WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Danfoss A/S v. N/A, mohammad zarei
Case No. D2011-2242
1. The Parties
Complainant is Danfoss A/S of Nordborg, Denmark, internally represented.
Respondent is N/A, mohammad zarei of Tehran, Iran (Islamic Republic of).
2. The Domain Name and Registrar
The disputed domain name <danfosmotor.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2011. On December 20, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On December 21, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on December 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2012. The Center received email communications from Respondent on December 27, 2011 and December 29, 2011. On January 17, 2012, the Center notified Respondent that the Center would proceed to Panel appointment.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on January 23, 2012. 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 trademark upon which the Complaint is based is DANFOSS, which was first registered in Denmark on September 14, 1940. According to the documentary evidence and contentions submitted, Complainant owns a number of registrations for the DANFOSS trademark in different countries, including the European Union Community Trade Mark Registrations Nos.000212506 issued on February 16, 1999, and 000139824 issued on February 23, 2000; the United States Registrations Nos. 2325064 issued on March 7, 2000, and 2392482 issued on October 10, 2000; and the Iran Registrations Nos. 30881 and 30882. Complainant also registered the domain name <danfoss.com> on November 14, 1995.
According to the documentary evidence and contentions submitted, Complainant, Danfoss A/S, was founded in Denmark in 1933, and manufactures and sells refrigeration and air-conditioning products, heating products, water control products, motion control, solar solutions and other products. Danfoss A/S products are sold and serviced worldwide in more than 100 countries and regions.
Respondent registered the disputed domain name on December 13, 2009.
5. Parties’ Contentions
Complainant argues that the disputed domain name is confusingly similar to the trademark in which Complainant has rights because the addition of the suffix “motor” and the deliberate omission of the letter “s” in the word “Danfoss” are not relevant and will not have any impact with respect to the overall impression of the dominant part of the disputed domain name.
Complainant further contends that Respondent does not have rights or legitimate interests regarding the disputed domain name because (i) Respondent has not acquired any permission, license or in any other way obtained authorization to use Complainant’s registered trademarks DANFOSS or DANFOSS logo; (ii) Respondent had complete knowledge of Complainant and its trademarks because Respondent copied Complainant’s website at “www.danfoss.com”; (iii) Complainant registered the domain name <www.danfoss.com> on November 14, 1995, while Respondent registered the disputed domain name on December 13, 2009; (iv) Respondent has not been commonly known by the disputed domain name; and (v) Respondent is therefore not using the disputed domain name in connection with a bona fide offering of goods and services.
Finally, Complainant contends that Respondent registered the disputed domain name in bad faith because Respondent copied the content of Complainant’s website at “www.danfoss.com” to exploit Complainant’s trademarks, products and goodwill for commercial gain. Complainant also argues that Respondent is using the disputed domain name in bad faith because it is using the DANFOSS trademark with the purpose to attract for commercial gain, Internet users and consumers to the website by creating a likelihood of confusion concerning the affiliation with Complainant.
Respondent filed an informal response with the Center on December 27, 2011, which the Panel has taken into account in the interests of fairness. In its response, Respondent argued that it did not know of Complainant and promised to change the website content at disputed domain name <danfosmotor.com>. On December 29, 2011 Respondent again sent an email communication to Complainant and the Center to inform that the website at the disputed domain name had been changed and to offer to cooperate with Complainant with respect to vacuum cleaner motors.
6. Discussion and Findings
A. Identical or Confusingly Similar
This Panel finds that this case may be considered a “typosquatting” case because the disputed domain name is a slight variation in spelling from a registered trademark. In fact, the disputed domain name <danfosmotor.com> reproduces Complainant’s DANFOSS trademark with the omission of the letter “s”. As a result, this is an example of confusing similarity brought about through easily made typing errors made by an Internet user: rather than typing the word “Danfoss” to visit Complainant’s website, an Internet user could easily type the word “danfos” and be diverted to a different website.
The Panel takes into account previous UDRP decisions relating to the practice of “typosquatting” where such practice has consistently been regarded as creating domain names confusingly similar to the relevant mark. This is a point well-established in prior UDRP domain name cases. See, e.g., MasterCard International Incorporated v. DL Webb, WIPO Case No. D2008-0324; Breitling SA and Breitling USA Inc. v. Whois Privacy Protection Service, Inc. / Breitling USA, Inc., WIPO Case No. D2008-0302; ACCOR v. Brigit Klostermann, WIPO Case No.. D2005-0627; Sharman License Holdings, Limited v. IcedIt.com, WIPO Case No. D2004-0713; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994.
The confusing similarity is greater where the disputed domain name incorporates a generic and descriptive word related to the product or service identified by the registered trademark, which is the case of the disputed domain name <danfosmotor.com>. As Complainant manufactures and sells products using motors, the combination of the DANFOSS trademark with the word “motor” may lead the public to think that the disputed domain name is somehow connected to the owner of the registered trademark.
Finally, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the disputed domain name. See, e.g., RX America, LLC. v. Matthew Smith, WIPO Case No. D2005-0540.
Therefore, the Panel finds that the disputed domain name <danfosmotor.com> is confusingly similar to the DANFOSS trademark and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
The consensus view in the UDRP decisions is that a complainant is required to make out an initial prima facie case. If such a case is made, the respondent carries the burden of producing evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.1 (“WIPO Overview 2.0”)).
The Panel finds that Complainant has done enough to establish a prima facie case. In fact, the disputed domain name is not the name of Respondent or the name by which Respondent is commonly known, the disputed domain name is not Respondent’s trade name or trademark, and Respondent implicitly recognized in this informal response that he had not been authorized to register or use a domain name incorporating Complainant’s DANFOSS trademark. In addition, the principal element of the disputed domain name is Complainant’s trademark.
Respondent argued that it “never knew that Danfoss company is a registered name and has an owner”. The Panel accepts Complainant’s contention that Respondent was probably aware that the word “danfos” corresponds to a registered trademark given the fact that the website to which the disputed domain resorted did show Danfoss A/S products.
The Panel also agrees that Respondent’s use of the disputed domain name does not satisfy the test for bona fide offering of goods or services as established in prior UDRP decisions. There are various factors that must be considered in determining whether an offering of goods or services is bona fide where no relationship exists between the trademark or service mark owner and the registrant of the disputed domain name. See, e.g., Gerd Petrik v. Johnny Carpella, WIPO Case No. D2004-1043; Pfizer Inc. v. Websites, WIPO Case No. D2004-0730; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
These factors may include (a) whether Respondent is actually offering the goods at issue; (b) whether Respondent is using the website to sell only the trademarked goods; (c) whether the disputed domain name is the only name that respondent can use to describe its business; and (d) whether there is a prominent disclaimer permitting Internet users to know the precise relationship, if any, between the respondent and the trademark owner. The Panel holds that the evidence and circumstances of this case indicate that the disputed domain name was selected to divert Internet users by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship or affiliation, or endorsement of Respondent’s domain name.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
C. Registered and Used in Bad Faith
The Panel has already found that that the disputed domain name was selected by Respondent with the intent to attract for commercial gain Internet users. This is clearly bad faith in the registration of a domain name under paragraph 4(b)(iv) of the Policy.
The fact that Respondent imitated Complaint’s website is a clear indication of bad faith in the use of the disputed domain name. This Panel determines that the resemblance of Respondent’s website to an official Danfoss A/C website was so striking that Respondent agreed to change it upon receipt of notice of the Complaint. However, the circumstance that Respondent altered the website at the disputed domain name subsequent to receiving notice of the Complaint to no longer imitate Complainant’s website does not affect a finding of bad faith use.
Therefore, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.
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 <danfosmotor.com> be transferred to Complainant.
Manoel J. Pereira dos Santos
Dated: February 5, 2012