ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Advania AB v. Ad Vania Case No. D2024-3868 1. The Parties The Complainant is Advania AB, Sweden, represented by Abion AB, Sweden. The Respondent is Ad Vania, Iceland. 2. The Domain Name and Registrar The disputed domain name
is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2024. On September 23, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 24, 2024, 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 (Registration Private, Domains by Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 25, 2024, 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 September 25, 2024. 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 September 30, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 20, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 21, 2024.
page 2 The Center appointed Steven A. Maier as the sole panelist in this matter on October 25, 2024. 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 company registered in Norway. The Complainant provides no information concerning its business activities. However, based on the Panel’s review of its principal website at “www.advania.com”, the Complainant appears to offer managed IT services, IT infrastructure and integration, and professional services including consulting services, software development, eBusiness services and infrastructure solutions. Its operations appear to cover the Nordic countries, including Iceland. The Complainant is the owner of various registrations for the trademark ADVANIA, including for example: - Iceland trademark registration number 170/2012 for the word mark ADVANIA, registered on February 1, 2012, in a variety of International Classes; and - International Trademark registration number 1146756 for the word mark ADVANIA, registered on June 6, 2012, in a variety of International Classes, and designating the European Union and Norway. The disputed domain name was registered on June 11, 2013. The Complainant provides evidence that the disputed domain name has resolved to a Registrar’s parking page, indicating that the disputed domain name “is registered but may still be available”. 5. Parties’ Contentions A. Complainant The Complainant submits that the disputed domain name is identical to its ADVANIA trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that it has no relationship with the Respondent and has never authorized it to use its ADVANIA trademark, that the Respondent has not commonly been known by the disputed domain name, and that the Respondent is making neither bona fide commercial use nor legitimate noncommercial or fair use of the disputed domain name. The Complainant submits that the disputed domain name has been registered and is being used in bad faith. It contends that the disputed domain name was registered after the date of the Complainant’s trademark registrations, and is identical to its ADVANIA trademark, which factors imply knowledge of the Complainant’s trademark and business. The Complainant further contends that the Respondent’s non-use of the disputed domain name for over 11 years demonstrates no bona fide intent, and does not prevent a finding of bad faith: section 3.3 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Complainant provides evidence that mail servers have been configured upon the disputed domain name, and asserts that this raises an imminent risk that the disputed domain name may be used for an email fraud, impersonating the Complainant.
page 3 The Complainant exhibits “cease and desist” correspondence which was sent to the Registrar on May 3, 2024, and states that the Respondent never answered this correspondence, and has never therefore claimed any good-faith use of the disputed domain name. The Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are that: (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 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 Similar The Complainant has established that it is the owner of registered trademark rights in the mark ADVANIA. The disputed domain name is identical to that trademark, and the Panel therefore finds that the disputed domain name is identical to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests In the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has failed to file a Response in this proceeding and has not submitted any explanation for its registration and use of the disputed domain name, or evidence of rights or legitimate interests on its part in the disputed domain name, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith In order to demonstrate registration of the disputed domain name in bad faith, it is incumbent upon the Complainant to show that the Respondent knew, or should be assumed to have known of, and to have targeted, its trademark. While the Complainant relies on the fact that its ADVANIA trademark was already registered at the date the Respondent registered the disputed domain name, the mere existence of a trademark (or a respondent’s “constructive notice” of that trademark) is not generally sufficient in cases under the UDRP. Therefore, complainants will typically provide evidence of their business history and profile in connection with the trademark in question, including details of, e.g. the geographical reach of their business, the number of offices and employees, turnover, marketing spend, media and industry recognition, and any social media presence. In this case, the Complainant has provided no such information. However, based on the Panel’s own review of the Complainant’s website, the Panel finds that the Complainant conducts significant operations across the Nordic countries, including Iceland. The Panel also finds, on the basis of a Google search against the term “Advania”, that the results of that search relate overwhelmingly to the Complainant, and that there do
page 4 not appear to be any other significant uses of that name in commerce or otherwise. Given also that the disputed domain name reproduces the Complainant’s trademark in its entirety and without any adornment, the Panel takes the view that the burden must shift to the Respondent to explain its choice of the disputed domain name. The Respondent having provided no such explanation (either by way of any reply to the Complainant’s “cease and desist” letter or an Response in this proceeding), the Panel infers that the Respondent is likely to have registered the disputed domain name with the Complainant’s trademark in mind, and with the intention of taking unfair commercial advantage of that trademark. Noting again that the disputed domain name is identical to the Complainant’s trademark, which the Panel finds to be distinctive of the Complainant and its services (particularly in the Nordic region, including Iceland), the Panel finds it difficult to conceive of any use that the Respondent could make of the disputed domain name without misrepresenting to the public that the disputed domain name is owned or operated by, or otherwise commercially affiliated with, the Complainant. Further, the Respondent has offered no explanation for its holding of the disputed domain name, whether by making any active use of the disputed domain name over a period of 11 years, or by providing any Response in this proceeding. The Respondent’s “passive” holding of the disputed domain name does not prevent a finding of bad faith in these circumstances, and the Panel finds therefore that the disputed domain name has been registered and is being 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. /Steven A. Maier/ Steven A. Maier Sole Panelist Date: November 8, 2024
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