WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Øresundsbro Konsortiet I/S v. interresearch a/s
Case No. D2011-1875
1. The Parties
The Complainant is Øresundsbro Konsortiet I/S of Copenhagen, Denmark, represented by Zacco Denmark A/S, Denmark.
The Respondent is interresearch a/s, Ole Nielsen of Copenhagen, Denmark, represented internally.
2. The Domain Name and Registrar
The disputed domain name <oeresundsbroen.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2011. On October 31, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On October 31, 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. The Complainant filed an amended Complaint on November 1, 2011. The Center verified that the Complaint together with the amended 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 November 3, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 23, 2011. The Response was filed with the Center on November 22, 2011.
The Center appointed Knud Wallberg 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 the Rules, paragraph 7.
4. Factual Background
The Complainant, Øresundsbro Konsortiet IIS, is the Danish company which operates the Øresundsbron, the bridge between Denmark and Sweden.
The Complainant has registered the trademark ØRESUNDSBRON <devicemark> as a Community Trademark with priority from 2000 covering goods in classes 9 and 16 and services in classes 35, 39, and 41. The Complainant has obtained registration of the word mark ØRESUNDSBRON in Sweden and has filed an application for registration of the word mark ØRESUNDSBRON in Denmark. The DKPTO has confirmed that the mark possesses distinctiveness in connection with e.q, "advertising, business management business administration, office functions" in class 35 and "education and training. entertainment" in class 41. The Complainant is presently collecting evidence to establish that ØRESUNDSBRON has acquired distinctiveness through use in connection with the remaining goods and services.
In addition the Complainant is the holder of several domain names incorporating "OERESUNDSBRON" and variations hereof including "ORESUNDSBRON. OERESUNDSBROEN and ORESUNDSBROEN". The Complainant provides information and promotes its services via the website “www.oresundsbron.com”.
The Respondent is a Danish company whose main activity is to perform online based surveys.
5. Parties’ Contentions
The Complaint argued the following:
The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The domain name <oeresundsbroen.com> is quasi-identical to the Complainant's trademark ØRESUNDSBRON. In addition, the disputed domain name is quasi-identical to the Complainant's other corporate domain names which are all used to market the Complainant's services.
The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent has no known rights or legitimate interests in respect of the disputed domain name. There is no evidence of the Respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
There is no evidence that the Respondent has made any legitimate use of the name Øresundsbron as a trademark or service mark, nor is there any evidence that the Respondent is commonly known as Øresundsbron.
The Complainant has not authorized or licensed the Respondent's use of its ØRESUNDSBRON trademark.
The Complainant refutes the claims made by the Respondent, that ØRESUNDSBRON or variations thereof, including <oeresundsbroen.com > are generic names which can be used by the Respondent in the disputed domain name. The Complainant has obtained registration of the word mark ØRESUNDSBRON in Sweden and the Danish trademarks office has confirmed that registration can be obtained in connection with e.g. advertising and education.
The domain name was registered and is being used in bad faith.
The Respondent, as it is a Danish company, is fully aware of the Complainant and their activities, including their use of the various domain names incorporating the trademark ØRESUNDSBRON.
The Complainant's activities and trademark ØRESUNDSBRON is well known in Denmark because the Complainant provides all the services connected with the only bridge between Denmark and Sweden.
The Respondent's use of the disputed domain name disrupts the Complainant's business. The website is thus disruptive to the Complainant's business since it results in potential consumers being confused or misled into believing that the website is somehow affiliated with, or sponsored by, the Complainant. By using the well known ØRESUNDSBRON trademark in association with a redirection to “www.defgo.com”. the valuable goodwill subsisting in the trademark ØRESUNDSBRON is potentially harmed.
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 mark as to the source, sponsorship, affiliation, or endorsement of the website. By doing so, the Respondent has attempted to attract business, i.e. provision of market analysis, by using the Complainant's trademark, which constitutes a bad faith use of the disputed domain name.
The Respondent argued the following:
The domain name is identical or confusingly close to a service mark.
“Øresundsbroen” is the popular Danish name of the bridge used by the Danes, but it’s not the official name of the bridge. The disputed domain name is a combination of the word “Øresunds” (ENG: Oresund) and “broen” (ENG: bridge). However, the official name of the bridge is “Øresundsbron” where the generic suffix “broen” has been changed to “bron”.
The Complainant´s claim that to have trademark rights on the word “ØRESUNDSBRON cannot be recognized, since the Complainant do not have any trade mark rights on the word “Øresundsbron”, or on variations of it, like for example OERESUNDSBROEN, ORESUNDSBROEN and ØRESUNDSBROEN neither in Denmark nor in the European Union. On the contrary their application to get the word mark registered in Denmark has been refused.
The Respondents rights or legitimate interests
The disputed domain has been registered in 2000, during which time the Respondent has not been contacted by the Complainant, not even when they published surveys on the domain.
The domain was bought by the Respondent at the time of the opening of the bridge. The fact that it’s one of the biggest bridges in the region creates a lot of debate which makes the bridge and the disputed domain name interesting for an opinion poll institute like Respondent.
The Respondent asserts that he has used, and will still continue to use the disputed domain to publish surveys conducted about subjects relevant for the bridge. When there is no “fresh” survey about the bridge the domain name just links to the Respondents main website.
Whether the domain name was registered and is being used in bad faith
The Respondent refutes that he is trying to identify himself with the Complainant by pretending that he is associated with or sponsored by the Complainant just as he refutes that he tries to take advantage of the Complainant´s reputation.
The Respondent further claims that a Danish or Swedish user of the bridge would never use the disputed domain name “www.oeresundsbroen.com”. The spelling is too far away from the official name of the bridge name, and Danish and Swedish users do visit .dk or .se domains before visiting a .com domain.
In addition non Danish or Swedish users would never type in the disputed domain directly since the spelling is entirely of Danish/Swedish origin.
Finally should an Internet user that looks for the Complainant by mistake visit the Respondents website under the disputed domain name, they will not be misled into thinking that it is the Complainant’s website. The Respondent does not use any graphical elements or any wording that can give the impression that the Respondent is associated with or sponsored by the Complainant.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the statements and documents submitted by the parties.
In accordance with Paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements are satisfied:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Øresundsbroen and Öresundsbron is the dictionary term used in the Danish and in the Swedish language respectively as the name of the combined tunnel and bridge that crosses Øresund and connects the Danish capital Copenhagen and the Swedish city of Malmö.
The Complainant applied for registration of a figurative trademark containing the word ØRESUNDSBRON and covering goods and services in classes 9, 16, 35, 39 and 41 as Community Trademark on March 23, 2000. This mark was registered on July 17, 2001 with effect in all member states of the European Union including in Denmark and Sweden. This mark was thus applied for before the date of registration of the contested domain name April 30, 2000. The Complainant has later, namely on January 9, 2011 applied for registration of the word mark ØRESUNDSBRON in Denmark and Sweden for goods and services in classes 9, 16, 35, 39 and 41. The mark was registered in Sweden on June 17, 2011 for all goods and services. The application has not been registered in Denmark, since the Danish Patent and Trademarks Office finds that the mark is descriptive for a number of the applied goods and services. See further to this point just below.
A figurative mark containing a word element may give the proprietor exclusive rights to the word element as such, provided that the word as such is distinctive for the applied goods and services. Despite the fact that ØRESUNDSBRON is a somewhat distinctive combination of the spelling of the name of the edifice in Danish and Swedish, the Panel shares the view of the Danish Patent and Trademarks Office that the mark lacks distinctiveness for those goods and services in classes 9, 16, 39 and 41 that relates to the operation of a bridge in general and to this specific bridge in particular, and that the mark has distinctive character for the remaining goods and services including services in class 35, which inter alia entail conducting surveys and opinion polls.
The Complainant thus holds trademark rights to the mark ØRESUNDSBRON inter alia for such services that the Respondent claims to have used and will continue to be using the disputed domain name for.
In the disputed domain name the Danish letter “Ø” is replaced by the commonly used substitution, namely the letters “OE”, and the suffix “BRON”, which is Swedish for “the bridge”, is spelled in the Danish language version as “BROEN”. Using the standards for assessing confusingly similarity under the UDRP procedure the Panel finds that the disputed domain name <oeresundsbroen.com> shall be considered to be confusingly similar to a trademark in which the Complainant holds rights.
The first element of the UDRP is thus fulfilled
B. Rights or Legitimate Interests
It is recognized by both parties that the Complainant has neither licensed nor authorized the Respondent to use their mark ØRESUNDSBRON, just as it is undisputed that the parties have no commercial link to each other. It is thus undisputed that the Respondent has no rights as such to the mark ØRESUNDSBRON, just as it follows from the generic character of the term “Øresundsbroen” that Respondent has no “rights” to this term.
The Complainant further claims that the Respondent has no legitimate interest in the disputed domain name. The Respondent on the other hand claims that they have registered and have used the domain name <oeresundsbroen.com> as part of their business activities namely in connection with surveys and opinion polls concerning the bridge. The Panel finds that using the dictionary term for the edifice as a domain name in connection with such activities may very well be a legitimate use under article 6.1(b) of the EU Trade Mark Directive1, just as it may be considered to be legitimate fair use under paragraph 4(a)(ii) and 4(c) of the Policy. However, since the Respondent has not provided the Panel with material or specific examples that could substantiate and illustrate their claim of such potentially legitimate use, the Panel is limited in its ability to record findings on the record in this case as to whether the use may or may not be “in accordance with honest business practices” or whether the legitimate use may or may not be “fair” for the purposes of the present Policy proceeding.
However, since the question of fair use is closely related to the third element of the UDRP the Panel will now move to consider the issue of bad faith registration and use.
C. Registered and Used in Bad Faith
The Complainant claims that the Respondent’s registration and use of the disputed domain name is disruptive to the Complainant's business since it results in potential consumers being confused or misled into believing that the website is somehow affiliated with, or sponsored by the Complainant. The Complainant further claims that the valuable goodwill subsisting in the trademark ØRESUNDSBRON is potentially harmed by the Respondent’s use of the disputed domain name to redirect to “www.defgo.com”. Finally, the Complainant claims that the Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's well known mark as to the source, sponsorship, affiliation, or endorsement of the website and that by doing so, the Respondent attempts to attract business, i.e. provision of market analysis, by using the Complainant's trademark.
The Respondent strongly refutes all these allegations as being unfounded.
The burden of proof that the domain name has been registered and is being used in bad faith lies with the Complainant. In a case like this where the Respondent may have a legitimate interest in using the generic term “Øresundsbroen” and the corresponding domain name <oeresundsbroen.com> for its activities the Panel finds that the proof that must be submitted in support of a claim of bad faith registration and use must be substantial and unambiguous. However, the Complainant has not provided any evidence in support of the claim of bad faith registration and use by the Respondent. There is no evidence of record in these proceedings that internet users have been mislead, that the goodwill of the Complainant´s mark has been harmed, or that the Respondent has had any intention to create confusion and by doing so has attempted to attract business. As stated in the somewhat similar case City of Hamnia v. Paragon International Projects Ltd, WIPO Case No. D2001-0001, concerning the domain name <portofhamnia.com>: “Any confusion that may appear as a result of the semi-identity between trademark and domain name must be accepted under the law, because of the character of the mark and the character of the opposite legitimate interest in the use of the domain name”.
In conclusion the Panel finds that although there is a confusing similarity between the trademark ØRESUNDSBRON and the disputed domain name <oeresundsbroen.com>, the Respondent may have a legitimate interest in respect of the disputed domain name, and that, in any event, the Respondent has not registered and is not using the disputed domain name in bad faith.
For all the foregoing reasons, the Complaint is denied.
Dated: December 13, 2011
1 DIRECTIVE 2008/95/EC OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL of 22 October 2008 to approximate the laws of the Member States relating to trade marks which reads Article 6
Limitation of the effects of a trade mark
1. The trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade:
(a) his own name or address;
(b) indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of goods or services;
(c) the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts; provided he uses them in accordance with honest practices in industrial or commercial matters.