World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Homeenter AB v. Domains by Proxy, Inc. / Scandic Management S.A.

Case No. D2011-0131

1. The Parties

The Complainant is Homeenter AB of Malmö, Sweden, represented by Domain and Intellectual Property Consultants Dipcon AB, Sweden.

The Respondent is Domains by Proxy, Inc. of Scottsdale, Arizona, United States of America / Scandic Management S.A. of Tortola, British Virgin Islands, Overseas Territory of United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <bonnierstrafikskola.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2011. On January 25, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On January 25, 2011, GoDaddy.com, Inc. 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” 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 the Respondent of the Complaint, and the proceedings commenced on January 27, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 16, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 17, 2011.

The Center appointed Arne Ringnes as the sole panelist in this matter on March 2, 2011. 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 operates a website at “www.bonnierstrafikskola.se” where the Complainant’s software is marketed and sold. The software is a service to consumers wishing to practice on the theory exam for a Swedish driver’s license.

The disputed domain name was registered on December 22, 2008.

The Complainant is, through a series of companies, a wholly owned subsidiary of Bonnier Holding AB, which is the owner of several trademark registrations for BONNIER. The trademark registrations predate the registration of the disputed domain name. Bonnier Holding AB registered BONNIER as a trademark in Sweden on May 3, 2002 (registration number 0354819), and as a European Community Trademark on August 23, 2002 (registration number 002074797).

There has been correspondence between the parties before these proceedings, but the parties were not able to resolve the dispute.

5. Parties’ Contentions

A. Complainant

The Complainant is the owner of several BONNIER trademark registrations. The Complainant submits that the word “trafikskola” is generic and descriptive. The disputed domain name is confusingly similar to the Complainant’s mark.

The Complainant further submits that the Respondent does not have any rights to the trademark BONNIER, nor BONNIER trafikskola.

The Respondent operates other web pages in competition with the Complainant linked from the disputed domain name where the Respondent’s software is marketed and sold. The Respondent is a competitor of the Complainant which attempts to attract Internet users to its website at the disputed domain name for commercial gain by creating likelihood of confusion with the Complainant’s mark. The Complainant asserts that its marks have been targeted due to the distinctiveness in the marks.

The Respondent indicated its willingness to sell the disputed domain name, but was not longer willing when the Complainant made it clear that this would be without compensation. This indicates that the disputed domain name was registered with the purpose of selling it to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

According to previous UDRP panels a registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Panel notes that the Complainant’s parent company, Bonnier Holding AB registered BONNIER as a trademark in Sweden on May 3, 2002 (registration number 0354819), and as a European Community Trademark on August 23, 2002 (registration number 002074797). According to previous UDRP panels a subsidiary or parent company to the registered holder is considered to have rights in a trademark under the UDRP (see Komatsu Deutschland GmbH v. Ali Osman / ANS, WIPO Case No. D2009-0107).

The disputed domain name includes the Complainant’s trademark in its entirety and as a dominant element. The disputed domain name <bonnierstrafikskola.com> differs from the registered BONNIER trademark by the additional word “trafikskola” (i.e., “driving school” in Swedish) and the additional gTLD “.com”.

Previous UDRP panels have ruled that the mere addition of a non-significant element does not generally sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505). The additional word “trafikskola” does not serve sufficiently to distinguish the disputed domain name from the Complainant’s BONNIER trademark.

Further, the Panel is of the opinion that the addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity, see F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the Respondent has not responded and thereby failed to assert any such rights or legitimate interests.

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of evidence shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)).

The Panel finds that the Complainant established such a prima facie case, inter alia, due to the fact that the

Complainant has not licensed or otherwise permitted the Respondent to use its trademark.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may be evidence of bad faith under paragraph 4(a)(iii).

The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant owns a registration for the BONNIER trademark since the year 2002. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the domain name it had intentionally attempted to attract, for commercial gain, Internet users to the website or other on-line location to which the disputed domain name is resolved to, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location to which the domain name resolved to. In this case, the Respondent operates other web pages in competition with the Complainant linked from the disputed domain name where the Respondent’s software is marketed and sold. The Respondent’s use of the Complainant’s mark, to promote similar or identical goods to the goods being offered by the Complainant, is in the Panel’s view clear evidence that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and of the use the Complainant is making of its BONNIER trademark, and indicates that the Respondent’s primary intent with respect to the disputed domain name is to trade off the value of these. The Respondent’s actions therefore constitute bad faith, see Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765.

Having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

7. Decision

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 <bonnierstrafikskola.com> be transferred to the Complainant.

Arne Ringnes
Sole Panelist
Dated: March 21, 2011

 

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