WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Normann Copenhagen ApS v. Peter Normann
Case No. D2017-0829
1. The Parties
The Complainant is Normann Copenhagen ApS of Copenhagen, Denmark, represented by DLA Piper, Denmark.
The Respondent is Peter Normann of Helsingør, Denmark, represented by Mazanti-Andersen Korsø Jensen, Denmark.
2. The Domain Name and Registrar
The disputed domain name <normann.com> is registered with Ascio Technologies Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 25, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 27, 2017, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2017. The Response was filed with the Center on May 24, 2017.
The Center appointed Knud Wallberg as the sole panelist in this matter on June 1, 2017. 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.
The Complainant submitted a Supplemental Filing on June 6, 2017 and the Respondent submitted a Supplemental Filing on June 9, 2017. Since both submissions seem to be relevant to the case, they address issues that could not necessarily have been addressed in the initial submissions of the Parties and since they have been submitted shortly after the appointment of the Panel, the Panel has in accordance with paragraph 10 of the Rules decided to admit the said filings.
4. Factual Background
The Complainant was established in 1999 and has grown to be one of the leading Danish design firms, producing furniture, decorations and other handicrafts.
The Complainant is the owner of several registrations for the trademark NORMANN COPENHAGEN, including the Denmark trademark, registration number no. VR 2008 00469, registered on January 28, 2008, as well as a number of domain names containing "normann-copenhagen" or "normann" as second level domain.
The Respondent's name is Peter Normann and Normann is thus the family name of the Respondent.
The disputed domain name was registered on October 29, 1996. At present, the disputed domain name does not resolve to an active website.
5. Parties' Contentions
The disputed domain name is identical or confusingly similar to trademarks and domain names belonging to the Complainant
The Complainant asserts that the Respondent's disputed domain name <normann.com> is identical to the defining word in the trademarks NORMANN COPENHAGEN belonging to the Complainant since "Copenhagen" is merely a reference to a geographical place of origin.
The Respondent has no rights or legitimate interests in respect of the disputed domain name
The Complainant further asserts that the Respondent has no legitimate interest in the use of the disputed domain name <normann.com>, since the Respondent has owned the disputed domain name for 21 years without ever establishing a functioning website, or indicating to the world that he either runs a business or intends to run a business. The Respondent has merely used the disputed domain name for a personal mail server, and the Complainant claims that the Respondent does not even use the mail server, since the Respondent has a business engaged within software programming and that the Respondent uses a different mail server for this business.
The Complainant also asserts that the Respondent has a recurring renewal with "One.com", so as to keep the Complainant from acquiring the disputed domain name.
Furthermore, according to the Complainant, the Respondent has no trademark rights, no service mark rights and is not defined to the public eye by the use of the disputed domain name.
Finally, the Complainant asserts that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, due to the simple fact that the domain name remains void of content despite its registration 21 years ago.
The disputed domain name was registered and is being used in bad faith
The Complainant reiterates that the Respondent has not used the disputed domain name for 21 years, which indicates that the Respondent has no rightful use, and no intention of using the disputed domain name for personal or commercial reasons.
The Complainant further states that the Respondent "has been offered due compensation by the Complainant in exchange for the domain name on three occasions, but has probably decided to await higher bids, in an effort to profit on the ownership in bad faith. The registration of the domain name in 1996, with no use for 21 years must be interpreted as the Respondent acquiring it as an investment. Thus, the Respondent continues to renew the registration of the domain name in order to higher the domain names value [sic]."
Finally, the Complainant claims that it is nationally and internationally recognized as a business, and that the Respondent has knowledge of its existence. The Respondent therefore has a financial incentive to keep renewing the disputed domain name while refusing the compensation from the Complainant. The fact that the Complainant has offered the Respondent compensation in three offers, is an indication of bad faith.
Whether the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Respondent contests that the disputed domain name is identical or confusingly similar to the Complainant's trademark NORMANN COPENHAGEN. The Complainant is commonly known under the trade name "Normann Copenhagen" and the term "Copenhagen" is not merely a geographical indication but is an integral part of the trademark and the trade name applied by the Complainant.
Whether the Respondent has rights or legitimate interests in respect of the disputed domain name.
The Respondent rebuts the Complainant's allegation that the disputed domain name has not been used for business purposes. The Respondent has previously provided IT consultant services, including the development of IT solutions, as well as the hosting of these under the disputed domain name <normann.com>. Furthermore, the Respondent has been accredited as a domain name registrar since 2002 under the name servers "ns.normann.com" and "ns2.normann.com", all of which is evidenced in annexes to the Response.
Finally, Normann is the Respondent's family name and the Respondent, as well as other family members, is currently making a legitimate noncommercial use of the disputed domain name for email addresses.
Whether the disputed domain name hasbeen registered and isbeing used in bad faith
The Respondent asserts that he registered the disputed domain name in 1996 and that it has been in use since then, i.e., for over 20 years. The Complainant's company was established in 1999 and the Complainant has only recently in 2017 made the registrations of the domain names comprising of "normann" without the reference to "Copenhagen".
Therefore, the Respondent states that it is clear and beyond any doubt that the Respondent has registered and used the disputed domain name in good faith and that for factual reasons the registration could not have been in bad faith.
The Respondent further asserts that its actual use of the disputed domain name <normann.com> supports that the Respondent at no time acted in bad faith or contravening the Rules or the Supplemental Rules.
Finally, the Respondent asserts that while it is true that the Complainant approached Respondent regarding a possible transfer of the disputed domain name, the Respondent has not offered to sell the disputed domain name to the Complainant.
Reverse Domain Name Hijacking
Based on the reasons described above, the Respondent claims that the Complainant has made false claims against the Respondent who is the rightful owner of the disputed domain name. The Respondent states that this is supported by the fact that the Complainant has made several registrations of domain names similar to the disputed domain name immediately prior to the filing of this Complaint in order to legitimize their claim for the disputed domain name.
The Respondent therefore claims that the Complainant is abusing the UDRP in an attempt to harass the holder of the disputed domain name.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the domain name registered by the respondent 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 domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the complainant.
A. Identical or Confusingly Similar
Since all the requirements of paragraph 4(a) of the Policy must be met, the failure on the part of the Complainant to demonstrate one element of the Policy will result in failure of the Complaint in its entirety. Accordingly, in light of the Panel's below findings regarding the Respondent's rights or legitimate interests and regarding the issue of registration and use in bad faith, strictly speaking it is unnecessary for the Panel to decide whether the disputed domain name is identical or confusingly similar to the Complainant's trademark. That said, the Panel finds the first element met here.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides, without limitation, several circumstances any of which, if found by the Panel to be proved, demonstrates Respondent's rights or legitimate interests in the disputed domain name. Notably, paragraphs 4(c)(ii) and (iii) of the Policy require the Respondent to show that:
- as an individual he has been commonly known by the disputed domain name, even if he has not acquired trademark or service mark rights; or
- he 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.
The Respondent has submitted evidence that his surname is "Normann" and that the disputed domain name is being used for email addresses which reflect his family name ("[...]@normann.com"). The Panel notes that the Respondent's email address created at the disputed domain name was also used in communication between the Parties prior to the filing of this Complaint.
The Respondent has also submitted evidence that the disputed domain name has previously been used as
URL-address for the website of the Respondent's then business.
The Panel finds that these circumstances clearly fall within the circumstances enlisted in the Policy which establish that the Respondent has rights or legitimate interests in the disputed domain name. See Société civile G.A.R. v. Domains by Proxy, LLC / Mauro Repossi, WIPO Case No. D2014-0676 concerning the domain name <repossi.org>.
C. Registered and Used in Bad Faith
The examples listed in paragraph 4(b) of the Policy are not exhaustive of all circumstances from which bad faith registration and use may be found, but in essence a finding of bad faith requires that there is a degree of targeting of the Complainant or its mark, or at the very least that the Respondent must have had the Complainant or its trademark in mind when selecting the disputed domain name (Intellect Design Arena Limited v. Moniker Privacy Services / David Wieland, iEstates.com, LLC, WIPO Case No. D2016-1349, The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743 et al.).
In the present case, the Respondent registered the disputed domain name approximately three years before the Complainant was founded as a company in 1999 and more than ten years before the first recorded registrations of the Complainant's trademark NORMANN COPENHAGEN in 2008.
The Panel thus finds on the available record that there is no evidence or indication that the disputed domain name was registered for the purpose of profitable sale, or in a pattern of making blocking registrations, or to disrupt the Complainant's business, or to confuse the Complainant's customers, or for any other reason than to register a domain name that reflects the Respondent's family name.
Further, the Panel finds that there is no evidence or indications that the disputed domain name has been used in bad faith. On the contrary, as mentioned above the domain has been used as URL-address for the website of the Respondent's then business and is currently being used for the Respondent's email address.
The Panel finds that the Complainant has failed to prove that the disputed domain name was registered in bad faith under paragraph 4(a)(iii) of the Policy.
D. Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules provides that, if "after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding". Paragraph 1 of the Rules defines Reverse Domain Name Hijacking ("RDNH") as "using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name".
It has been found by previous UDRP panels that mere lack of success of the Complaint is not of itself sufficient to constitute RDNH, see paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition.
The above mentioned paragraph lists a number of criteria that previous UDRP panels have applied when they have considered the question of RDNH such as "(ii) facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, including relevant facts on the website at the disputed domain name or readily available public sources such as the WhoIs database", and "(vii) filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis".
The Panel considers that the Complainant, who is represented by counsel, upon proper examination of the Policy and its application in a case like this should have realized that the Complaint could not succeed as the Respondent's family name is Normann, as the disputed domain name was registered three years prior to the foundation of the Complainant and more than ten years before the first recorded filing of a trademark application of the Complainant's mark NORMANN COPENHAGEN, as publicly accessible sources would have revealed that the disputed domain name, contrary to the allegations put forward in the Complaint, has been actively used by the Respondent as the URL-address for a website, and as the disputed domain name is currently being used as the Respondent's email address.
Initiating a UDRP proceeding inevitably causes the Respondent to spend a considerable amount of time and in many cases, such as in this one, of cost and the Policy must not be used unless the Complainant has a reasonable and credible belief in its opportunity to succeed. In particular, the UDRP must not be used "in an unjustifiable attempt to pressure a domain name owner into releasing a legitimately held domain name that considerably predates any trademark rights held by the complainant", see inter alia Proto Software, Inc. v. Vertical Axis, Inc/PROTO.COM, WIPO Case No. D2006-0905 and Sustainable Forestry Management Limited v. SFM.com and James M. van Johns "Infa dot Net" Web Services, WIPO Case No. D2002-0535.
Based on the above considerations and on the facts of the case, as presented in the parties' submissions, the Panel finds that the Complaint has been brought in bad faith. See Intellect Design Arena Limited v. Moniker Privacy Services / David Wieland, iEstates.com, LLC, WIPO Case No. D2016-1349.
For the foregoing reasons, the Complaint is denied and the Panel finds that the Complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking.
Date: June 14, 2017