WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fredericia Furniture A/S v. Belize Domain Whois Service Lt
Case No. D2007-1515
1. The Parties
The Complainant is Fredericia Furniture A/S, Fredericia, Denmark, represented by Kirk Larsen & Ascanius, Denmark.
The Respondent is Belize Domain Whois Service Lt, City of Belmopan, Belize.
2. The Domain Name and Registrar
The disputed domain name <fredericiafurniture.com> is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2007. On October 17, 2007, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On October 17, 2007, Intercosmos Media Group d/b/a directNIC.com 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”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 24, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 13, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 15, 2007.
The Center appointed Alexandre Nappey as the sole panelist in this matter on November 22, 2007. 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 10, 2007, the Panel issued a Panel Order. The Panel Order noted that the Complaint did not provide explicit evidence to support its case with respect to the first element of Paragraph 3(b)(ix) of the Rules. The Complainant was invited to provide further argument and evidence in relation to the rights it holds on a trademark which the disputed domain name would be identical or confusingly similar to. By the date indicated in the Panel Order, the Complainant filed further brief statements. The Respondent did not reply to the Complainant's further brief statements.
4. Factual Background
The following facts are taken from the Complaint, and were not contested.
Founded in Denmark in 1911, the Complainant has manufactured design furniture under the corporate name FREDERICIA FURNITURE.
The Complainant filed a CTM trademark application on FREDERICIA FURNITURE on November 9, 2007.
The Complainant promotes its products and displays related information through a website at “www.fredericia.com” since at least late 1998.
The disputed domain name was registered on August 19, 2004 in the name of the Respondent and at the date of the decision, resolves to a “parking” web page.
5. Parties' Contentions
The Complainant manufactures high-quality design furniture and has existed since 1911. Its products are sold under the brand FREDERICIA FURNITURE.
The Complainant contends that the disputed domain name <fredericiafurniture.com> is identical to the Complainant's registered trademark FREDERICIA FURNITURE and registered company name Fredericia Furniture. The domain name is also confusingly similar to the Complainant's domain names <fredericia.com> and <fredericiafurniture.dk>.
To the best of the Complainant's knowledge and research, the Respondent's use of <fredericiafurniture.com> is not in connection with a bona fide offering of goods and services.
The Respondent is not making a legitimate noncommercial or fair use of the <fredericiafurniture.com> domain name.
The Respondent is not a licensee of the Complainant, nor is the Respondent otherwise authorized by the Complainant to use the Complainant's marks or apply for or use any domain name incorporating the FREDERICIA FURNITURE mark.
A person who visits <fredericiafurniture.com> on the Internet only sees a parking page that links Internet users to several commercial websites of different furniture topics.
According to the Complainant the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to several different domain names, represents bad faith registration and use under paragraph 4(b)(iv) of the Policy.
The Respondent is engaged in bad faith registration and use of other domain names, such as <gwallet.com>, <iogear.com> and <nppn.com>, among others.
The Complainant asserts that the Respondent is intentionally attempting to attract, for commercial gain Internet users to its website or other on line locations by directly and voluntarily linking users to websites not related to the Complainant, creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation or endorsement of the Respondent's websites or locations or products or services on the Respondent's website.
Last, the Complainant contends that the Respondent has registered the <fredericiafurniture.com> domain name for the purpose of selling or renting, or otherwise transferring the domain name registration to the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Notwithstanding the default of the Respondent, it remains up to the Complainant to make out its case in accordance with Paragraph 4(a) of the Policy, and to demonstrate that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
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”.
Having consideration to the parties' contentions, the Policy, Rules, Supplemental Rules and applicable substantive law, the Panel's findings on each of the above cited elements are the following:
A. Identical or Confusingly Similar
It results from the Complaint and further statements that the Complainant does not hold registered trademark rights on the wording FREDERICIA FURNITURE or even FREDERICIA.
A CTM application for FREDERICIA FURNITURE has been filed by the Complainant on November 9, 2007. The pending trademark application postdates the disputed domain name.
Notwithstanding, the Complainant has been clearly doing business under the Fredericia Furniture name, which is the Complainant's corporate name, for nearly a hundred years.
The Panel also notes that Complainant's website has been available for almost ten years through the Danish domain name <fredericiafurniture.dk> and the gTLD <fredericia.com>.
The question for the Panel is therefore to determine whether the Complainant has unregistered trademark rights in FREDERICIA FURNITURE.
As ruled in previous decisions, the application of the Policy is not limited to registered trademarks or service marks.
See for instance the Panel decision in Imperial College v. Christophe Dessimoz WIPO Case No. D2004-0322:
[I]t is undisputed and accepted practice, that paragraph 4(a)(i) of the Policy refers merely to a ‘trademark or service mark' in which the complainant has rights, and does not expressly limit the application of the Policy to a registered trademark or service mark…[t]herefore, in the Panel's view, the fact that in this case Complainant has no registered trademark or service mark for [TRADEMARK] does not preclude a finding that it has established trademark or service mark rights in that name for the purpose of the Rules. Indeed, a fundamental principle of trademark law is that rights in a trademark can be acquired through use, and such rights exist even though the trademark may not be registered
To assert unregistered trademark rights the Complainant must establish that the name has achieved secondary meaning or association with the Complainant.
See Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786.
In the present case it is indisputable that Complainant has been identifying itself under the FREDERICIA FURNITURE mark for at least ninety five years.
Complainant further provided supporting evidence that the name FREDERICIA FURNITURE is extensively used on its websites “www.fredericia.com” and “www.fredericiafurniture.dk”.
Therefore the Panel accepts that Complainant has established unregistered trademark rights in the name FREDERICIA FURNITURE.
The Panel must thus determine whether the domain name < fredericiafurniture.com > is identical or confusingly similar to the Complainant's unregistered FREDERICIA FURNITURE trademark.
The disputed domain name <fredericiafurniture.com> is indisputably identical to this mark, except for the “.com” suffix which is a DNS technical feature.
The Panel therefore finds that Complainant has met its burden of proving that the disputed domain name is identical and thus confusingly similar to the Complainant's mark, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Complainant has put forward a credible prima facie case that the Respondent has no rights or legitimate interest in the domain name. In such circumstances the onus shifts to the Respondent to establish that it has such rights or interest.
The Complainant has submitted convincing evidence demonstrating that the Respondent is not commonly known by the disputed domain name and there is no connection between the Complainant and the Respondent.
Moreover it is the Panel's view that the Respondent has not made legitimate non-commercial use of the domain name, as the evidence of record is that the Respondent is generating revenue from a click-through site by using the Complainant's corporate name and unregistered trademark, and inherent goodwill to attract Internet traffic. This does not constitute legitimate, non-commercial or fair use within the scope of Paragraph 4(c)(iii) of the Rules.
In the absence of any explanation from the Respondent and given the arguments put forward by the Complainant, the Panel finds that the Respondent has no rights or legitimate interests in the domain name in dispute and the Complainant has satisfied the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
In consideration with the continuous and extensive use of the mark FREDERICIA FURNITURE by the Complainant, it is hard to conceive that the Respondent registered the disputed domain name without any knowledge of the Complainant's mark.
As set out in Paragraph 4(b) of the Policy, one circumstance which shall be evidence of registration and use in bad faith is when:
(ii) [The Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Respondent] has engaged in a pattern of such conduct
The Panel observes indeed that the Respondent has been involved in numerous proceedings within the last months, where it has been systematically found in bad faith in similar circumstances.
Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt WIPO Case No. D2007-0626 (transfer), TV Globo Ltda. v. Belize Domain WHOIS Service Lt WIPO Case No. D2007-0714 (transfer), Above All Advertising Inc. v. Belize Domain Whois Service Lt WIPO Case No. D2007-0775 (transfer), Scandic Hotels AB v. Great Camanoe Investments Ltd / Belize Domain WHOIS Service Lt WIPO Case No. D2007-0813 (transfer), Madison Square Garden L.P., Radio City Trademarks, LLC v. Great Camanoe Investments Ltd / Belize Domain Names Whois Service Lt WIPO Case No. D2007-0819 (transfer), The Sans Institute v. Belize Domain WHOIS Service Lt WIPO Case No. D2007-0881 (transfer), Natura Cosméticos S.A., Industria e Comércio de Cosméticos Natura Ltda. v. Belize Domain Whois Service Lt WIPO Case No. D2007-1165 (transfer), Frontier Distribution LLC v. Belize Domain WHOIS Service Lt. WIPO Case No. D2007-1203 (transfer), Moen Incorporated v. Belize Domain WHOIS Service Lt WIPO Case No. D2007-1253 (transfer), Kforce Inc. v. Belize Domain Whois Service Lt. WIPO Case No. D2007-1317 (transfer).
Furthermore the domain name in issue resolves to a parking page offering sponsored links in relation with the Complainant's business. It is highly likely that such use generates click-through fees.
The Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its site by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or of products there displayed.
Furthermore, the pattern of the Respondent's conduct as a serial cybersquatter in many similar recent cases also leads the Panel to the conclusion that the disputed domain name was registered and is used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <fredericiafurniture.com> be transferred to the Complainant.
Dated: December 19, 2007