WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carlsberg A/S v. Personal / decohouse, decohouse
Case No. D2011-0972
1. The Parties
The Complainant is Carlsberg A/S of Copenhagen, Denmark, represented by Bettinger Schneider Schramm Patent- und Rechtsanwälte, Germany.
The Respondent is Personal / decohouse, decohouse of Hokkaido / Osaka, Japan.
2. The Domain Name and Registrar
The disputed domain name <carlsbergcanada.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2011. On June 8, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On June 8, 2011, eNom 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 June 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 13, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 14, 2011.
The Center appointed Ho-Hyun Nahm as the sole panelist in this matter on July 19, 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 is a Danish brewing company founded in 1847 with its headquarters in Copenhagen, Denmark. In 2009, the Complainant was the 4th largest brewery group in the world. The Complainant owns trademark registrations around the world. The Complainant’s trademark registrations include the following:
Registration No. TMA130351
Registration date: March 29, 1963
Community Trademark Registration
Registration No. 43968
Classes: 21, 25, 32
Registration date: January 7, 1998
United States of America
Registration date: February 28, 2006
The Respondent is an entity located in Japan. The disputed domain name was resolved to a website, which provided information on and offered inter alia health products, i.e., antioxidants and anti-aging products. The disputed domain name was registered on July 8, 2008.
5. Parties’ Contentions
The Complainant contends in the Complaint that:
- The disputed domain name is identical and confusingly similar to a trademark or service mark in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The term “Canada” of the disputed domain name is a prominent geographical name, and thus it does not have distinctiveness as a trademark. The part “.com” is a mere gTLD suffix. In this respect, the portions “Canada” and “.com” do not constitute essential elements in comparing the disputed domain name and the Complainant’s trademark. Given the analysis above, the prominent portion “Carlsberg” of the disputed domain name and the Complainant’s trademark are identical with each other, and thus the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark CARLSBERG.
B. Rights or Legitimate Interests
As it is virtually impossible for a complainant to prove the negative fact that a respondent has no rights or legitimate interests in the disputed domain name, it is well accepted that a complainant must only show a prima facie case that there are no rights or legitimate interests on the part of the respondent. The burden of proof production will then shift to the respondent.
The Panel finds that the Complainant has proven a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with the Complainant in any way. The Complainant has not authorized the Respondent to use and register its trademark or to seek the registration of any domain name incorporating the said mark.
Under the circumstance that the Respondent did not reply, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant was founded in 1847. The Complainant was the 4th largest brewery group in the world in 2009 employing around 45,000 people. In Japan, where the Respondent is located, the production and distribution of Carlsberg beer have been licensed to Suntory Ltd., one of the oldest companies in the distribution of alcoholic beverages in Japan. This license has been in force since 1986. Today, Carlsberg beer is one of the leading interactional draught beers in Japan. In average Carlsberg has annually sold approximately 3,750,000 liters of beer in Japan since 2006. The Complainant’s revenue in 2010 amounted to DKK 60.05 billion, with an operating income of DKK 10.25 billion and profits of DKK 5.351 billion.
The Panel takes a presumption from the fact above that the Respondent registered the disputed domain name with the knowledge of the worldwide fame of the Complainant’s trademark. The disputed domain name was resolved to a website, which provided information on and offered inter alia health products, i.e., antioxidants and anti-aging products. As of April 28, 2011, the website resolved to a “Domain Error” page written in Japanese. However, such a change does not affect the constitution of a bad faith use.
The Respondent’s selection of a well-known trademark with the knowledge of its fame, coupled with its use of the disputed domain name to sell commercial products leads the Panel to infer that the Respondent registered and used the disputed domain name for the purpose of commercial gain by way of trading off the goodwill of the Complainant’s mark. The Respondent did not use the disputed domain name in connection with a bona fide offering of goods or services but instead to divert Internet users searching for the Complainant and its products to its own website. Internet users searching for information regarding the Complainant or its products may mistakenly believe the disputed domain name to be held by the Complainant, leading to consumer confusion or frustration. Although the Internet users would at the end realize that the website they visited is not the one of the Complainant, it is likely to cause initial confusion from which the Respondent definitely gets more visitors to its website.
As such, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith.
For 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, <carlsbergcanada.com> be transferred to the Complainant.
Dated: July 27, 2011