Complainant is Nilfisk-Advance A/S of Brøndby, Denmark, represented internally.
Respondents are Moniker Privacy Services /Janice Liburd, Porchester Partners, Inc., of Pompano Beach, Florida, United States of America, and Panama, Panama, respectively.
The disputed domain name <nilfiskusa.com> is registered with Moniker Online Services, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2010. On May 27, 2010, the Center transmitted by email to Moniker Online Services, LLC. a request for registrar verification in connection with the disputed domain name. On June 1, 2010, Moniker Online Services, LLC. 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 and contact information in the Complaint. The Center sent an email communication to Complainant on June 3, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an Amended Complaint on June 7, 2010 and an amendment to the Amended Complaint on June 8, 2010. The Center verified that the Amended Complaint together with the amendment to the Amended 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(a) and 4(a), the Center formally notified Respondents of the Complaint, and the proceedings commenced on June 10, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 30, 2010. Respondents did not submit any response. Accordingly, the Center notified Respondents' default on July 1, 2010.
The Center appointed Nayiri Boghossian as sole panelist in this matter on July 12, 2010. 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.
Complainant owns a large number of registrations worldwide for the trademark NILFISK and trademarks containing NILFISK, covering cleaning preparations, cleaning machines and equipment. Among Complainant's NILFISK trademark registrations are Danish Registration Number VR 1910 00613 (registered in 1910) and United States Registration Number 695570 (registered April 5, 1960). Complainant also owns a large number of domain names containing the term NILFISK followed by other terms, such as <nilfiskadvance.us>.
The disputed domain name was registered April 5, 2010 and presently routes to a parking/search page displaying links promoting various categories of commercial enterprises.1
Complainant avers that it is a worldwide company manufacturing a broad variety of home and industrial cleaning equipment, which employs over 5,000 employees and in 2009 had a turnover of six hundred eighty million Euros.
Complainant contends that the disputed domain name contains Complainant's NILFISK trademark and is therefore confusingly similar to Complainant's trademark. Complainant also alleges that because Complainant is a worldwide company, the Panel should disregard the geographic term “usa” in the disputed domain name, rendering the disputed domain name identical in impression to Complainant's trademark.
In summary fashion, Complainant alleges that Respondents have no right or legitimate interest in the disputed domain name. Complainant also summarily alleges that the disputed domain name was registered and is being used in bad faith. Among other things, Complainant alleges that Respondents have no license or permission to use the disputed domain name and have no business connection with Complainant. In short, Complainant contends that “Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with the our trademark as to the source, sponsorship, affiliation, or endorsement of our website or of a product or service on our website or location.” [sic]2
Complainant avers that it sent a notice by email to Respondents on April 24, 2010 requesting transfer of the disputed domain name. Complainant avers that it received no response to this communication or later reminder.
On the basis of the above allegations, Complainant seeks transfer.3
Respondents did not reply to Complainant's contentions.
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondents have 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.
Complainant must establish these elements even if Respondents do not respond to the Complaint. See, e.g., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
Although the disputed domain name is not identical to Complainant's NILFISK or NILFISK-derivative trademarks, the Panel agrees with Complainant and concludes that the disputed domain name is confusingly similar to Complainant's trademarks.
The disputed domain name <nilfiskusa.com> is made up of the simple combination of Complainant's trademark and the widely used abbreviation for the United States of America.
Many cases have considered the effect of linking a trademark with a geographical name to create a domain name. The common conclusion is that the addition of a geographical name does not distinguish the domain name from the trademark. See, e.g., Koninklijke Philips Electronics NV v. Gopan P.K., WIPO Case No. D2001-0171 (geographical name “adds nothing other than to signify a geographical location or limitation and would be regarded by virtually every person who saw the disputed domain name as an indication that it was the domain name of [the complainant] as utilized in [that location]”). Moreover, UDRP panels disregard the domain name suffix in evaluating confusing similarity. E.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315.
The Panel finds that the addition of the term “usa” to Complainant's trademark does not alter the confusion with Complainant's marks that Internet users would experience; it follows that the disputed domain name is confusingly similar to Complainant's trademarks.
Therefore, the Panel concludes that the Complaint makes the required showing under Policy, paragraph 4(a)(i).
The Panel also concludes that Respondents have no rights or legitimate interests in the disputed domain name.4
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i) – (iii).
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).
As Complainant has shown, the website to which the disputed domain name routes presently displays a parking page, with links to commercial third-party websites. By diverting traffic to third parties and their products, the Panel finds that Respondents are using Complainant's marks for their own commercial purposes. See, e.g., The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit [...] in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)). See also Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya Ltd, WIPO Case No. D2006-1079.
In the absence of a Response, the Panel accepts as true Complainant's allegations that Respondents have no authorization to use Complainant's trademarks. Although Complainant does not address this point, it also does not appear on the record that Respondents are commonly known by the disputed domain name. The Panel agrees with Complainant that Respondents are seeking to attract Internet users through Complainant's marks for Respondents' own commercial purposes.
The Panel therefore finds that Respondents' use of the disputed domain name demonstrates Respondents' lack of a legitimate non-commercial interest in, or fair use of, the domain name. See e.g., Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784. The Panel also finds that Complainant makes out a prima facie case.
Filing no response, Respondents have not rebutted Complainants' prima facie case or invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of rights or legitimate interests in the disputed domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
The Panel also concludes that Respondents have registered and are using the disputed domain name in bad faith, as explained below.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name;
(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;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
These circumstances are not exhaustive, however, and panels may draw inferences about bad faith registration or use in light of the circumstances, such as whether the trademarks in question are well-known, whether there is no response to the complaint, concealment of identity, and other circumstances. E.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel finds that Respondents knew of Complainant's mark when Respondents registered the disputed domain name, for the following reasons. First, it appears that Complainant's mark, registered in nearly one hundred countries, is well known. Second, Complainant's mark was in use for one hundred years before the registration of the disputed domain name. Therefore, this Panel finds “that [r]espondent most likely was aware of [c]omplainant's trademark when it registered the disputed domain name. It seems [highly] unlikely [...] that [r]espondent would have chosen this name randomly”. Kahn Lucas Lancaster, Inc. v. Marketing Total S.A., WIPO Case No. D2007-1236. Thus, the Panel finds that Respondents registered the disputed domain name in bad faith.
It only remains to determine whether Respondents, in addition to registering in bad faith, are also using the disputed domain name in bad faith.5 Despite the fact that the record contains little evidence relating to the first three illustrative circumstances in paragraph 4(b) of the Policy, the Panel nevertheless concludes that Respondents are also using the disputed domain name in bad faith, as explained below.
First, Respondents have chosen to refrain from filing a Response to the Complaint.
Second, it appears that Respondents attempted to conceal their identity under circumstances suggesting bad faith.
The use of privacy registration services is presently a legally acceptable practice and may be for legitimate purposes. E.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062. Without more, the use of a privacy or proxy registration service would not be sufficient to establish bad faith use or registration. Id. In this case, however, it appears that Respondents have a bad faith motive for using a privacy registration service, to conceal their true identity and try to avoid responsibility. The Panel finds, therefore, that Respondents' use of a privacy service is further evidence of Respondents' bad faith. See, e.g., Canadian Tire Corporation Limited v. CK Aspen, WIPO Case No. DTV2007-0015) (also citing other decisions finding use of privacy registration services as indications of bad faith).
Third, the overall circumstances in this case, including Respondents' use of a web page containing pay-per-click links to generate revenue based on Complainant's trademarks, support a finding that “respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.” Policy paragraph 4(b)(iv).
The Panel concludes that the requirements of the Policy paragraph 4(a)(iii) are fulfilled.
For all 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 <nilfiskusa.com> be transferred to Complainant.
Dated: July 23, 2010
1 The Panel has undertaken limited research by visiting the website to which the disputed domain name routes, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, section 4.5.
2 Complainant apparently misquotes the language of paragraph 4(b) of the Policy in this allegation.
3 The Complaint makes very few factual allegations, and those which are presented are peculiarly directed against the registrar's privacy service. It would have been helpful for the Complaint to reflect concrete factual grounds supporting Complainant's claim to relief rather than mechanical and incomplete recitation of language from the Policy and the Center's complaint template. Even upon amendment to add Respondent Janice Liburd, Porchester Partners, Inc., Complainant did not amplify its Complaint with specifics.
4 Respondent Moniker Privacy Services is a service provided by the registrar of the disputed domain name. Accordingly, the Panel's references in this decision to Respondent's conduct, intention and knowledge are meant to refer to the conduct, intention and knowledge of Respondent Janice Liburd, Porchester Partners, Inc.
5 Both the elements of bad faith registration and bad faith use must be established. E.g., E. & J. Gallo Winery v. Hanna Law Firm, WIPO Case No. D2000-0615; Telstra Corporation Limited v. Nuclear Marshmallows, supra.