World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nilfisk-Advance A/S v. Moniker Privacy Services / Janice Liburd

Case No. D2011-0693

1. The Parties

The Complainant is Nilfisk-Advance A/S of Brøndby, Denmark represented by Charlotte Munck, Denmark.

The Respondent is Moniker Privacy Services of Pompano Beach, Florida, United States of America and Janice Liburd of Panama, Panama.

2. The Domain Names and Registrar

The disputed domain names <my-nilfisk-alto.com>, <my-nilfisk.com> are registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2011. On April 20, 2011, the Center transmitted by email to Moniker Online Services, LLC. a request for registrar verification in connection with the disputed domain names. On April 21, 2011, Moniker Online Services, LLC

transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 26, 2011, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 26, 2011.

The Center verified that the Complaint together with 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 the Respondent of the Complaint, and the proceedings commenced on May 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 29, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 31, 2011.

The Center appointed Anna Carabelli as sole panelist in this matter on June 14, 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 owns a large number of registrations worldwide for the trademarks NILFISK and NILFISK ALTO in relation to cleaning preparations, cleaning machines and equipment. Among the Complainant’s NILFISK trademark registrations are Danish Registration No. VR 1910 00613 (registered in November 1910), United States Registration No. 0695570 (registered in 1960). The Complainant also owns international registrations for the trademarks NILFISK No. 813249 and NILFISK ALTO No. 839563, covering inter alia the United States (Annex 2 to the Complaint) .

The Complainant also owns a large number of domain names containing the term NILFISK in combination with other terms, such as <nilfisk.com> and <nilfisk-alto.com> (Annex 5 to the Complaint).

The disputed domain name <my-nilfisk.com> was registered on February 22, 2011 whereas the disputed domain name <my-nilfisk-alto.com> was registered on November 4, 2010; both of them lead to a website featuring several sponsored links to various categories of commercial enterprises and commercial third-party websites.

In November and December 2010, the Complainant requested the Respondent to cancel or transfer to the Complainant the domain name <my-nilfisk-alto.com> based on its rights in the trademark NILFISK ALTO; the Respondent did not respond and in February 2011 registered the domain name <my-nilfisk.com>. In March and April 2011 the Complaint wrote again to the Respondent in a further attempt to settle the matter but received no answer. (Annex 9 to the Complaint)

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names <my-nilfisk.com and <my-nilfisk-alto.com> incorporate the Complainant’s trademarks NILFISK and NILFISK ALTO respectively, and are therefore confusingly similar with them and that the addition of the term “my” is not relevant since it is generic and commonly used by industries when constructing websites to their customers for sales online. Thus the Complainant owns the domain names <mynilfisk.com> and <mynilfiskalto.com>.

The Complainant summarily alleges that the Respondent has no right or legitimate interest in the disputed domain names. In particular because the Respondent Moniker Privacy Service is a “full-service ICANN accredited domain registrar, premium brokerage, escrow and live auction house” (Annex 7 to the Complaint) and the disputed domain names are not used in connection with a bona fide offering of goods or services under paragraph 4(c) of the Policy.

Complainant also contends that the disputed domain names were registered in bad faith since the Respondent (i) at the time of registration had knowledge of the Complainant’s trademarks and (ii) was respondent in another UDRP case concerning the domain name <nilfiskusa.com> (Nilfisk-Advance A/S v. Moniker Privacy Services [2466703] / Janice Liburd, Porchester Partners, Inc., WIPO Case No. D2010-0859). The disputed domain names are also being used in bad faith to intentionally attempt to attract Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement of the Respondent’s website.

Consequently, the Complainant requests the transfer of the disputed domain names.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to decide the 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.

Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) The disputed domain names are identical or confusingly similar to the Complainant’s trademark or service mark; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a) (iii) shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances, any one of which if proved by the Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the disputed domain names for the purpose of paragraph 4(a)(ii) above.

A. Identical or Confusingly Similar

The Complainant has proved that it owns numerous trademark registrations for the marks NILFISK and NILFISK ALTO in respect of cleaning preparations, cleaning machines and equipment.

The disputed domain names are confusingly similar to the Complainant’s trademark, as they incorporate NILFISK and NILFISK ALTO. The addition of the generic term “my” cannot serve to distinguish. This line of reasoning is well established. Numerous other UDRP panels have found that the addition of generic terms or numbers does not create a different trademark in which the respondent has rights, and cannot be considered sufficient to avoid confusion between the domain name and the complainant’s trademark (GA Modefine SA v. Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195; Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022; Nintendo of America, Inc. v. Gray West International, WIPO Case No. D2000-1219; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp., WIPO Case No. D2000-0464).

Accordingly the Panel finds that the Complainant has established element 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy identifies a non-exhaustive list of circumstances that may demonstrate the respondent’s lack of rights or legitimate interests in a domain name, namely: (i) using the domain name in connection with a bona fide offering of goods and services; (ii) being commonly known by the domain name; or (iii) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. 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 Respondent failed to submit an answer to the Complaint. On the other hand, the Complainant has shown that the websites corresponding to the disputed domain names feature sponsored links to third parties’ commercial websites, presumably on a “payper-click” basis. Applying the comments of numerous other UDRP panels (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623; Deutsche Telekom AG v. Keyword Traffic, WIPO Case No. D2005-0443; Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430; Associazione Radio Maria v. Mr. Hong Hee Dong, WIPO Case No. D2005-0062; Micro Electronics Inc. v. J. Lee, WIPO Case No. D2005-0170), the Panel finds that such a use does not constitute a bona fide offering of goods or services and that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its websites (and hence divert Internet traffic) by creating a likelihood of confusion with the Complainant’s marks.

The above conclusion is also in line with a previous decision against the Respondent involving the Complainant’s trademark and a domain name that was very similar to the disputed domain names in this case, namely <nilfiskusa.com> (see Nilfisk-Advance A/S v. Moniker Privacy Services [2466703] / Janice Liburd, Porchester Partners, Inc., WIPO Case D2010-0859).

Accordingly the Panel finds that the Complainant has established element 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that in all likelihood the Respondent knew of the Complainant’s trademarks when it registered the disputed domain names based on the fact that the Complainant’s trademarks, are registered in nearly one hundred countries, appear to be well-known and had been in use for one hundred years before the registration of the disputed domain names occurred.

Previous knowledge of a third party’s trademark reflected in a domain name amount to bad faith registration (see Revlon Consumer Products Corporation v. Domain Manager, PageUp Communications,

WIPO Case No. D2003-0602; Microsoft Corporation v. Superkay Worldwide Inc., WIPO Case No. D2004-0071; Revlon Consumer Product Corporation v. Easy Weight Loss Info, Augustinus Ferry Yonatan, WIPO Case No. D2010-0936). Thus, the Panel finds that Respondent registered the disputed domain names in bad faith.

The Panel also finds that the disputed domain names are being used in bad faith. As mentioned in paragraph B above, the websites corresponding to the disputed domain names feature sponsored links to third parties’ commercial websites presumably on a “pay-per-click” basis. In doing so the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website (and hence divert Internet traffic) by creating a likelihood of confusion with the Complainant’s marks. This corresponds to one of the three illustrative circumstances set forth in paragraph 4(b)(iv) of the Policy which, for the purposes of paragraph 4(a)(iii), shall be evidence of the use of a domain name in bad faith.

Accordingly the Panel finds that the Complainant has established element 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 disputed domain names <my-nilfisk.com> and <my-nilfisk-alto.com> be transferred to the Complainant.

Anna Carabelli
Sole Panelist
Dated: June 28, 2011

 

Explore WIPO