WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Elkjøp Norge AS v. Domains By Proxy, LLC / Em Manuel
Case No. D2012-0433
1. The Parties
The Complainant is Elkjøp Norge AS of Lørenskog, Norway, represented by Kvale Advokatfirma DA, Norway.
The Respondent is Domains By Proxy, LLC of Arizona, United States of America / Em Manuel of Saint Raphael, France.
2. The Domain Name and Registrar
The disputed domain name <elkjopnorge.com> is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2012. On March 5, 2012, the Center transmitted by email to GoDaddy.com, LLC. a request for registrar verification in connection with the disputed domain name. On March 6, 2012, GoDaddy.com, LLC . transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 8, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 9, 2012.
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 March 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 2, 2012.
On March 22, 2012 the Complainant filed with the Center a Supplemental Filing requesting to add two more domain names to the Complaint: <elkjopnorge.net> and <elkjopnorge.org>.
The Center appointed Anders Janson as the sole panelist in this matter on April 25, 2012. The Panel found 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.
On May 3, 2012 the Panel issued the Administrative Panel Procedural Order No. 1, whereby the Center was directed to send a registrar verification request to the Registrar for the domain names <elkjopnorge.net> and <elkjopnorge.org> as well as to ask for the Registrar’s confirmation of the lock status of said domain names. The Panel further held that the Supplemental Filing from the Complainant would be formally accepted if the Registrar would disclose the same registrant and contact information for the additional domain names <elkjopnorge.net> and <elkjopnorge.org> as for the disputed domain name <elkjopnorge.com>.
On May 15, 2012 the Panel issued the Administrative Panel Procedural Order No. 2 in respect of communication received from the Complainant and the concerned Registrar regarding renewal of the domain names <elkjopnorge.net> and <elkjopnorge.org>, whereby the Registrar was ordered to confirm the terms of renewal, and the Complainant was ordered to communicate its intention to renew said domain names before May 18, 2012.
On May 22, 2012, the Panel was informed by the Center of the Complainant’s decision to discontinue the Supplemental Filing, i.e. withdrawing its request to add the two domain names.
4. Factual Background
The Complainant Elkjøp Norge AS is a large electronics retailer in the Nordic region. It trades under the core brand name Elkjøp, which is often translated to Elkjop online. The Complainant’s main website is “www.elkjop.no” from where the Complainant conducts its online business. The trademarks ELKJOP, ELKJØP, ELKJØP.NO and ELKJOP.NO were registered, respectively, as word marks on May 21, 2010 in the official Norwegian trademark register upheld by the Norwegian Industrial Property Office. The trademark ELKJØP was registered as a figure mark on June 25, 1992 in the official Norwegian trademark register. The Complainant’s business name, as registered in the Norwegian official company register, contains the word Elkjøp. The disputed domain name was registered on February 15, 2012.
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 disputed domain name is confusingly similar to registered trademarks in which the Complainant has rights: ELKJOP, ELKJØP, ELKJØP, ELKJØP.NO and ELKJOP.NO. The disputed domain name is further identical to at least one of the following Complainant’s trademarks established by use: ELKJOPNORGE, ELKJOP, ELKJØP and ELKJØPNORGE, where “Norge” is Norway in Norwegian. This element of the domain name lacks the properties of a trademark and must pursuant to trademark law be disregarded when considering the similarities between two marks. The same principle applies to the element of “.com” in the disputed domain name, which also shall be disregarded when considering similarity and risk of confusion. Hence the only element of the disputed domain name <elkjopnorge.com> to be considered is “elkjop”. Therefore the disputed domain name is identical to trademarks owned by the Complainant.
2. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has not been commonly known by the disputed domain name and is not making a legitimate noncommercial or fair use of the disputed domain name. The Respondent is however allowing the disputed domain name to be used as part of a tarnishing of the Complainant’s trademarks and business name. The disputed domain name directs to a slanderous gripe-site in Norwegian directed at Norwegians only. It is a violation of Norwegian intellectual property law to use a domain name that is identical, of confusingly similar, to already registered trademarks or trademarks established by law.
3. The disputed domain name was registered and is used in bad faith. The Respondent registered the disputed domain name for the purpose of tarnishing the trademarks by using it for a classic gripe-site directed at the Complainant. The gripe-site briefly states that the Complainant uses false marketing statements, that its employees are liars etc. Another function of the gripe-site is that it redirects visitors to inter alia the Complainant’s competitors.
The Respondent did not formally reply to the Complainant’s contentions1.
6. Discussion and Findings
Given the case file and the Respondent’s failure to file a formal Response the Panel, where appropriate, accepts as true the contentions of the Complainant. The Respondent’s default does not however automatically lead to a ruling decision for the Complainant. To the contrary the Complainant still must establish a showing that under the Policy it is entitled to transfer of the disputed domain name.
The Policy provides that, to justify a transfer of a domain name, a complainant must prove each of the following (paragraph 4(a) of the Policy):
(i) that the disputed domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name is <elkjopnorge.com>. The disputed domain name contains the Complainant’s trademark ELKJOP in its entirety with the added suffix “norge” and the generic and functional top level domain name (“gTLD”) “.com”. When determining whether a domain name and a trademark are identical or confusingly similar, the gTLD shall typically be disregarded.
The question is therefore if the addition of the suffix “norge” renders the disputed domain name dissimilar from the Complainant’s registered trademark.
In a large number of previous decisions, UDRP panels have found that the fact that a domain name incorporates a complainant’s registered mark is sufficient to establish identical or confusingly similarity for the purpose of the Policy, despite the addition of other words to such marks (Oki Data Americas Inc. v. the ASD Inc., WIPO Case No. D2001-0903 and CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273).
The Panel finds it established that the trademark is widely known and that the ownership belongs to the Complainant. The Panel further finds that the suffix “norge”, meaning Norway in Norwegian, adds little to the overall impression of the disputed domain name. Relevant Internet users are very likely to assume that the addition of the word “norge” to the trademark signifies a website associated with the Complainant, inasmuch as the Complainant is a well-known Norwegian company and the website is published in Norwegian. The Panel therefore finds that the addition of the term “norge” does not diminish the similarity between the disputed domain name and the Complainant’s trademark.
The disputed domain name must therefore be considered confusingly similar to the Complainant’s registered trademark. The Panel holds that the Complainant has established the first element of the Policy, paragraph 4(a).
B. Rights or Legitimate Interests
As mentioned above the Respondent has not filed a formal Response in accordance with the Rules, paragraph 5. In certain circumstances where a respondent clearly has no obvious connection with a disputed domain name, and indeed when the respondent is not making a non-commercial or fair use of the domain name, a prima facie showing from a complainant that the respondent has no rights or legitimate interests may be enough to shift the burden of production to a respondent to demonstrate that such rights or legitimate interests exist. Here, the Respondent has not submitted a formal Response. The Panel notes that registration of a domain name in itself does not establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy. In conclusion, the Panel finds that the Complainant has made a prima facie showing and the Respondent has not participated in these proceedings or presented any evidence of rights or legitimate interests in using the disputed domain name.
The Panel therefore holds, also in view of the Panel’s further findings below, that the Complainant has established the second element of the Policy, paragraph 4(a).
C. Registered and Used in Bad Faith
Finally, the Panel has to consider the question of the disputed domain name having been registered and being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the domain name. These circumstances are non-exclusive and the list is therefore not exhaustive.
The Complainant has asserted that the Respondent’s registration was made for the purpose of tarnishing the Complainant’s trademarks by using the disputed domain name for a gripe-site and to transfer visitors to competitors of the Complainant. In this regard, the Panel has reviewed a screen capture of the website “www.elkjopnorge.com”, where the reader is told that “Elkjøp Norge” is using false discount coupons and that their employees are misrepresenting. The Panel further notes that the disputed domain name was registered on February 15, 2012 and that citations from emails sent just two days earlier were published on the website “www.elkjopnorge.com”.
The Panel notes that the disputed domain name contains a trademark that is well-known in Norway, but it is not necessary for the Panel to delve in questions of whether the use in this case may amount to tarnishment in the trademark sense. For purposes of the third element of the Policy, with reference to the above-mentioned and the fact that the disputed domain name differs from the Complainant’s trademark only by the addition of the suffix “norge”, the Panel finds it more likely than not that the Respondent registered the disputed domain name primarily to attract Internet users to the competitors of the Complainant. In other words, this does not appear to be the case of genuine, noncommercial criticism. While one could arguably say that the domain name is being used for a freedom of speech purpose, the Panel finds that this use is primarily a pretext for commercial advantage. See paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). The Panel finds that this constitutes bad faith.
The Panel therefore concludes that the Complainant has proven that the Respondent registered and is using the disputed domain name in bad faith pursuant to paragraph 4(a)(iii) 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 <elkjopnorge.com> be transferred to the Complainant.
Dated: May 31, 2012
1 The Panel notes that on May 16, 2012, the Respondent sent a brief email communication in response to the Administrative Procedural Order No. 2 which stated: “En vous remerciant. Bien cordialement. Em”.