WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carlsberg A/S v. Darius Katz
Case No. D2011-0852
1. The Parties
Complainant is Carlsberg A/S of Copenhagen, Denmark, represented by Bettinger Schneider Schramm Patent- und Rechtsanwälte, Germany.
Respondent is Darius Katz of Malmö, Sweden.
2. The Domain Names and Registrar
The disputed domain names <semperardens.com>; <thirstforgreat.com>; and <thirst4great.com> (the “Domain Names”) are registered with Active 24 ASA.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2011. On May 17, 2011, the Center transmitted by email to Active 24 ASA a request for registrar verification in connection with the Domain Names. On May 19, 2011, Active 24 ASA transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on May 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 12, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 14, 2011.
The Center appointed Clive L. Elliott as the sole panelist in this matter on June 17, 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.
Following appointment of the panelist on June 17, 2011, the Center received an email from Respondent on June 17, 2011 requesting a list identifying materials transmitted to the Panel. On June 20, 2011 the Center emailed Respondent listing materials sent to the Panel. No further communication was received from Respondent.
4. Factual Background
The Domain Names were registered as follows:
- <semperardens.com>: July 9, 2010;
- <thirstforgreat.com>: July 9, 2010; and
- <thirst4great.com>: October 12, 2010.
5. Parties’ Contentions
Complainant states that it is a Danish brewing company founded in 1847, with its headquarters in Copenhagen, Denmark. As at 2009 it was the 4th largest brewery group in the world, employing around 45,000 people. As well as being known for its high-quality local beers, its major brand is Carlsberg Beer. Complainant asserts that its revenue in 2010 was DKK 60.05 billion, and it had an operating income of DKK 10.25 billion with profits of DKK 5.351 billion. Complainant asserts that its brands are well-known, not only because of the quality and wide-spread distribution of its products, but also because of its extensive advertising expenditures. Complainant advises that it has been the main and shirt sponsor of the Liverpool Football Club since 1992, and that its advertising has included sponsorship of the Euro 2008, the 2004 European Football Championship and the 1990 FIFA World Cup.
Complainant advises that one of its local beers is called “Semper Ardens”, which is a line of premium gourmet beers developed by brew masters in Copenhagen and produced by Carlsberg Denmark. The first variety of the series was launched in 2000 and currently consists of six beers, of which two are seasonal Christmas and Easter beers. Complainant advises that the name “Semper Ardens”, which is Latin for “always burning” was the motto of Carl Jacobsen, who was the son of Complainant’s founder J.C. Jacobsen.
Complainant asserts that its trademarks comprise distinctive phrases which are associated with its products in the minds of consumers, making it highly unlikely that Respondent chose to register these terms without having both knowledge of Complainant’s marks and the intention of taking advantage of the goodwill associated with those marks. As referred earlier, the trademark SEMPER ARDENS is Latin and means “always burning” which in itself is not suggestive of any particular business or other legitimate use. The Latin words have no meaning in any modern language and do not form a common term. Likewise Complainant’s THIRST FOR GREAT mark, while comprised of three English words, is not a grammatical phrase and as such is a highly distinctive identifier. Neither of these textual strings could be said to be common words or phrases, and as such Complainant believes it is unlikely Respondent selected them randomly.
Complainant submits that at the time the Domain Name <semperardens.com> was registered in July 2010, it had been using its SEMPER ARDENS mark in commerce for approximately 10 years. It asserts that this use establishes unregistered trademark rights in the SEMPER ARDENS mark, and although its actual registered “Semper Arden” mark did not issue until February 2011, it has had a longstanding history establishing its well-known commercial use of its SEMPER ARDENS brand.
Complainant advises that in early 2010 it developed a new mark for its products and on June 28, 2010, registered its THIRST FOR GREAT mark through the Danish trademark office. Complainant asserts that it is also the registered owner of the domain names <thirstforgreat.se>, <thirstforgreat.org>, and <thirstforgreat.net> which were registered on September 22, 2010.
Complainant contends that Respondent registered the Domain Names <thirstforgreat.com> and <semperardens.com> on July 9, 2010, some 11 days after Complainant’s own trademark registration for its THIRST FOR GREAT mark in Denmark was published by the Danish Patent and Trademark Office (DKPTO). Complainant also contends that Respondent registered the domain name <thirstforgreat.dk>, which is not subject to the present Complaint, on July 9, 2010, and <thirst4great.com> on October 12, 2010. Complainant submits that such registration of several domain names containing Complainant’s marks within a close time frame indicates that Respondent had Complainant and its marks in mind when registering the Domain Names.
Complainant suggests that Respondent is using the Domain Names in connection with standard placeholder websites provided by his registrar. Complainant notes that Respondent is not only the registered owner of the Domain Names but has, according to Complainant’s information and belief, registered over 20 other domain names. Besides the Domain Names including Complainant’s trademarks Respondent has registered five domain names including Google Inc.’s well-known trademark ANDROID, which is used in connection with software. Complainant submits that this is proof of Respondent’s bad faith registration.
Complainant states that the domain name <thirstforgreat.dk>, which is identical to Complainant’s Danish trademark, was registered in the country code top level domain (ccTLD) space for Denmark (“.dk”). Complainant suggests that Respondent was not only aware of it and its marks but also intended to target Complainant’s potential customers by registering both in the most popular generic top level domain (gTLD) space “.com” and in the ccTLD space for Complainant’s home country.
Complainant argues that if Respondent were registering the Domain Names for any legitimate purpose he would have elected to register in the ccTLD corresponding to his own location, i.e. “.se” for Sweden which was available for registration at that time. Electing to register Complainant‘s SEMPER ARDENS mark and two variants of its THIRST FOR GREAT mark in the “.com” space, and the THIRST FOR GREAT mark in the “.dk” space, Complainant believes establishes Respondent’s intention to target Complainant.
Complainant asserts that Respondent is trying to make money by registering Complainant’s trademarks and those of third parties as domain names, either with the intention to resell the Domain Names to Complainant or one of its competitors for a profit, or through a profit-sharing arrangement with its hosting service, noting also that click-through ads for domain name registrations with Loopia AB are clearly advertised on the site.
Complainant contends that the Domain Names are identical and/or confusingly similar to its trademarks in that:
a) <thirstforgreat.com> consists entirely of Complainant’s THIRST FOR GREAT mark, omitting the spaces between the words of the mark;
b) <thirst4great.com> is confusingly similar to Complainant’s THIRST FOR GREAT marks wherein the number “4” has replaced the word “for”, both being phonetically identical. Complainant suggests that such replacement is common in vernacular spelling and in domain names and as such is readily identified by Internet users; and
c) <semperardens.com> is identical to Complainant’s registered SEMPER ARDENS mark as it consists of the mark itself, omitting the spaces between the words.
Complainant states that Respondent has no rights or legitimate interests in respect of the Domain Names as Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks and has not permitted Respondent to apply for or use any domain name incorporating its THIRST FOR GREAT or SEMPER ARDENS marks. Complainant asserts that there is no evidence of Respondent’s use or demonstrable preparations to use the Domain Names or a name corresponding to any of the Domain Names in connection with a bona fide offering of goods or services. Complainant submits that Respondent is also not making a legitimate noncommercial or fair use of the Domain Names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Complainant suggests that there is no evidence that Respondent trades under, or is commonly known by the Domain Names and according to Respondent’s WhoIs records, Respondent appears to be an individual with an email address through the generic email hosting service provided by Google, Inc. Nothing in the publicly available WhoIs information or otherwise known to Complainant appears to suggest that Respondent is trading under or known by any name associated with the Domain Names.
Complainant asserts that Respondent has registered and is using the Domain Names in bad faith which is evidenced by Respondent registering the Domain Name <thirstforgreat.com> only 11 days after Complainant’s trademark registration for THIRST FOR GREAT in Denmark was published by the DKPTO. The fact that Respondent registered the domain name <thirstforgreat.dk> on the same day clearly demonstrates that Respondent was well aware of Complainant and its rights in the THIRST FOR GREAT mark at the time of registration of the Domain Names. Complainant states that because Respondent registered not one, but two of Complainant’s trademarks in domain names, both the THIRST FOR GREAT and the SEMPER ARDENS marks, on the same day it is highly unlikely to be a coincidence. Complainant contends that it is clear that Respondent’s registration of these Domain Names constitutes an act of opportunistic bad faith intended to disrupt Complainant’s business.
Complainant submits that Respondent’s use of the Domain Names constitutes bad faith registration and use. Complainant contends that Respondent’s pattern of registering third parties’ trademarks as domain names, thus preventing the trademark owners from utilizing such domain names, constitutes evidence of bad faith. Complainant asserts that Respondent is attempting to derive an unjustified commercial benefit on the back of Complainant’s rights by providing an advertising platform for its hosting service’s domain name registration business and his actions constitute bad faith registration.
Respondent is aware of the complaint. However, he did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
It is clear that Complainant has used the trademarks SEMPER ARDENS and THIRST FOR GREAT (the “Complainant’s Trademarks”) in relation to brewing and beer.
It is apparent that SEMPER ARDENS is the brand name of a line of premium gourmet beers, the name being derived from the Latin term “always burning”, which was the motto of Carl Jacobsen, the son of Complainant’s founder. It is contended, with some validity, that the term is not suggestive of any particular business or other legitimate use and that the particular Latin words have no meaning in any modern language.
In terms of Complainant’s THIRST FOR GREAT trademark, Complainant acknowledges that it is comprised of three English words. However, it points out that it does not represent a grammatical phrase and as such is a highly distinctive identifier. On this basis, Complainant asserts that Complainant's Trademarks comprise distinctive phrases which are associated with its products in the minds of consumers.
Given that no contest has been raised by Respondent as to Complainant’s rights in Complainant’s Trademarks the Panel accepts that Complainant has either unregistered or registered trademark rights in these marks under the Policy.
The Domain Names are either identical or confusingly similar thereto.
Accordingly, the Panel is satisfied that the first element of the Policy has been met.
B. Rights or Legitimate Interests
Complainant contends that Respondent is trying to make money by registering Complainant’s Trademarks and those of third parties’ as domain names (examples being provided), either with the intention to resell the Domain Names to Complainant or one of its competitors for a profit, or through a profit-sharing arrangement with his hosting service. It is asserted that click-through ads for domain name registrations with Loopia AB are advertised on its site. Thus, is submitted that Respondent is providing an advertising platform for his hosting service’s domain name registration business.
These assertions are not disputed by Respondent. Accordingly, it is appropriate to give them weight.
Complainant goes on to assert that Respondent has no rights or legitimate interests in the Domain Names as he is not licensed or otherwise permitted to use any of Complainant’s Trademarks. Complainant further asserts that there is no evidence of Respondent’s use or demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services. Accordingly, apart from in relation to the monetization of the Domain Names referred to above, it appears that Respondent is passively holding the Domain Names.
Passive holding of a domain name is not necessarily an illustration of a lack of rights or legitimate interests. However, in the present situation, given the assertions made by Complainant and the failure of Respondent to challenge or deny those assertions the Panel is satisfied that Respondent has no rights or legitimate interests in the Domain Names.
Accordingly, the second element of the Policy has been met.
C. Registered and Used in Bad Faith
Complainant’s assertion that Respondent is intentionally attempting to attract for commercial gain Internet revenue by providing an advertising platform for his hosting service’s domain name registration business appears to be well made.
Complainant submits that Respondent registered the Domain Name <thirstforgreat.com> only 11 days after Complainant’s trademark registration for THIRST FOR GREAT in Denmark was officially published and that he registered the domain name <thirstforgreat.dk> on the same day and that this clearly demonstrates that Respondent was well aware of Complainant and its rights in the THIRST FOR GREAT mark at the time of registration of the Domain Names. Likewise, the submission is made that because Respondent registered not one, but two of Complainant’s trademarks in domain names on the same day it is highly unlikely to be a coincidence and that this is indicative of opportunistic bad faith intended to disrupt Complainant’s business.
It is well established that both conduct leading to a likelihood of consumers being misled and a pattern of dubious domain name registrations can be indicative of bad faith.
The Panel has no difficulty in concluding that the third limb of the Policy has been met.
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 Names, <semperardens.com>; <thirstforgreat.com>; and <thirst4great.com> be transferred to Complainant.
Clive L. Elliott
Dated: July 7, 2011