WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TrygVesta Forsikring A/S v. Trygpcbruger
Case No. D2008-0069
1. The Parties
The Complainant is TrygVesta Forsikring A/S, Ballerup, Denmark, represented internally.
The Respondent is TrygPCBruger, Birmingham, Alabama, United States of America.
2. The Domain Name and Registrar
The disputed domain name <trygpcbruger.com> is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2008. On January 18, 2008, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On January 18, 2008, Tucows 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 January 24, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 13, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 14, 2008.
The Center appointed Anders Janson as the sole panelist in this matter on April 7, 2008. 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
According to information on the Complainant’s home page “www.trygg.dk”, the Complainant is Denmark’s largest general insurance company with more than one million families and companies insured and with more than 2 200 employees. Apart from the Danish market, the Complainant sells insurance products in Norway and Finland.
Given the absence of a response the following facts are undisputed:
The Complainant is the holder of the trademark TRYG, registration nr 2000 05578. The services for which the trademark is used include general insurance products and services as well as all products related to these services. The trademark is used as a part of numerous ccTLDs and gTLDs and the domain names put forward in the complaint are;
<tryg.dk>, registered on July 1, 1996;
<trygfamilie.dk>, registered on June 7, 1999;
<trygmedpc.dk>, registered on August 24, 2000;
<trygfirma.dk>, registered on December 11, 2003;
<trygadmin.dk>, registered on August 11, 2003.
Some of the Complainant’s services are offered from <trygmedpc.dk>. As brought forward in the Complaint the word “tryg” means “safe”, “trygmedpc” means “safe with PC” and “trygpcbruger” means “safe PC user”.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to the trademark TRYG and the domain names, in which the Complainant has rights. The wording of the domain name <trygpcbruger.com> includes the TRYG trademark which creates a likelihood of association between the domain name <trypcbruger.com> and the trademark TRYG.
The Complainant furthermore contends that the Respondent, who is marketing services similar those for which the trademark TRYG is registered, has no rights or legitimate interests in respect of the disputed domain name whereas the trademark TRYG has an extended protection as a well-known mark according to Danish legislation.
The Complainant also contends that the disputed domain name was registered and is being used in bad faith as the domain name <trygpcbruger.com> attracts consumers solely due to the reputation of the TRYG trademark in Denmark, and the domain name <trygpcbruger.com> was registered to exploit the likelihood of confusion with the well-known trademark TRYG.
The Complainant requests that the disputed domain name <trygpcbruger.com> be transferred to the Complainant.
As noted above, the Respondent is in default pursuant to the Rules, paragraphs 5(e), and 14 and paragraph 7(c) of the Supplemental Rules, because no Response was received from the Respondent by the applicable deadline. However, a default does not automatically result in a finding for the Complainant. Rather, under paragraph 4(a) of the Policy, it remains the Complainant’s burden to establish that all three of the required criteria for a transfer of the domain name have been met.
Under the Rules, paragraphs 5(e) and 14(a), the effect of a default by Respondent is that the Panel shall proceed to a decision on the Complaint. Under paragraph 14(b) of the same Rules, the Panel is empowered to draw such inferences from the Respondent’s default as it considers appropriate under the circumstances.
6. Discussion and Findings
In order to obtain transfer of the disputed domain name, the Complainant must show under paragraphs 4(a)(i-iii) of the Policy:
(i) the 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 was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The domain name at issue is <trygpcbruger.com>. The domain name contains the Complainant’s trademark TRYG in its entirety with the added suffix “pcbruger” and the generic and functional top level domain name “.com”. When determining whether a domain name and a trademark are identical or confusingly similar, the gTLD shall be disregarded.
The question is therefore if the addition of the suffix “pcbruger” renders the disputed domain name dissimilar from the Complainant’s registered trademark. The Danish words “pc bruger” in English mean “pc user”, and are clearly words of a generic or potentially descriptive nature. The Danish word “tryg” in English means “safe”. As a mark, of itself, TRYG is therefore towards the lower end of the distinctiveness spectrum. However, the Complainant has evidently succeeded in obtaining a trademark registration for TRYG. Furthermore, the Complainant’s use of its TRYG mark in Denmark appears be considerable, such that (as the Panel finds further below) the mark itself has become well-known in connection with Complainant’s offering of insurance services. Indeed, according to the Complainant, it is the largest insurance company in Denmark. For these reasons, the trademark TRYG is likely to have extended protection in Denmark.
In a large number of previous decisions, Panelists have found that the fact that a domain name incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks (Oki Data Americas Inc v. the ASD Inc, WIPO Case No. D2001-0903 and CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273).
Accordingly, the domain name must therefore be considered confusingly similar to the trademark TRYG.
B. Rights or Legitimate Interests
The Complainant has alleged that the Respondent is using questionable methods to sell and market an anti-spyware program towards consumers in Denmark. There is an evident similarity between the Complainant’s trademark TRYG and domain name <trygmedpc.dk> (meaning “safe with pc”), and the Respondent’s domain name <trygpcbruger.com> (meaning “safe pc user”). The Respondent’s domain name is therefore easily confused with the well known trademark of the Complainant in Denmark. The Complainant therefore claims that the Respondent’s sale of its product by using the trademark TRYG in the domain name is detrimental to the repute of the Complainant. In support of this allegation, the Complainant refers to an article by the Danish company CSIS Security Group in which the Respondent’s anti-spyware program is described as not being genuine and aggressively marketed through popup windows that frighten consumers into buying the anti-spyware program.
While the disputed domain name does not currently appear to be in use, there are indications in the record (including the above-referred article) that the Respondent has marketed and sold (in Danish) an anti-spyware program through the domain name <trygpcbruger.com>. While the Panel expresses no view on the genuineness or otherwise of any such offering by Respondent, in the absence of a Response, the Panel is entitled to accept reasonable assertions of fact made by the Complainant, and does so in this case. While the potentially descriptive nature of the domain name may have made it easier for the Respondent to establish a legitimate interest in the domain name <trygpcbruger.com> had it sought to do so, it has not done so. Where it not for the fame of the Complainant’s mark in this case, the Panel may also have had some concerns about potentially giving the holder of a less distinctive mark a potential claim over domain names which incorporate that mark (see for example Auto L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096). However, here there is an apparent risk that consumers in Denmark may be misled to believe that the Respondent’s offered anti-spyware program comes from or is in some way associated with the Complainant. With regard to the described circumstances of the Respondent’s marketing and sale of the anti-spyware program, the Panel finds it plausible that the domain name <trygpcbruger.com> was registered to exploit the likelihood of confusion with the well-known trademark TRYG. Thus the Panel finds the Complainant has made a prima facie case that the Respondent has no rights or legitimate interest in respect of the domain name. As the Respondent has failed to rebut this case, the Panel finds for the Complainant under the second element of the Policy.
C. Registered and Used in Bad Faith
With regard to well known trademark of the Complainant in Denmark the Panel finds it very unlikely that the Respondent was unfamiliar with the trademark TRYG when the domain name first was registered. Accepting the Complainant’s contentions that the website at the disputed domain name previously contained material in the Danish language, apparently directed at Internet users in Denmark, it seems implausible to the Panel that the Respondent would not have been familiar with the Complainant. Moreover, the Respondent has not sought to deny the Complainant’s claims in this regard. While the word “tryg” could well be used descriptively in Danish, it also corresponds to the registered trademark of one of the largest insurance companies in Denmark. In the absence of any explanation from the Respondent, the Panel finds it difficult to believe that the selection of this particular disputed domain name by the Respondent was likely to have been a coincidence.
Through what is put forward in the Complaint the Respondent in correspondence between the parties assured the Complainant in October 2007 that the disputed domain name already was changed. Despite this fact and numerous attempts to contact the Respondent no measures were taken and the website of the Respondent was still active as late as on the day for the filing of the Complaint. Accepting the Complainant’s plausible factual contentions as to the Respondent’s previous use of the disputed domain name to offer an anti-spyware program, it would be reasonable to infer from this that the Respondent has derived (or at least aimed to derive) revenue from the use of a domain name which is confusingly similar to the Complainant’s TRYG mark. As to the current holding and apparent non-use of the disputed domain name, considering the above, and particularly in view of the fame of the Complainant’s TRYG mark in Denmark and the absence of any Response, the Panel further finds it difficult to conceive of any plausible legitimate use of the domain name by the Respondent. See e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
In light of these circumstances, the Panel concludes that the Complainant has proven that the Respondent registered and has used the domain name 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 <trygpcbruger.com>, be transferred to the Complainant.
Dated: April 21, 2008