WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Øresundsbro Konsortiet I/S v. OpenIT Systems Limited
Case No. D2011-1824
1. The Parties
The Complainant is Øresundsbro Konsortiet I/S of Copenhagen, Denmark, represented by Zacco Denmark A/S, Denmark.
The Respondent is OpenIT Systems Limited of Hong Kong, People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <oresundskonsortiet.com> is registered with Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2011. On October 27, 2011, the Center transmitted by email to Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On October 29, 2011, Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 2, 2011. In accordance with paragraph 5(a) of the Rules, the due date for Response was November 22, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 23, 2011.
The Center appointed Brigitte Joppich as the sole panelist in this matter on November 30, 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 paragraph 7 of the Rules.
On December 5, 2011, the Panel issued Procedural Order No. 1 to the Parties, requesting the Complainant to submit further evidence regarding the issue of bad faith registration (as distinct from bad faith use), in particular to supply evidence as to why the Complainant owned common law trademark rights and why the Respondent should have known of the Complainant’s rights in the mark “Oresunds Konsortiet” at the time of the registration of the disputed domain name <oresundskonsortiet.com>. The Complainant filed a reply to Procedural Order No. 1 on December 6, 2011. The Respondent did not reply to the Complainant’s submission.
4. Factual Background
The Complainant operates the Øresundsbron, the bridge between Denmark and Sweden. The Complainant is a Danish-Swedish company jointly owned by A/S Øresund, a company which is through another entity wholly owned by the Danish state, and Svensk-Danska Broförbindelsen SVEDAB AB, which is owned by the Swedish state. Until 2000, the Complainant’s company name was “Øresundskonsortiet”. This name is still registered with the Danish company register as secondary name.
The disputed domain name had been registered in the name of the Complainant until around 2006. The Complainant failed to renew the disputed domain name, which was then registered by the Respondent at an unknown point of time. The disputed domain name is used in connection with a domain parking website.
The Complainant sent a cease and desist letter to the Respondent on March 30, 2011, which remained unanswered.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The Complainant states that its former name “Øresundskonsortiet” is still used by the general public when reference is made to the Complainant and that the disputed domain name is confusingly similar to such name as they only differ by the substitution of the letter “Ø” by “O”, which is insufficient to avoid a risk of confusion. In addition, the Complainant argues that the disputed domain name is confusingly similar to the Complainant’s present trade name.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name as there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services, as there is no evidence that the Respondent has made any legitimate use of the name “Oresundskonsortiet” as a trademark or service mark or is commonly known under such name, and as the Complainant has not authorized or licensed the Respondent’s use of the Complainant’s trade names.
(3) The disputed domain name was registered and is being used in bad faith. The Complainant contends that the Respondent must have observed that Internet users search for the Complainant’s former name when looking for the Complainant and that the Respondent registered the disputed domain name in order to attract traffic to its website and gain money from pay-per-click advertising. The Complainant further argues that the fact that the Respondent refers to “Oresund Bridge photos” on his website confirms that the Respondent knows about the Complainant and acts in bad faith regarding the Complainant’s rights and trade name. The Complainant states that the fact that the Hong Kong based Respondent registered a domain name incorporating a Danish company’s (now secondary) trade name is by itself evidence of bad faith. The Complainant finally argues that the Respondent registered and has used the disputed domain name to disrupt the Complainant’s business and that the Respondent has intentionally attracted Internet users to its website by creating a likelihood of confusion with the Complainant’s trade names for commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to the Complainant’s trade mark; 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.
The Complainant does not appear to own registered trade mark rights in “Øresundsbro Konsortiet” and “Øresundskonsortiet” but claims common law trade mark rights in these names based on their use.
It is consensus view that common law trade mark rights may be sufficient for the purposes of establishing rights under paragraph 4(a)(i) of the Policy (cf. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”); UITGERVERIJ CRUX v. W. FREDERIC ISLER, WIPO Case No. D2000-0575; Skattedirektoratet v. Eivind Nag, WIPO Case No. D2000-1314; Amsec Enterprises, L.C. v. Sharon McCall, WIPO Case No. D2001-0083; Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786; Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322). However, a complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. A conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice. In fact, specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required.
The Complainant has, absent the excerpt from the Danish company register, not provided any evidence with regard to its business activities at all. No claim of secondary meaning of the Complainant’s present and/or former company names have been made by the Complainant and absolutely no evidence in support of such claim has been presented to the Panel. The Panel therefore cannot but find that on the record in these Policy proceedings the Complainant failed to establish the first element of the Policy.
As a result, it is not necessary to make a finding with regard to the second and third elements of the Policy.
For the foregoing reasons, the Complaint is denied.
Dated: December 16, 2011