WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ulstein Group ASA v. Ulstein, Andrew
Case No. D2011-1082
1. The Parties
The Complainant is Ulstein Group ASA of Ulsteinvik, Norway represented by Plougmann & Vingtoft, Norway.
The Respondent is Andrew Ulstein of California, United States of America, internally represented.
2. The Domain Name and Registrar
The disputed domain name <ulstein.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2011. On June 27, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On June 29, 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 June 29, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 19, 2011. The Response was filed with the Center on July 19, 2011.
The Center appointed Andrew F. Christie as the sole panelist in this matter on July 28, 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.
On August 3, 2011, the Complainant transmitted by email to the Center a supplemental filing which responded to the Respondent’s response and provided some corrections to the Complaint. This supplemental filing was forwarded to the Panel.
On August 12, 2011, the Panel issued a Procedural Order that admitted the Complainant’s supplemental filing, provided the Respondent with the opportunity to make a supplemental submission by no later than August 16, 2011, and extended to August 19, 2011 the due date for a decision in this matter. No supplemental filing was received from the Respondent.
4. Factual Background
The Complainant was established in Norway in 1917 under the name Ulstein Mek Verksted. Soon after establishment, the Complainant came to be known simply as “Ulstein”. The Complainant’s core business is the design and construction of seagoing vessels and related equipment. It has its headquarters in Norway, and local operations in 10 countries. It is an international business the products and services of which are marketed and sold worldwide. In 2009 its operational income was USD 640 million.
The Complainant first obtained registered trademark protection for ULSTEIN (combined word and device mark) in Norway in 1975, and obtained subsequent registrations in that country for ULSTEIN (combined word and device mark) in 1992, 2000, 2006 and 2007 and ULSTEIN (word mark) in 2011. The Complainant obtained trademark registrations under the Madrid Protocol for ULSTEIN (combined word and device mark) in China, the European Community, Russian Federation, Singapore, Turkey and Viet Nam in 2007, and for ULSTEIN (word mark) in a number of jurisdictions in 2011. The Complainant is the registrant of several domain names consisting of or containing the word “ulstein”, including <ulstein.info>, <ulstein.org> and <ulsteingroup.com>.
The disputed domain name appears to have been first registered on December 3, 1996 in the name of an entity the address of which was given as Ulsteinvik, Norway. By January 4, 2008, the disputed domain name was registered in the name of “Domain Admin”, the address of which was stated to be in Richmond, VA, United States of America. Although the address of the then registrant of the disputed domain name was changed in 2008, and the registrar of the disputed domain name was changed to the current registrar in 2009, the registrant of the disputed domain name remained “Domain Admin” up until some time between April 27 and May 12, 2011.
On January 7, 2008, both the Deputy Managing Director and the Chief Executive Officer of the Complainant received emails from a Mr. Tom Klein offering to sell the disputed domain name for EUR 6,500. The Complainant did not respond to the offer. On April 27, 2011, the Complainant transmitted by email to the then registrant of the disputed domain name, “Domain Admin”, an enquiry initiating a process to acquire the disputed domain name. On May 4, 2011, a Mr. Ying responded to that request stating that the disputed domain name could be purchased for EUR 55,000. On May 12, 2011, the Complainant responded to Mr. Ying rejecting the offer and proposing a counter offer of out-of-pocket expenses of EUR 1,300 and coverage of all transfer costs, and informing him that a UDRP procedure would be initiated if “Domain Admin” did not agree to a transfer on the proposed terms by May 22, 2011. No further response was received from Domain Admin.
On June 17, 2011, the Complainant noticed that the holder of the disputed domain name had changed from “Domain Admin” to “Andrew Ulstein”. On June 22, 2011, the Complainant sent a letter to the registrar of the disputed domain name requesting information about the exact date of the transfer of the disputed domain name to Andrew Ulstein. GoDaddy.com, Inc. responded the same day “we are unable to provide non-public information on this change due to security concerns.”
The disputed domain name currently resolves to a website that consists of a blank page.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical to its registered trademark ULSTEIN, the rights to which were established prior to the Respondent’s registration of the disputed domain name.
The Complainant contends that the history of the registrar and the registrant of the disputed domain name is relevant, because both of these have changed in recent times. It is the rightful or legitimate use of “Domain Admin” that needs to be considered, not the interests of “Andrew Ulstein”, to whom the disputed domain name was transferred in mid-process of this dispute. Prior to its request for purchase of the disputed domain name on April 27, 2011, the website to which it resolved contained “various nonsensical information and links”. No screen shot was taken of that website, but the Complainant contends that its content and layout was the same as the website at the domain name <therapysite.com>, which is another domain name held by “Domain Admin” with the same email contact address as the disputed domain name previously had. This website is essentially a page containing links to a range of websites covering various products and services. The Complainant contends that following its request for purchase, and while still registered in the name of “Domain Admin”, the website to which the disputed domain name resolves went completely blank and remains that way. “Domain Admin” (i) has no legitimate, natural or recorded claim for the name or trademark ULSTEIN, (ii) has not used the disputed domain name in connection with any commercial offering of goods or services, and (iii) has not attempted to make a bona fide noncommercial use of the disputed domain name.
The Complainant contends that following its rejection on May 12, 2011, of “Domain Admin”’s offer to sell the disputed domain name for EUR 55,000, and following a warning that a UDRP process would be initiated unless there was a voluntary transfer, the holder of the disputed domain name suddenly changed to “Andrew Ulstein”, which is an attempt at “cyberflight” according to the Complainant.
The Complainant contends that the disputed domain name was acquired for the purpose of selling it to the Complainant for a valuable consideration in excess of the holder’s out-of-pocket cost, as evidenced by the offers to sell the disputed domain name to the Complainant three days after it was registered in 2008, and again in 2011 for a far higher price.
In its supplemental filing, the Complainant contends that its exclusive rights to the word “Ulstein” are further demonstrated by its trademark registrations ULSTEIN (word mark), the applications for which were filed long before the initiation of this UDRP procedure. The Respondent has not provided any evidence as to who purchased and who sold the disputed domain name at the SnapName auction on May 19, 2011. However, it is clear that the sale and purchase of the disputed domain name took place after the Complainant’s letter of May 12, 2011, concerning the initiation of a UDRP procedure. This transfer, which is in the Complainant’s view an obvious attempt of “cyberflight”, is in breach of Paragraph 8(a) of the Policy and thus rendered invalid. The Complainant disputes the authenticity of the identity of the Respondent, because (i) the paper copy of the Complaint sent to the address contained in the Respondent’s contact details was returned due to “Addressee Unknown”, (ii) given the Respondent’s interest in the Internet and his intention to establish a family website, it is surprising that there are no traces of Andrew Ulstein on Google Search, Facebook or LinkedIn, (iii) there is no Andrew Ulstein in the United States White Pages phone book, and a reverse search on the phone number in the WhoIs information indicates that it probably relates to a landline in Morganfield, Union County, Kentucky, rather than in Goleta, California. The Complainant requested evidence to the fact that Andrew Ulstein is a real and existing person.
The Respondent contends the Complainant has no exclusive rights to use the term “Ulstein” as it is a generic term, being both a municipality/commune name and a surname. The Complainant’s registered trademarks are not for the term “Ulstein” at all, but for logos, as they are specifically described as “composite/figurative mark” by Norway trademark authorities to distinguish them from word marks.
The Respondent contends he has the rights to use the disputed domain name in its generic sense. He bought the disputed domain name by auction via SnapNames on May 19, 2011, as demonstrated by an exhibited copy of a SnapNames account page. The Respondent plans to use the disputed domain name for a family website but has not yet had a chance to do so because of the short time of ownership before the Complaint was filed. The DNS servers and the webpage to which the disputed domain name resolves has not changed because he is waiting to transfer the disputed domain name to his own registrar.
The Respondent contends that at the time of acquiring the disputed domain name he had no knowledge of the Complainant’s business or trademark, and did not register it for the purpose of selling it to the Complainant or to any other party.
The Respondent did not respond to the contentions in the Complainant’s supplemental filing.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name incorporates wholly the word component of the Complainant’s registered trademark ULSTEIN (word and device mark) and registered trademark ULSTEIN (word mark). The disputed domain name is confusingly similar to the Complainant’s word and device mark, and is identical to the Complainant’s word mark. Accordingly, this Panel finds that the disputed domain name is confusingly similar and identical to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant expressly contested the authenticity of the identity of the Respondent. The circumstantial evidence provided by the Complainant is highly consistent with the Complainant’s contention that the previous registrant of the disputed domain name, “Domain Admin”, engaged in attempted “cyberflight” by changing the name of the registrant to “Andrew Ulstein” upon receiving a warning of initiation of this UDRP action, while in fact maintaining actual control over the disputed domain name. The Respondent did not provide any evidence to the contrary. In particular, the Respondent did not provide any evidence verifying its contention that it is an existing individual the name of whom is Andrew Ulstein. In this Panel’s view, if indeed the Respondent is an existing individual the name of whom is Andrew Ulstein, it would be easy for the Respondent to prove that fact, such as by provision of a certified copy of a birth certificate, passport, social security card, or the like. The Respondent’s failure to do this, especially after the Complainant expressly contested the authenticity of the Respondent’s identity, is strongly consistent with the Complainant’s contention that the identity is not authentic.
The evidential record establishes that “Domain Admin” has no rights or legitimate interests in the disputed domain name. The evidential record in this case is such that the Panel finds, on the balance of probabilities, that the Respondent and “Domain Admin” are one and the same entity. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The evidential record demonstrates that “Domain Admin” attempted to solicit purchase by the Complainant of the disputed domain name for the sum of EUR 6,500, and later offered to sell the disputed domain name to the Complainant for the sum of EUR 55,000. These are circumstances indicating that Domain Admin registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name. According to paragraph 4(b)(i) of the Policy, this is evidence of the registration and use of the disputed domain name in bad faith.
Given the Panel’s finding, in section 6B above, that Domain Admin and the Respondent are one and the same entity, the Panel finds that the disputed domain name has been registered and is being used by the Respondent in bad faith.
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, <ulstein.com>, be transferred to the Complainant.
Andrew F. Christie
Dated: August 21, 2011