respondent’s use of the trademark VASSFJELLET and of an illegal copy of the previous website of the Complainant, amounts to infringement of the Complainant’s intellectual property rights, and highlights that the contents published on the website at the disputed domain name consist of designs, logos, photos, information, and other marketing material owned by the Complainant. The Complainant further points out that the website at the disputed domain name has been updated with both the new Facebook feed and the webcam of the Complainant.
With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent has never had any relationship with the Complainant, its products or services and that the Complainant has in no way granted any rights to the Respondent to register the disputed domain name or make use of its trademark in any way.
The Complainant also states that the Respondent is not currently offering any products or services related to the trademark VASSFJELLET, is not making a bona fide offering of goods or services and has not made a legitimate noncommercial or fair use of the disputed domain name. The Complainant points out that the Respondent appears to have registered the disputed domain name with the sole purpose of diverting consumers to its website or tarnish the Complainant’s trademark.
With reference to the circumstances evidencing bad faith, the Complainant asserts that the Respondent’s main business is to acquire domain names of third-party businesses, where renewal of the domain names has failed for some reason. The Complainant emphasizes that the Respondent has no legitimate business in Norway, despite having copied the website previously made and owned by the Complainant.
The Complainant thus concludes that the Respondent’s main purpose was to register and use the disputed domain name to intentionally attract users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and location, and the products or services on the Respondent’s website.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
C. Complainant’s Submission to the Panel Order No. 1In its reply to the Panel Order No. 1, the Complainant reiterates that, according to the Norwegian Trademark Act, § 3(3), a trademark right is acquired without registration when the trademark is established by use, i.e., when and for as long as it is well known in the circle of trade in Norway for the relevant goods and services as someone’s sign and, if such use is established only in part of Norway, the exclusive right has effect only in this territory.
The Complainant states that VASSFJELLET has been acquired as a local trademark, and that it has been in consistent use as trademark since 1982, being well known in the circle of trade in Norway for the relevant goods and services, i.e., as a sign corresponding the the Complainant’s services. The Complainant also states that there are no other comercial users of the name and that the market share held by the Complainant is 100 per cent.
The Complinant points out that through its exclusive use of the same, the name VASSFJELLET is a distinctive trademark, very well known locally, and underlines that a Google search does show that only the ski resort or events at the resort is associated with the name.
The Complainant states that the intensity of the trademark is the only cause for the Respondent to use the Complianant’s pages to generate illegitimate traffic. It also indicates that Vassfjellet is also the name of the small mountain where the ski resort is located and that there is no other commercial activity at or close to the mountain, except a closed chapel, and the Complainant has a lease to the whole east face of the mountain.
The Complainant further claims that, even if Vassfjellet would be known as a geographical name, trademark rights have been acquired in accordance with Judgment of the ECG C-108-109/97 (CHEMSEE), “[i]n assessing the distinctive character of a mark in respect of which registration has been applied for, the following may also be taken into account: the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations. The geographical designation has gained a new significance and its connotation, no longer purely descriptive, justifies its registration as a trade mark.”
The Complainant concludes in its submission to the Panel Order No. 1 that “Vassfjellet as local trade mark precludes differentiation as regards distinctiveness by reference to the perceived importance of keeping the geographical name available for use by other undertakings. Hence, the name Vassfjellet cannot be registered nationally by any other business.”
6. Discussion and FindingsAccording to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
6.1. Panel Order No. 1According to paragraph 12 of the Rules, the Panel, in its sole discretion, may request any further statements or documents from the Parties it may deem necessary to decide the case. In addition, according to paragraph 10 of the Rules, the Panel has the authority to determine the admissibility, relevance, materiality and weight of the evidence, and also to conduct the proceedings with due expedition, ensuring that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
In the case at hand, noting that the name “Vassfjellet” encompassed in the disputed domain name and on which the Complainant claimed unregistered trademark rights corresponds to the name of a mountain located in Norway, the Panel issued the Panel Order No. 1, on December 28, 2021, stating the following:
“The Panel notes that the Complainant asserts that ‘[t]he name ‘VASSFJELLET’ is an incorporated trademark for Vassfjellet vinterpark AS, according to Norwegian law of trademarks (2010/03/26) § 3. The trademark has been in use since 1982 and is still in use.’
The Rules allows panels to undertake some factual research into matters of public records when it would be considered useful in assessing the merits of the case and reaching a decision. In this case, the Panel further notes, through its independent research, that ‘Vassfjellet’ is a mountain on the border of the municipalities of Melhus and Trondheim in Trøndelag county, Norway (where the Complainant appears to be located).
Due to the reasons stated above, the Panel requests the Complainant to provide further evidence, on or before January 5, 2022, to prove that it has unregistered trademark rights in the geographic term ‘Vassfjellet’ for purposes of the UDRP so that it has a standing to file this UDRP case. In this regard, please see, for example, section 1.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Respondent may comment on the Complainant’s filing to this Order on or before January 12, 2022.
The Parties’ further submissions should be limited to the above request.”
The Complainant filed its filing in reply to the Panel Order No. 1 on January 11, 2022, six days after the deadline set forth in the Panel Order No. 1. Notwithstanding the delayed submission of the Complainant’s filing, the Panel deemed appropriate to accept it, considering that the Panel Order No. 1 was notified during the Christmas season.
In order to ensure that the Respondent be treated with equality and be granted a fair opportunity to reply to the Complainant’s filing, the Panel waited for additional six days upon the expiry of the deadline for the filing of a Respondent’s reply to the Panel Order No. 1, but the Respondent did not submit any filing.
Accordingly, the Panel proceeded to issue the Decision.
6.2. Substantive Issues A. Identical or Confusingly SimilarIt is not clear whether the Complainant relies on a claim to registered or unregistered rights. As stated in Section 3.1 of the WIPO Overview 3.0, “To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys. […] Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. (…) The fact that a respondent is shown to have been targeting the complainant’s mark (e.g., based on the manner in which the related website is used) may support the complainant’s assertion that its mark has achieved significance as a source identifier.”
The Panel has reviewed the documents and statements submitted by the Complainant including in response to the Panel Order No.1, and the information published on the Complainant’s website.1 and finds that in the particular circumstances of this case, it has provided sufficient evidence for the Panel to conclude that it owns rights in the term VASSFJELLET sufficient for purposes of standing in this proceeding. The Panel is supported in this finding not only by the judgement referred to by the Complainant, but by the fact that the website at the disputed domain name continued to host content copied from the Complainant’s website after its acquisition (also noting its use for many years by the Complainant) by the Respondent.
Therefore, the Panel finds that the Complainant has proven that the disputed domain name is identical to a trademark in which it has rights according to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThe Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
In the case at hand, by not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.
According to the evidence on record, there is no relationship between the Complainant and the Respondent and the Complainant has not authorized the Respondent to register or use its trademark or the disputed domain name.
In addition, there is no evidence that the Respondent might be commonly known by the disputed domain name.
The Panel also finds that the Respondent’s use of the disputed domain name in connection with a website reproducing the contents of the Complainant’s own website and impersonating the Complainant, does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark. In the absence of such obviously infringing copycat use (later even deploying the Complainant’s Facebook feed and webcam), the Respondent may have been able to advance a claim that the disputed domain name is comprised of a geographic term. At the same time, the evidence submitted by the Complainant may have presented a significant hurdle for the Respondent given that the Complainant appears to currently be the sole trader using such term and having done so in all events for several decades.
Therefore, the Panel finds that the Complainant has proven that the Complainant has met its burden under the second element of the Policy.
C. Registered and Used in Bad FaithParagraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith.
As indicated above, according to the uncontested Complainant’s statements – supported by the records submitted as Annex 2 to the Complaint – the disputed domain name was originally registered by the Complainant and was acquired by the Respondent only after it was not renewed by the Complainant due to an error in the renewal process in 2018.
In view of the identity of the disputed domain name with the Complainant’s prior trademark VASSFJELLET and the Respondent’s use of the disputed domain name in connection with a website reproducing the contents of the Complainant’s own website, the Panel finds that in the specific circumstances of this case, in all likelihood, the Respondent registered the disputed domain name having the Complainant in mind; indeed given the longstanding use of the term by the Complainant and moreover its uniqueness and apparent lack of use commercial use except as by the Complainant, it is not clear that another third party would have an interest in such term but for the Complainant’s widely-promoted and known activities.
Moreover, considering the use the Respondent has made of the disputed domain name – as evidenced by the screenshots submitted by the Complainant and the additional ones available on the Internet Archive at “www.archive.org” – the Panel finds that the Respondent has intentionally attempted to attract Internet users to its website for commercial gain, by causing a likelihood of confusion with the Complainant and its trademark as to the source, sponsorship, affiliation or endorsement of its website and the services promoted therein according to paragraph 4(b)(iv) of the Policy.
With reference to the current redirection of the disputed domain name to an inactive website, it is well established that passive holding of a domain name could amount to bad faith under certain circumstances as decided, inter alia, in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
See also Section 3.3 of the WIPO Overview 3.0: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
In the case at hand, in view of the Respondent’s registration of a domain name identical to the Complainant’s prior trademark, the absence of any documented rights or legitimate interests of the Respondent in the disputed domain name, the uniqueness of the term and its longstanding use (and accidental lapse) by the Complainant, and the Respondent’s failure to respond to the Complaint, the Panel finds that the Respondent’s lack of use of the disputed domain name (and indeed prior copycat use) also amounts to bad faith.
As an additional circumstance evidencing bad faith, the Panel notes that there has been no Response and, in this case, as stated in Sports Holdings, Inc v. Whois ID Theft Protection,WIPO Case No. D2006-1146 “it is open for the Panel to infer a prima facie case of bad faith registration. The Panel also notes that the Respondent has used the present domain name in a commercial website. The evidence before the Panel indicates that the Respondent has used (or allowed the use) of the domain name for the purpose of some apparently commercial nature from which the Respondent (or a related third party) presumably derives or intends to derive revenue. This is not conduct consistent with registration and use in good faith”.
Therefore, the Panel finds that the Complainant has also proven that the Respondent registered and has been using the disputed domain name in bad faith according to paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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,
Luca Barbero
Sole Panelist
Date: February 1, 2022
1 As stated in section 4.8 of the WIPO Overview 3.0, “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, consulting historical resources such as the Internet Archive (www.archive.org) in order to obtain an indication of how a domain name may have been used in the relevant past, reviewing dictionaries or encyclopedias (e.g., Wikipedia), or accessing trademark registration databases”.