WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Happy Pancake AB v. Registration Private, Domains By Proxy, LLC / Fredrik Johansson
Case No. D2014-0870
1. The Parties
The Complainant is Happy Pancake AB of Stockholm, Sweden, represented by Domain and Intellectual Property Consultants, DIPCON AB, Sweden.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America ("US") / Fredrik Johansson of Indal, Sweden.
2. The Domain Name and Registrar
The disputed domain name <gladapannkakan.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 23, 2014. On May 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 28, 2014, the Registrar 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 May 30, 2014, 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 the same date.
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 June 4, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 24, 2014. The Center received informal email communications from the Respondent between June 2-4, 2014. The Respondent did not submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment process on June 25, 2014.
The Center appointed Gunnar Karnell as the sole panelist in this matter on July 7, 2014. 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 Disputed domain name <gladapannkakan.com> was created on October 1, 2013.
The Complainant requests that the disputed domain name be transferred to the Complainant.
The Complainant is the registered owner and user of the Community trademark HAPPY PANCAKE, registration number 010613719 of July 19, 2012, filing date February 3, 2012 (word mark).
The Complainant also owns and uses the domain name <happypancake.com>, registered on May 29, 2006.
Following a decision in Sweden on April 22, 2014 (Case No. 751 PF), under the rules governing "Alternative Dispute Resolution proceedings for domain names in the top-level domain ".se"", the domain names <gladapannkakan.se>, gladapannkaka.se> and <gladapankakan.se>, all registered in September 2013 by the same Respondent as in the present case, were transferred to the Complainant.
The disputed domain name currently does not resolve to any website (notwithstanding the Complainant's contentions and printouts annexed to the Complaint).
5. Parties' Contentions
The Complainant is a Swedish limited liability company active on the online dating market, using its trademark HAPPY PANCAKE and running the website <happypancake.com> for matchmaking between adults. The website has been operating since 2007 and it is presently the largest free online dating site in Sweden. Between September 1, 2013 and October 31, 2013 the website was visited by 700,000 unique visitors and 5.500.000 returning visitors. The Respondent's disputed domain name is used for a competing online dating site (Annex 12 to the Complaint).
The Swedish decision in Case No. 751 PF was practically based on the same facts as the present one. Until the three domain names in that case were transferred to the Complainant, they were redirected to the disputed domain name <gladapannkakan.com>. In reply to a cease and desist letter from the Complainant to the then as owner of the disputed domain name sent on May 8, 2014, the Respondent only argued that he was no longer the owner of the disputed domain name, for which a privacy WhoIs was registered (Annexes 7-9 to the Complaint).
The term the "glada pannkakan", as found in the disputed domain name <gladapannkakan.com>, is the Swedish direct translation of the word mark HAPPY PANCAKE. The meaning is the same in Swedish and English. Both visual and conceptual similarities exist between the English "pancake" and the Swedish "pannkakan", making the disputed domain name confusingly similar to the Complainant's trademark HAPPY PANCAKE.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has no rights or license to the trademark HAPPY PANCAKE. It has not been permitted to register the translated trademark in its disputed domain name. The Respondent does not own any trademark or name consisting of the term "gladapannkakan" and the disputed domain name was not registered to be used in its linguistic meaning. It is used to disrupt the business of the Complainant and to commercially profit from misleading consumers by taking advantage of the Complainant's trademark to which the Complainant has the exclusive right of use.
The disputed domain name was registered and is being used in bad faith. The Complainant's trademark HAPPY PANCAKE was registered well before the Respondent became the owner of the disputed domain name. The Respondent, now trying to take advantage of the HAPPY PANCAKE to draw traffic to its own website, was obviously well aware of the Complainant's trademark and business when registering the disputed domain name. The Respondent's website is constructed and designed to resemble that of the Complainant, containing online dating services and pancake recipes as does the Complainant's. Visitors to <happypancake.com> have been contacted by the Respondent trying to recruit for its own business customers from the Complainant's website by misleading advertising and creation of confusion with the Complainant's business. Customers are also likely to get the impression that the parties' websites are linked in some way or owned by the same company.
The Respondent did not formally reply to the Complainant's contentions, apart from its informal email communications of June 24, 2014.
6. Discussion and Findings
The factual foundation of the Complainant's contentions as presented by the Complainant, while supporting its non-contradicted request for transfer of the disputed domain name by written evidence, leads the Panel to the following conclusions:
A. Identical or Confusingly Similar
The meaning of the words forming the Complainants trademark HAPPY PANCAKE, in use by the Complainant and registered well before the registration of the disputed domain name, and the meaning of the distinguishing word "gladapannkakan" in the disputed domain name <gladapannkakan.com>, are undoubtedly easily understood, notwithstanding linguistic specifics and differences in form, in both languages to interrelate so as to make the disputed domain name confusingly similar to the Complainant's trademark. In this regard, the Panel refers to Société pour l'Oeuvre et la Mémoire d'Antoine de Saint Exupéry – Succession Saint Exupéry – D'Agay v. Perlegos Properties, WIPO Case No. D2005-1085, where the panel confirmed that "a semantic similarity between a trademark and a domain name can also exist if the trademark and the domain name contain word elements of different languages if a considerable part of the public understands the meaning of the translation. See e.g., Compagnie Generale Des Etablissements Michelin - Michelin & Cie. v. Graeme Foster, WIPO Case No. D2004-0279".
The Panel finds that the Complainant has made out the first limb of the Policy.
B. Rights or Legitimate Interests
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and there has been no rebuttal by the Respondent. Nothing in the record set out above gives reason to believe that the Respondent has or has had any rights or legitimate interests in respect of the disputed domain name.
The Panel finds that the Complainant has made out the second limb of the Policy in that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Panel finds no indication on the record set out above that might impair the Complainant's assertions regarding facts leading up to its conclusions that the disputed domain name <gladapannkakan.com> has been registered and used in bad faith.
The Panel therefore finds that the Complainant has made out the third limb of the Policy and that the Respondent has registered and used the disputed domain name in bad faith.
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 <gladapannkakan.com> be transferred to the Complainant.
Date: July 13, 2014