WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nilfisk-Advance A/S v. VTI
Case No. D2012-0393
1. The Parties
The Complainant is Nilfisk-Advance A/S of Brondby, Denmark, internally represented.
The Respondent is VTI of Calgary, Alberta, Canada.
2. The Domain Name and Registrar
The disputed domain name <nilfiskcalgary.com> is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2012. On February 28, 2012, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On February 28, 2012, Tucows Inc. 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 March 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 5, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 10, 2012.
The Center appointed Adam Taylor as the sole panelist in this matter on April 13, 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 limited liability company incorporated in Denmark. It is the main trading company of the worldwide Nilfisk-Advance group, which has traded under the name “Nilfisk” (and variations) for around 100 years. The group manufactures and supplies domestic and commercial cleaning machinery and equipment, ranging from vacuum cleaners to road sweepers. In 2010, the group had approximately 5,000 employees and net sales of EUR 771 million.
The Complainant owns a worldwide portfolio of trade mark registrations for NILFISK including Danish trade mark VR 1910 00613 dated December 17, 1910, in classes 7, 9 and 16 and Canadian trade mark TMA 124,095 dated November 30, 1960 for electrical vacuum cleaners and floor polishers.
The Respondent registered the disputed domain name on May 22, 2011.
As of September 29, 2011, the disputed domain name redirected to the Respondent’s website at “www.vacuumspecialists.com” which offered for sale cleaning products competing with those of the Complainant.
The Complainant sent a cease and desist letter to the Respondent by email on January 12, 2012, and it also a chaser email on February 23, 2012, but received no response.
5. Parties’ Contentions
Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant’s trade mark. The dominant part of the disputed domain name is “Nilfisk” which is identical to the Complainant’s trade mark.
The addition of “Calgary” is irrelevant. It has no impact on the overall impression when comparing the disputed domain name and the trade mark. It is a generic term referring to the name of a city in Canada.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the disputed domain name, which contains the Complainant’s main brand name.
The Respondent sells competing products in Canada and has used the disputed domain name to redirect to its own website.
The Respondent is not an agent of the Complainant and there is no business relationship between the Parties. The Complainant has never authorised the Respondent to use its trade marks.
It seems unlikely that the Respondent is commonly known by the disputed domain name. Furthermore, the Respondent does not seem to make a legitimate noncommercial or fair use of the disputed domain name.
Registered and Used in Bad Faith
The disputed domain name was registered and used in bad faith by the Respondent.
It is unlikely that the Respondent was unaware of the Complainant’s prior rights in the name “Nilfisk”, which is a made-up word.
Use of the disputed domain name is an intentional attempt by the Respondent to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark as to the source of its products.
Registration of the disputed domain name by a third party is detrimental to the Complainant and will cause it loss of trade because it is redirected to a website selling competing products.
The Respondent has not replied to the Complainant’s emails.
The domain name <nilfiskcalgary.ca> is registered to Unicode Media Group, Inc, but it has the same administrative contact as the disputed domain name and also redirects to the Respondent’s website at “www.vacuumspecialists.com”.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has rights in the mark NILFISK arising from its registered trade marks. The Complainant has also acquired common law rights in the name, deriving from its extensive worldwide use over many years.
The disputed domain name consists of the Complainant’s trade mark NILFISK combined with the geographic term “Calgary”. That term is insufficient to differentiate the disputed domain name from the trade mark; on the contrary it enhances the connection as it simply denotes a branch in, or other connection of the Complainant’s business with, the Canadian city of Calgary.
The Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain name to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant’s products and services. Such use of the disputed domain name could not be said to be bona fide.
There is no evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply.
The Panel finds that the Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
It is obvious to this Panel that the Respondent registered the disputed domain name with the Complainant’s trade mark in mind. The name is a distinctive, made-up term and the Respondent operates in the same industry as the Complainant. The Respondent has sought to divert the Complainant’s customers or potential customers to a website selling products competing with those of the Complainant.
The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) 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 <nilfiskcalgary.com> be transferred to the Complainant.
Dated: April 27, 2012