WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
JYSK A/S v. Domain Admin / A-Domains
Case No. D2008-0634
1. The Parties
The Complainant is JYSK A/S of Brabrand, Denmark, Denmark, represented by Valea AB, Sweden.
The Respondent is Domain Admin, A-Domains of Stockholm, Sweden, represented internally.
2. The Domain Name and Registrar
The disputed domain name <jysk.info> is registered with Name.com LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2008. On April 24, 2008, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the disputed domain name. On May 14, 2008, Name.com LLC 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 May 15, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 4, 2008. In accordance with the Rules, paragraph 5(d), the due date for Response was extended to June 11, 2008. The Response was filed with the Center on June 12, 2008.
The Center appointed Peter G. Nitter as the sole panelist in this matter on June 25, 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
Complainant is a chain of retail stores specialized in bed linen, house wares, furniture and home accessories with its headquarters in Denmark.
Complainant opened its first store in 1979 in Aarhus Denmark under the name Jysk Sengetøjslager. Complainant has registered the trademark JYSK in several jurisdictions both as a word and device.
The disputed domain name <jysk.info> was registered in 2005.
Complainant sent a cease-and-desist letter to Respondent on February 14, 2008 to which Respondent replied on February 29, 2008.
5. Parties’ Contentions
Complainant asserts that it has registered the JYSK trademark both in word only and figurative forms. According to Complainant, the disputed domain name is identical to its Polish trademark registration of the word mark JYSK. Alternatively Complainant asserts that the disputed domain name is confusingly similar to its device mark JYSK, as the disputed domain name incorporates the word “jysk” which is the most prominent and substantial component of the device mark.
Complainant further asserts that Respondent has no rights or legitimate interests in the contested domain name. Complainant claims that it has not licensed Respondent to use Complainant’s trademark and that the mere assertion of preparations to make legitimate noncommercial use of the disputed domain name is not sufficient to grant Respondent rights or legitimate interests.
According to Complainant, Respondent has generated pay-per-click revenue through sponsored hyperlinks to third-party websites of Complainant’s competitors, as well as links to other goods. Further, Respondent’s website has included an offer to sell the disputed domain name to potential interested buyers. The fact that Respondent after being contacted by Complainant has changed the content of the website associated with the disputed domain name does not alter Respondent’s lack of rights or legitimate interests.
Further, Complainant maintains that Respondent, due to his knowledge of the JYSK trademark and Complainant’s rights, has registered the disputed domain name in bad faith. In a letter to Complainant, Respondent has further informed that he, prior to registering the disputed domain name, when searching for the term “jysk” on the Internet, only found information on Complainant’s business, and that this was the direct cause for his registration of the disputed domain name.
Respondent’s bad faith registration and use is, according to Complainant, evidenced by the fact that Respondent’s website provides links to competitors of Complainant.
According to Complainant, Respondent’s bad faith is also shown by the fact that Respondent has engaged in a pattern of conduct in which he for commercial gain has registered domain names containing trademarks of others, in order to sell the domain names, or to attract users to Respondents websites.
Respondent maintains that Complainant, with the exception of its Polish registration, does not have any rights to the term “jysk”. According to Respondent Complainant’s device marks does not give Complainant rights to the term “jysk”. The term “jysk” refers to a geographical location and Complainant can not have exclusive rights to use the term.
Respondent further argues that he intends to use the disputed domain name to provide information on the term “jysk”. The registration of the disputed domain name should, according to Respondent, be seen in connection with his project to create websites about countries, towns, cities and other locations, for which he has so far registered approximately 800 domain names. According to Respondent the website connected to the disputed domain name was originally used to provide a link to the website “jyskordbok.dk” containing information on a project to publish a dictionary on the Jysk dialect. However, due to a mistake when changing name servers, the redirection to “jyskordbok.dk” ceased to work, resulting in the disputed domain name showing a parking page including pay-per-click links. According to Respondent, the intended use of the disputed domain name is strictly non-commercial. Respondent holds that he is not intending to make a profit by using the disputed domain name neither by providing pay-per-click links nor by selling the disputed domain name. Respondent does however admit that he has previously made some profit by providing pay-per-click links on other websites and by selling other domain names, and that he has made a small income from the use of the disputed domain name.
Respondent argues that he did not register and that he is not using the disputed domain name in bad faith. Respondent maintains that he prior to registering the disputed domain name did several trademark checks in both the Swedish and Danish Trademark Databases, the US Patent and Trademark Office, and the Madrid database, which showed that “jysk” was only registered as part of a device mark, and not as a word mark.
Respondent also asserts to have been of the opinion that “jysk” could not be registered as a trademark as the term is geographical.
On this basis Respondent asserts that Complainant does not have any right to use the term “jysk” as a trademark that prevents him from registering and using the disputed domain name.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name consists of the term “jysk” with the addition of the generic top level domain denominator “.info”.
Previous panel decisions under the UDRP have concluded that the generic top level domain denominator is irrelevant when determining whether a disputed domain name is confusingly similar to a protected trademark. Thus, the first issue only concerns the part of the disputed domain name which consist of “jysk”.
Complainant has provided evidence to the fact that it has registered the word mark JYSK in Poland.
Complainant has also established that it registered a device mark in several jurisdictions worldwide, including in Sweden which is also the registered domicile of Respondent, in which the term “jysk” forms the substantial component, and the only word element.
The other aspect of the mark is the stylized shape of a goose. The only element of Complainant’s trademark that can be reflected in a domain name is the term “jysk”. The Panel agrees with the views of the presiding panelists in Ternana Calcio S.p.A v. Domain Reseller Consulting Inc., WIPO Case No. D2003-0137 and Knipping Kozijnen B.V. v. R.T.P. Hanssen Case No. D2006-0622, that when comparing a domain name with a trademark which contains a prominent word or words, it will often be appropriate in applying the “identical or confusingly similar” test, to first compare the domain name with the word component of the mark, in this case “jysk”.
The Panel thus finds that the disputed domain name is identical or confusingly similar to Complainant’s trademark.
The Panel finds that Respondent has not been granted any license or right to use Complainant’s trademark in any manner by Complainant, and that Respondent is not commonly known by the name “jysk”.
Respondent maintains that his purpose with registering the disputed domain name is to provide information on the meaning of the term “jysk”. Respondent has in the Panel’s view not provided sufficient evidence to this fact.
On the basis of the evidence presented to it, the Panel finds that Respondent has directed the disputed domain name to an Internet website offering links to other commercial websites and that some of these websites provide products in competition with the products provided by Complainant. The Panel does not find any evidence supporting Respondent’s statement that these pay-per-click links were provided unintentionally on the website connected to the disputed domain name.
Further, the Panel finds that Respondent, by including a link with the phrase “Inquiries regarding this domain name”, has directed potential buyers of the disputed domain name to a website where offers for the disputed domain name could be made. This offer to sell the disputed domain name provides some further evidence of lack of rights and legitimate interests see e.g., Koninklijke Philips Electronics N.V. v. CredoNIC.com / Domain For Sale, Domain Administrator WIPO Case No. D2005-0763.
The Panel concludes that Respondent, through the registration of the disputed domain name, is in all likelihood intentionally trading or intending to trade on the fame of the JYSK trademark. The fact that the JYSK trademark includes a design element does not of itself give Respondent the right to knowingly register and reap pay-per-click profits from the inclusion of the word component of that mark in a domain name.
On this basis the Panel finds that Respondent does not have any rights or legitimate interests in respect of the disputed domain name.
In his response Respondent has informed that he prior to registering the disputed domain name did a trademark check of the term “jysk” in which he found that Complainant had registered a device mark that included the term. On this basis the Panel finds that Respondent was well aware of Complainant’s rights to the JYSK device mark (even if he misconstrued the effect of those rights for the purpose of the Policy) prior to registering the disputed domain name.
However, Respondent seems to maintain that Complainant’s JYSK device trademark is not identical or confusingly similar to the disputed domain name, and thus that Complainant’s trademark rights do not hinder Respondent’s registration of the disputed domain name.
As mentioned, the Panel finds that Complainant’s device mark is identical or confusingly similar to the disputed domain name, as the term “jysk” is the substantial part of the disputed domain name, and the only element of the device mark that may be reflected in a domain name.
In the Panel’s view Respondent’s opinion on the similarity between Complainant’s trademark and the disputed domain name can not prevent a finding of bad faith.
Respondent maintains that he intended to use the disputed domain name for noncommercial purposes that do not disrupt the business of Complainant. However, as the Panel has found, Respondent has used the website connected to the disputed domain name to provide links that offer products in competition with Complainant’s products.
The Panel finds that Respondent has registered and used the disputed domain name with the intention of attracting Internet users due to the confusing similarity between the domain name and the Complainants’ JYSK trademarks, and making a profit by providing pay-per-click links.
Further, as found by the Panel, Respondent has made a general offer to sell the disputed domain name. Respondent has in his response informed that he has previously sold several domain names in order to make a profit, and the Panel infers from Respondent’s prior history that Respondent intends to sell the disputed domain name at a profit if provided with an opportunity.
Under these circumstances, the Panel finds 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 <jysk.info> be transferred to the Complainant.
Peter G. Nitter
Dated: July 9, 2008