WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nilfisk-Advance A/S v. fople
Case No. D2011-2257
1. The Parties
The Complainant is Nilfisk-Advance A/S of Brøndby, Denmark, represented internally.
The Respondent is fople of Gwangju, Republic of Korea.
2. The Domain Name) and Registrar
The disputed domain name <nilfisk-korea.net> (the “Disputed Domain Name”) is registered with INames corp. (Korea).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2011. On December 22, 2011, the Center transmitted by email to INames corp. (Korea) a request for registrar verification in connection with the Disputed Domain Name. On December 23, 2011, INames corp. (Korea) 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”).
On January 9, 2012, the Center notified the parties in both English and Korean that the language of the Registration Agreement in this case was Korean. On January 10, 2012, the Complainant submitted a request that English be the language of the proceeding, to which the Respondent has not replied.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint in both English and Korean, and the proceedings commenced on January 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 5, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 7, 2012.
The Center appointed Andrew J. Park as the sole panelist in this matter on February 15, 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 Complainant is a worldwide manufacturer of household, commercial, and professional cleaning machines and equipment ranging from household vacuum cleaners and scrubbers/dryers to road sweepers. It also provides services relating to cleaning. It has approximately 5,000 employees and total net sales in 2010 of EUR 771,000,000.
The Complainant owns the trademark registration for the mark NILFISK in connection with “cleaning preparations, cleaning machines and equipment” in approximately 90 countries, including in Republic of Korea (“Korea”). The NILFISK mark has existed as a trademark since 1910.
In addition, the Complainant owns approximately 380 trademark registrations worldwide for the mark NILFISK combined with some other word elements. Further, the Complainant has registered the domain names containing the mark NILFISK in more than 80 country code Top-Level Domain variations, and also in combination with other elements in approximately 370 variations.
5. Parties’ Contentions
The Complainant argues that: (i) the Disputed Domain Name is identical or confusingly similar to a mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name was registered and is being used in bad faith.
Regarding the first element, the Complainant contends that the dominant portion of the Disputed Domain Name is identical to the NILFISK mark, of which the Complainant has a senior use and registration, and that the Disputed Domain Name, as a whole, is confusingly similar to the Complainant’s NILFISK mark.
Regarding the second element, the Complainant contends that the Respondent is an external dealer selling, among other things, the Complainant’s products, which it buys from the Complainant’s dealers and distributors, as well as the products of the Complainant’s competitors, such as Sibilia and Freddy.
The Complainant further contends that the Respondent is not commonly known by the Disputed Domain Name and that the Respondent’s use of the Complainant’s trademark to promote its competitor’s products is harmful to the Complainant’s trademark and is deceptive and misleading.
Regarding the third element, the Complainant contends that since the Respondent was one of its former dealers in Korea, it is unlikely that it was not aware of the Complainant’s rights in the NILFISK mark in Korea, where the Complainant was active for many years and had registered its NILFISK mark in 1986.
Further, the Complainant contends that despite contacting the Respondent through its General Manager in Korea, and despite sending warning letters concerning the Disputed Domain Name, the Respondent did not reply.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
The registration agreement for the Disputed Domain Name is in Korean. Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, i.e., Korean. However, the Complainant submitted a request for this dispute to proceed in English. The Center made a preliminary determination to accept the Complaint filed in English, subject to a determination by the Panel pursuant to paragraph 11 of the Rules.
In adopting a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs. Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432. Based on the fact that the website under the Disputed Domain Name displayed content that was in English, and the fact that the Respondent chose not to participate or submit any reply to this proceeding in English or Korean, the Panel concludes that it will 1) proceed in line with the Center’s preliminary decision to accept the Complaint as filed in English; and 2) issue a decision in English.
6.2 Analysis of the Complaint
Under the Policy, in order to prevail, the Complainant must prove the following three elements of a claim for transfer or cancellation of the Respondent’s Disputed Domain Name: (i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) that the Respondent’s Disputed Domain Name was registered and is being used in bad faith. See Policy, paragraph 4(a). Regarding paragraph 4(a)(ii), once a prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
As the Respondent has not filed a Response, the Panel may decide the dispute based on the Complaint and may accept all reasonable factual allegations as true. The Panel may also draw appropriate inferences from the Respondent’s default. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.
A. Identical or Confusingly Similar
The case record contains ample evidence to demonstrate the Complainant’s rights in the registered NILFISK mark. The Panel also determines that the dominant portion of the Disputed Domain Name is identical or confusingly similar to the Complainant’s NILFISK mark. The test for determining confusing similarity involves a direct comparison of a complainant’s trademark and the textual string which comprises the domain name. In this case, the Disputed Domain Name is composed of the word “nilfisk” together with a hyphen and the word “korea.” The addition of the hyphen, the geographic word “korea,” and the Top-Level Domain name suffix (e.g., “.net”) are not generally taken into consideration when assessing identity or confusing similarity. Accordingly, the Panel finds that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that the Respondent may establish rights or legitimate interests in the Disputed Domain Name by proof of any of the following non-exclusive list of circumstances: (i) before any notice to the Respondent of the dispute, the Respondent used, or made 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; or (ii) the Respondent (as an individual, business, or other organization) has been commonly known by the Disputed Domain Name, even if the Respondent has not acquired trademark or service mark rights; or (iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. If the circumstances are sufficient to constitute a prima facie showing by the Complainant of an absence of rights or legitimate interests on the part of the Respondent, the evidentiary burden shifts to the Respondent to show, by plausible, concrete evidence, that it does have a right or a legitimate interest in the Disputed Domain Name.
The Complainant has not authorized the Respondent to use its NILFISK mark in any respect. There is also no evidence that the Respondent is commonly known by the Disputed Domain Name. This combination of circumstances sufficiently establishes a prima facie case so that the evidentiary burden shifts to the Respondent to prove that it has some rights or legitimate interests in respect of the Disputed Domain Name. The Respondent has not filed a Response and has therefore failed to satisfy its burden. Having searched the present record, the Panel finds no circumstances that would indicate such rights or interests, as described in paragraph 4(c) of the Policy, or otherwise. The Complainant has therefore prevailed on this part of its Complaint.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant establish both bad faith registration and bad faith use of the Disputed Domain Name by the Respondent. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001. Paragraph 4(b) of the Policy provides the following four exemplary circumstances, each of which, if proven, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that a registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.
It is undisputed that the Respondent used to be one of the Complainant’s former dealers in Korea, and therefore the Panel finds that the Respondent must have known of the Complainant’s rights in the NILFISK mark. In this Panel’s view, the Respondent’s registration and use of the Disputed Domain name is to intentionally attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. This amounts to evidence of bad faith use under paragraph 4(b)(iv) of the Policy. See Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462. Accordingly, the Panel finds that the Respondent registered the Disputed Domain Name primarily for the purpose of attracting Internet users to another website by creating confusion and this is evidence of bad faith under paragraphs 4(b)(iv) of the Policy. For the foregoing reasons, the Panel finds that the Complainant has satisfied the third element of the Policy.
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 <nilfisk-korea.net> be transferred to the Complainant.
Andrew J. Park
Dated: March 1, 2012