WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Royal Copenhagen A/S v. Private - EXP 2
Case No. D2012-0637
1. The Parties
The Complainant is Royal Copenhagen A/S of Glostrup, Denmark, represented by Bech-Bruun Law Firm, Denmark.
The Respondent is Private - EXP 2 from Grand Cayman, Cayman Islands.
2. The Domain Name and Registrar
The disputed domain name <royalkopenhagen.com> is registered with Bargin Register Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2012. On the same date, the Center transmitted by email to Bargin Register Inc a request for registrar verification in connection with the disputed domain name. Despite sending several email communications to Bargin Register Inc., the Center never received the registrar verification.
On April 12, 2012, due to the absence of communication from Bargin Register Inc., the Center informed Bargin Register Inc. that the Center would proceed on the basis that, for the adjudication of disputes concerning or arising from use of the disputed domain name, the domain name registrant has submitted in its Registration Agreement (“RA”) to the jurisdiction of the courts where the registrar is located. The Center also informed Bargin Register Inc. that the Center would proceed on the basis that they are ensuring that the RA is consistent with applicable contractual obligations (ICANN-accredited registrars are contractually obliged to ICANN under section 18.104.22.168 of the Registrar Accreditation Agreement to incorporate such a clause). The Center finally informed Bargin Register Inc. that we would need to proceed on the basis that the information submitted to them is accurate and that the Center would do so reluctantly, and accepts no responsibility in the event of complications resulting from inaccurate or incomplete information.
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 April 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 3, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 4, 2012.
The Center appointed James Bridgeman as the sole panelist in this matter on May 10, 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 trades under the company name Royal Copenhagen and is the owner of the ROYAL COPENHAGEN trademark which it has registered in numerous jurisdictions worldwide, including Denmark, the European Union, the United States of America and China.
The Complainant has furnished evidence of its ownership of the following trademark registrations:
- Danish trademark registration No. VR 1987 03854 ROYAL COPENHAGEN, application date May 30, 1978;
- Community Trademark (“CTM”) registration No. 000474163 ROYAL COPENHAGEN, application date February 20, 1997 (seniority claimed from October 20, 1972);
- United States (“US”) trademark registration No. 0927883 ROYAL COPENHAGEN, application date June 4, 1970;
- US trademark registration No. 1116856 ROYAL COPENHAGEN, application date May 3,.1978;
- US trademark registration No. 1144568 ROYAL COPENHAGEN, Application date October 10, 1978;
- US trademark registration No. 1352873 ROYAL COPENHAGEN, application date August 25,1983;
- China trademark registration No. 744329 ROYAL COPENHAGEN, application date September 27, 1993.
According to information obtained through the WhoIs database, the Respondent in this administrative proceeding is an anonymous person/company domiciled in Grand Cayman, Cayman Islands.
The disputed domain name was registered on December 6, 2005.
5. Parties’ Contentions
A.1. The Complainant’s Rights
The Complainant’s name in Danish, Den Kongelige Porcelainsfabrik A/S translates into English as "The Royal Porcelain Factory".
The Complainant manufactures and sells fine porcelain which is hand painted and manufactured by ancient methods that have been refined since the Complainant’s business was founded by the Royal Danish Court in 1775.
The Complainant is a purveyor to Her Majesty the Queen of Denmark and has the prestigious title "Den Kongelige Porcelainsfabrik A/S, By Appointment to The Royal Court". Among its well known designs are “Flora Danica”, “Fluted”, “Mega Fluted” and “Elements”.
The Complainant relies in this Complaint on its above registrations and its goodwill established through long use of the ROYAL COPENHAGEN trademark. In addition, the Complainant is the owner of numerous domain names containing the second level domain “royalcopenhagen” and maintains an Internet presence through its successful main web site ”www.royalcopenhagen.com” which features an online worldwide Web shop from which Internet users can purchase the Complainant’s products.
The Complainant submits that its trademark ROYAL COPENHAGEN is well-known worldwide and should therefore enjoy extended protection against all non-authorized and infringing use.
A.2. Confusing Similarity
The Complainant argues that the disputed domain name <royalkopenhagen.com> is identical or at least confusingly similar with the Complainant's well-known trademark ROYAL COPENHAGEN because the Complainant's trademark is fully incorporated in the disputed domain name. The only difference being that the word “Copenhagen” in the disputed domain name is spelled with the letter “k” instead of a “c” which does not change the visual impression.
The Complainant further submits that the disputed domain name <royalkopenhagen.com> does not contain any additional letters or numbers to distinguish it from the Complainant's well-known trademark.
The Complainant argues that the letters “k” and “c” are pronounced identically when combined with the suffix "openhagen". Thus, an Internet user who must rely on an aural image of the name and trademark will be equally inclined to write “royalkopenhagen” and “royalcopenhagen” in the browser.
The Complainant asks this Panel to note in support of this argument that around the world the name of the city Copenhagen may be spelled either with a “k” or with a “c” and the Complainant gives the following examples of the spelling: “Kobenhavn” in the Danish language, “Kopenhagen” in German, “Copenhauge” in French, “Copenhagen” in English, “Kopenhagen” in Croatian, “Kopenhaga” in Polish, “Kopenhag” in Turkish, “Khopenheken” in Thai, “KOpenhamn” in Swedish, “Kopengagen” in Russian, “Copenhague” in Spanish, “Copenaghen” in Italian, “Copenhaga” in Portuguese. The Complainant argues that many Internet users originating from countries where Copenhagen is spelled with a “k” will inevitably by mistake enter the disputed domain name <royalkopenhagen.com> as a website address instead of the address of the Complainant’s website t which “www.royalcopenhagen.com” resolves.
A.3. Rights or legitimate interest
The Complainant submits that the Respondent has no rights or legitimate interest in respect of the disputed domain name.
The Complainant states that the Registrar has in a previous UDRP case refused to verify registration data with respect to the Respondent and the Center has therefore accepted a WhoIs as sufficient evidence for the identity of the Respondent, cf. Petroleo Brasileiro S.A - Petrobras v.PrivacyProtect.org WIPO Case No. D2011-1265.
The Complainant states that the disputed domain name <royalkopenhagen.com> was first registered on December 6, 2005 and is currently being used as a link farm that leads Internet users to various websites that are not related to or run by the Complainant. The Complainant submits that while some of the links resolve to web sites that may offer the Complainant’s genuine goods, this does not have any impact on the Respondent's lack of legitimate interest, cf. E.J. McKernan Co. V. Texas International Property Associates WIPO Case No. D2007-1499 and Lime Wire LLC V. David Da Silva / Contactprivacy.com WIPO Case No. D2007-1168.
Furthermore, the Complainant argues that the mere registration of a domain name does not establish rights or legitimate interests in that name. There must be a fair or non-commercial use or bona fide offering of goods under the disputed domain name to establish rights or legitimate interest.
The Complainant submits that the Respondent registered the disputed domain name for the purpose of running a pay-per click operation using the Complainant's ROYAL COPENHAGEN trademark without authorization, and by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of the website under the disputed domain name. Therefore, the disputed domain name is not registered in fair use, cf. General Electric Company V. Japan, Inc., WIPO Case No. D2001-0410.
The Complainant submits that it is well-established in decisions under the Policy that operating a link farm parking page using a distinctive trademark in a domain name, and providing connection to goods and/or services competitive with the trademark owner, does not establish rights or legitimate interests, cf. e.g., VIVO S.A. and PORTELCOM PARTICIPAÇÕES S.A. v. Domains By Proxy - NA Proxy Account Niche Domain Proxy Manager, ( WIPO Case No. D2010-0925; Overstock.com, Inc. v. Metro Media WIPO Case No. DME2009-0001; Fifth Third Bancorp v. Texas International Property Associates, WIPO Case No. D2007-0537; MasterCard International Incorporated v. Paul Barbell, WIPO Case No. D2007-1139; Shaw Industries Group, Inc., and Columbia Insurance Company v. Parth Shah, WIPO Case No. D2007-1368: and Alfa Lava! AB and Alfa Laval Corporate AB v. Alfalava,com WIPO Case No. D2007-1881.
The Complainant asserts that it has not licensed or otherwise permitted the Respondent to use its ROYAL COPENHAGEN trademark or to apply for any domain name incorporating the trademark. There is no business relationship between the Complainant and the Respondent.
The Complainant argues that consequently, the disputed domain name is not used in connection with a bona fide offering of goods, cf. MasterCard International Incorporated v. Paul Barbell (supra).
As the Complainant has shown prima facie evidence of the absence of any rights or legitimate interest in the disputed domain name by the Respondent, the burden of proof thus shifts to the Respondent, cf. Sanofi-aventis V. Midphase Services Inc., WIPO Case No. D2007-0539.
A.4. Bad faith
The Complainant submits that the disputed domain name has been registered and is being used in bad faith.
A screen dump from the website to which the disputed domain name <royalkopenhagen.com> resolves has been submitted as an annex to the Complaint. The website contains links to all sorts of different sites, including and primarily sites where articles of porcelain are being marketed and sold. Thus, it is an aggravating circumstance that terms and trademarks that can be found on the site are: "KGL Porcelaen", "Kongeligt Porcelain", "Royal Copenhagen Antik", "Royal Copenhagen Blue Fluted" and "Royal Copenhagen Flora Danica", all terms referring to the Complainant and its products.
The Complainant's trademark has been established many years prior to the registration of the disputed domain name on December 6, 2005. The Complainant argues that taking this into account and the long established use of the ROYAL COPENHAGEN trademark by the Complainant, it is highly unlikely that the Respondent is unaware of the Complainant's activities and its ROYAL COPENHAGEN trademark. Consequently, the Complainant argues that it is likely that the disputed domain name was registered with the substantial intention to profit from an illegal exploitation of the goodwill and reputation related to the Complainant's well-known trademark ROYAL COPENHAGEN.
The Complainant accepts that it is not in itself illegitimate to have the intention to earn revenue through pay-perclick websites but argues that it has been held in several decisions under the Policy, that the use of a domain name, which is similar to a trademark to obtain revenue through the use of pay-per-click is found to be bad faith use, cf. L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi Inc., WIPO Case No. D2005-0623; and Mpire Corporation v. Michael Frey WIPO Case No. D2009-0258.
Finally, in relation to procedural matters, the Complainant submits that it has not been possible for it to locate the Registrar's registration agreement and argues that the language of proceedings must be decided based on the language actually used by the Registrar and the Respondent and furthermore the content of both the Registrar's website and the website to which the disputed domain name resolves to are also in the English language.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
This is an unusual case as it appears from the file that, despite its best endeavours, the Center has not managed to secure the assistance of the Registrar in verifying the information on the WhoIs database or to effect actual service of the proceedings on the Respondent.
Commencing on March 27, 2012 the Center sought verification of the WhoIs data relating to the disputed domain name registration from the Registrar. The emails sent by the Center either bounced with the Center receiving failure notices or were ignored. On April 13, 2012, having failed despite its best endeavours to make contact with the Registrar, the Center proceeded with this Complaint on the basis of the information available to it and sent a Notification of Complaint and Commencement of Administrative Proceedings to the Respondent’s email addresses available from the WhoIs database viz. […]@barginregister.net, firstname.lastname@example.org and copied the Registrar with same.
Furthermore, on April 13, 2012, the Center sent a written notice to the Respondent by international courier. The shipment arrived in Grand Cayman, Cayman Islands on April 16, 2012, but remained uncollected from the courier on May 3, 2012.
This Panel is satisfied that the Center has thereby satisfied the obligations for service pursuant to paragraphs 2 and 4 of the Rules.
This Panel accepts the Complainant’s submissions that although the Complainant has found it impossible to locate the relevant Registrar's registration agreement, the language of proceedings should be English.
English is the language used by both the Respondent and the Registrar on their respective websites and it is clear that neither the Complainant nor the Registrar would be prejudiced by this decision.
Paragraph 4(a) of the Policy places on the Complainant the onus of proving that:
(i) the disputed 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 said disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided convincing evidence of its ownership of the ROYAL COPENHAGEN trademark through the above-listed trademark registrations and its extensive and long-established use of the mark in relation to the sale of porcelain.
Having compared each with the other, this Panel accepts the Complainant’s submission that the disputed domain name is confusingly similar to the Complainant’s ROYAL COPENHAGEN mark.
The only difference between the two elements of each is the substitution of the letter “c” in the trademark with the letter “k” in the disputed domain name. Given that the pronunciation of the letter “c” and “k” can be identical and given that in some languages the name of the city of Copenhagen is spelled commencing with the letter “k” this Panel is satisfied that the disputed domain name is almost identical and certainly confusingly similar to the Complainant’s trademark.
The Complainant has therefore succeeded in the first element of the test in paragraph 4 of the Policy.
B. Rights or Legitimate Interests
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interest in a domain name, the burden shifts to a respondent to establish such rights.
While it is lawful and permissible to use a domain name as the address of a link farm, such use does not automatically in itself establish rights or legitimate interest in the domain name. There may be circumstances where a particular portal site or search engine may establish a reputation and the status of a trademark in its own right but this is not the case in the circumstances that are the subject of the present Complaint.
In the present case, the disputed domain name and the address of the website to which it resolves, is confusingly similar to the Complainant’s strong and well established trademark with a worldwide reputation in the manufacture and sale of porcelain products. Furthermore, the Complainant has an Internet based reputation reinforced by its now established web presence through its website and outlet at “www.royalcopenhagen.com”.
The Complainant has asserted that it has no connections or affiliations with the Respondent and has not given the Respondent permission to use its ROYAL COPENHAGEN trademark for any purpose.
In the circumstances, the Complainant having established a prima facie case, this Panel finds that the Respondent has failed to discharge the burden of production required to prove that it has such rights or legitimate interest and the Complainant is entitled to succeed in the second element of the test in paragraph 4 of the Policy also.
C. Registered and Used in Bad Faith
This Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.
On the evidence before this Panel, the Respondent is using, or permitting the use of the disputed domain name which is confusingly similar to the Complainant’s ROYAL COPENHAGEN trademark as the address of a website devoted to china and porcelain products. The Respondent has posted a number of links on its website, some of which refer specifically to the Complainant’s products but others refer to products such as “KGL Porcelain”, “Limoges Porcelain” and “Herend Dinnerware” with which the Complainant would not be associated, and others are generic in reference and may or may not include the Complainant such as “Antique Bone China”, “Christmas Decorations” and “Porcelain Figurines”.
The Respondent is obviously using the disputed domain name that is confusingly similar to the Complainant’s trademark to take predatory advantage of the Complainant’s reputation and goodwill to attract Internet users to its website to the prejudice of the Complainant interest.
The words “royal” and “Copenhagen” or “Kopenhagen” do not in themselves describe or refer to such products in any general way. The Respondent’s website is devoted to china and porcelain products including links that refer to the Complainant’s products. Therefore, on the balance of probabilities, the disputed domain name was chosen and registered with actual knowledge of the Complainant, its products and reputation.
In the circumstances, this Panel finds that 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 trademark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website and as such on the balance of probabilities the disputed domain name was registered and is being used in bad faith.
The Complainant has therefore satisfied the third and final element of the test in paragraph 4 of the Policy and is entitled to succeed in this Complaint.
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 <royalkopenhagen.com> be transferred to the Complainant.
Dated: May 21, 2012