WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arla Foods amba v. Cirtex Corp.
Case No. D2011-1143
1. The Parties
The Complainant is Arla Foods amba of Denmark, represented by Zacco Denmark A/S, Denmark.
The Respondent is Cirtex Corp. of United States of America. (“USA”)
2. The Domain Name and Registrar
The disputed domain name <bukoporn.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2011. On July 6, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On July 6, 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 July 19, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 8, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 9, 2011.
The Center appointed Jonas Gulliksson as the sole panelist in this matter on August 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.
On September 14, 2011, the Panelist in accordance with paragraph 12 of the Rules, issued an Administrative Procedural Order, inviting the parties to file further evidence.
On September 15, 2011, the Complainant submitted its Supplemental Filing. No further evidence was submitted by the Respondent.
4. Factual Background
The Complainant is the part of one of Europe’s largest dairy companies. It has registered the trademark BUKO for milk and milk products in a large number of countries, inter alia:
- Community Trademark Registration No. 243956, BUKO, registered on February 1, 1999, claiming seniority from a number of European countries, the earliest from Denmark where it was registered on June 7, 1941.
- International registration No. 794425 BUKO, registered December 16, 2002, designating inter alia the USA
Moreover, the Complainant holds several domain names for BUKO, including the domain name <buko.com>, registered October 31, 1996.
According the public WhoIs database, the disputed domain name was apparently registered on or about May 13, 2010.
5. Parties’ Contentions
The disputed domain name is confusingly similar to the registered trademark of the Complainant. Moreover, the trademark is well known in Denmark where it has been used in connection with cheese since 1932. The disputed domain name consists of the Complainant’s registered trademark with the generic addition of the word “porn” which is not sufficient to distinguish the disputed domain name from the Complainant’s trademark.
The Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name is used to display pornographic content which does not amount to a bona fide use of the trademark BUKO. Complainant has not authorized or licensed a right for the Respondent to use the trademark BUKO. Moreover there is no evidence to suggest that the Respondent is commonly known under the disputed domain name <bukoporn.com>.
The connection of the disputed domain name to a pornographic website constitutes prima facie evidence of the Respondent's bad faith not least when the disputed domain name incorporates a well-known trademark.
Additionally, the Respondent has registered and used the disputed domain name to disrupt the Complainant’s business, since it misleads potential consumers into believing that the website is somehow affiliated with, or sponsored by the Complainant. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's well-known trademark as to the source, sponsorship, affiliation, or endorsement of the website.
By using the well-known BUKO trademark: in association with a pornographic website with a connection to Denmark: the valuable goodwill contained in the trademark BUKO is seriously harmed.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant.
A. Identical or Confusingly Similar
The disputed domain name contains in its entirety the registered trademark of the Complainant. The additional word “porn” describes the content of the website attached to the disputed domain name and does not serve to sufficiently distinguish the disputed domain name from the trademark of the Complainant. Consequently, in line with well establish consensus1, the Panel finds the disputed domain name confusingly similar to the registered trademark BUKO, held by the Complainant.
B. Rights or Legitimate Interests and Registered and Used in Bad Faith
The aim of the UDRP process is not to create a standard on accepted content. It has been established by previous Panels that when the domain name is not infringing upon the rights of a trademark holder, pornographic services may constitute a bona fide offering of goods/services.2
This Panel in not inclined to make any statements as to the moral quality of the website linked to the disputed domain name but merely notes that there has to be a lack of bona fide offering. In this case, the Complainant has contended that no authorization or license has been granted. Moreover, the Respondent has not submitted any arguments to show the contrary and the registration of the disputed domain name took place several years after the registration of Complainant’s cited trademarks. There is nothing to indicate that the Respondent has a right or legitimate interest to the disputed domain name.
However, to establish whether any rights may be at hand, the issue of bad faith should be analyzed.
Linking a domain name to a website with pornographic content is not in itself evidence of bad faith, and although the Complainant asserts that the trademark is well-known (particularly in Denmark), there has been no evidence submitted in support of this contention.
It is clear that trademark protection for the mark BUKO has existed in Denmark, the USA and Germany (the nationalities to which the website appears to be aimed for) for a considerable time before the disputed domain name was registered. The age of the Danish trademark registration from which seniority is claimed in the Community Trademark Registration, supports to some degree the Complainant’s assertion that the mark BUKO is well-known there. Moreover, the website linked to the disputed domain name is available in Danish, English and German and features “real Danish amateur porn.”
Given opportunity to supplement its filings, the Complainant has submitted three opposition cases involving its trademark BUKO. The decision of the OHIM Opposition Division from August 29, 2001 notes the reputation of the trademark in Denmark. Reputation can only occur when the trademark is well-known. The Decision from the Boards of Appeal of the Office For Harmonization In The Internal Market (OHIM) from April 2, 2007, notes that the Complainant’s trademark is well-known for cheese products in Denmark, Germany, the Netherlands and Spain. The last supplemental filing, an opposition decision from the United Kingdom Intellectual Property Office holds that BUKO is a highly distinctive mark in relation to the goods for which it is registered.
From this evidence, the Panel finds that the Complainant has established a prima facie case in support of its assertion that the trademark BUKO is well-known, at least in Denmark and Germany.
Moreover, it is obvious to the Panel that the disputed domain name was registered and used in bad faith, and that it is used to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's trademark. In using the Complainant’s mark BUKO to market pornography stemming from Denmark, the Respondent is exploiting the goodwill that lies in the mark.
Therefore, this Panel finds it established that the Respondent is lacking right or legitimate interest to the disputed domain name and that the disputed domain name indeed was registered and is used 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 <bukoporn.com> be transferred to the Complainant.
Dated: September 27, 2011
1 See e.g. Nokia Corporation v. Nokiagirls.com a.k.a.IBCC, WIPO Case No. D2000-0102 (addition of “girls” to trademark NOKIA),Microsoft Corporation v. S.L. Mediaweb, WIPO Case No. D2003-0538 or Caesars World, Inc v. Alaiksei Yahorau, WIPO Case No. D2004-0513 (the addition of ”porno” to the trademark CEASARS).