WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nobelstiftelsen (The Nobel Foundation) v. Ousainou Jeng

Case No. D2011-1385

1. The Parties

The Complainant is Nobelstiftelsen (the Nobel Foundation) of Stockholm, Sweden, represented internally.

The Respondent is Ousainou Jeng of Hvalstad, Norway.

2. The Domain Name and Registrar

The disputed domain name <nobelpeaceprizeconcert.org> is registered with Answerable.com (I) Pvt Ltd (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 15, 2011. On August 15, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 16, 2011, the Registrar transmitted by email to the Center its verification response and provided the contact details for the registrant.

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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 23, 2011. In accordance with paragraph 5(a) of the Rules, the due date for Response was September 12, 2011. The Response was filed with the Center on September 7, 2011.

The Center appointed Brigitte Joppich as the sole panelist in this matter on September 26, 2011. 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 paragraph 7 of the Rules.

4. Factual Background

The Complainant was established in 1900, and, based on the will of Alfred Nobel, manages the assets made available through such will for the awarding of the Nobel Prize, which has been awarded annually since 1901 for great achievements in the areas of peace, medicine, literature, chemistry and medicine or physiology. To honor the Nobel Prize Laureates, the Nobel Peace Prize Concert has been arranged in Oslo, Norway, annually since 1999, just like the Nobel Prize Concert is held each year in Stockholm, Sweden.

The Complainant is the registered owner of numerous trademark registrations for NOBEL PRIZE, including Swedish trademark no. 196321 for NOBEL PRIZE, International trademark registration no. 000904411 for NOBEL PRIZE and Norwegian trademark registration no. 215549 for NOBEL PRIZE (hereinafter referred to as the “NOBEL PRIZE Marks”). The Swedish trademark registration no. 196321 was registered on May 24, 1985. Furthermore, the Complainant is registered owner of the Swedish trademark registration no. 0375743 Nobel Peace Prize Concert, the Norwegian trademark registration no. 0905394 for NOBEL PEACE PRIZE CONCERT, the United States trademark registration no. 3340324 for NOBEL PEACE PRIZE CONCERT and the Swedish trademark registration no. 0375743 for NOBEL PRIZE CONCERT. The Complainant’s Swedish trademarks for NOBEL PEACE PRIZE CONCERT and NOBEL PRIZE CONCERT were first registered on October 21, 2005 and June 21, 2005 respectively. The Complainant provides <nobelprize.org> and <nobelpeaceprize.org> as official websites of the Nobel Prize, which jointly had more than 40.9 million visitors during 2010.

The disputed domain name was first registered on December 13, 2004 and has not been used by the Respondent so far.

5. Parties’ Contentions

A. Complainant

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 identical or at least confusingly similar to the Complainant’s registered trademark NOBEL PEACE PRIZE CONCERT. Furthermore, the disputed domain name is confusingly similar to the Complainant’s NOBEL PRIZE Marks.

(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name as he has no connection whatsoever to the Nobel Peace Prize Concert, the Nobel Peace Prize, the Nobel Prize Concert, the Nobel Prize or to the Nobel Foundation, as he has never used the disputed domain name and as has not in any way become commonly known by the disputed domain name.

(3) The disputed domain name was registered and is being used in bad faith. The Complainant contends that neither the Respondent nor anyone else could possibly at the time of registration have been unaware of the Complainant’s use of the marks NOBEL PRIZE, NOBEL PEACE PRIZE and NOBEL PEACE PRIZE CONCERT, as the Nobel Peace Prize has been well-known for many years and the Nobel Peace Prize Concert has been arranged since 1999. The Complainant further argues that the Respondent’s passive holding of the disputed domain name equals active bad faith use as it is not possible to conceive any plausible situation where the Respondent could legitimately use the disputed domain name and that the disputed domain name is likely to cause confusion by being the obvious first choice for the mentioned information from both a provider’s and a receiver’s perspective.

B. Respondent

The Respondent denied the Complainant’s contentions. With regard to the three elements specified in paragraph 4(a) of the Policy, the Respondent argues that the Complaint has to be denied for the following reasons:

(1) The Respondent states that there was no trademark NOBEL PEACE PRIZE CONCERT at the time he registered the disputed domain name on December 13, 2004. The Respondent states that he is a musician and artist himself and had seen the need of more news and information about the Peace Prize Concert worldwide.

(2) The Respondent states that - as a Norwegian and a musician - he feels he has a relationship with the Nobel Peace Prize Concert, a world event. Furthermore, he estimates that he can provide additional and objective information about such world event and that it is quite normal to have additional news and information pages for big artists or concerts, as could be observed for example for the Eurovision Song Contest. The Respondent states that he had a telephone conversation with Mr. Bjørn Helge Vangen of the Norwegian Nobel Institute, where he explained his plans for making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark(s) or service mark(s) at issue. He also explained that he had not yet had the time to realize his plans, because of lack of time and other projects he had been working on, but that he still intends to go forward with his project.

(3) The Respondent states that he already explained his plans to legitimately use the disputed domain name. He further states that he is not a competitor of the Complainant, and that he never tried to sell the disputed domain name, which was not obtained to disrupt the Complainant’s business, but on the contrary, to market and to spread additional information about the world event, the Nobel Peace Prize Concert. Finally, the Respondent contends that he has never intended to give rise to confusion with the Complainant’s mark, and that he will state clearly on his web site that it is an independent informational site about The Nobel Peace Prize Concert.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:

(i) the domain name is identical or confusingly similar to the Complainant’s trade mark; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name fully incorporates the Complainant’s NOBEL PRIZE Marks, which predate the domain name registration and in which the Complainant has exclusive rights, and is confusingly similar to such trademarks.

Firstly, the additional words “peace” and “concert” in the disputed domain name are merely generic. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words, such as “concert” or “peace” (cf. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") at paragraph 1.9 with further references; Eli Lilly and Company v. Igor Palchikov, NAF Claim No. 1388612 (<cialisliveconcert.com> et al.); Disney Enterprises, Inc. and ESPN, Inc. v. Kanter Associates SA c/o Admin, NAF Claim No. 1293417 (<hannahmontanaconcerts.com> et al.)).

Secondly, it is also well established that the specific top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).

Therefore, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.

(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent’s rights or legitimate interests in the disputed domain name will then shift to the respondent.

The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.

The Respondent argues that he can rely on rights or legitimate interests under paragraph 4(c)(iii) of the Policy, as he planned to provide additional and objective information about the Nobel Peace Prize Concert at the disputed domain name. Given that the Respondent admits that he has in fact never used the disputed domain name, the Panel finds that the Respondent has no rights or legitimate interests under paragraph 4(c)(iii) of the Policy. Paragraph 4(c)(iii) of the Policy only accepts active use of a domain name and, unlike paragraph 4(c)(i) of the Policy, accepts no demonstrable preparations to be sufficient to establish own rights or legitimate interests.

Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out of pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and its rights in the NOBEL PRIZE Marks as he admitted to have registered the disputed domain name to provide news and information on the Complainant and its concerts. The Panel is therefore satisfied that the Respondent registered the disputed domain name in bad faith under paragraph 4(a)(iii) of the Policy.

As the disputed domain name is not actively used by the Respondent, the Panel has to decide whether or not the Respondent’s (non-)use of the disputed domain name is to be considered as bad faith use under the Policy.

It is consensus view that the lack of an active use of a domain name does not as such prevent a finding of bad faith. In such cases the panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include a complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574; Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131).

The Panel is confident that the Complainant’s NOBEL PRIZE Marks are well-established worldwide, based on the longstanding tradition of the Nobel Prizes and the massive media coverage whenever a Nobel Prize is awarded. Furthermore, the Respondent failed to provide evidence of any actual good faith use. In the view of the Panel, the Respondent’s contemplated use of the disputed domain name in connection with a non-commercial informational website on the Nobel Peace Prize Concert is not sufficient in this regard as such use of the disputed domain name would, based on the fact that the Complainant itself provides its information at <nobelprize.org> and <nobelpeaceprize.org>, in any case render the false impression that the domain name is somehow related to the Complainant. The Panel is therefore confident, that the disputed domain name cannot be used by the Respondent in good faith, as it is a domain name Internet users might mistakenly enter when searching for the information in the Complainant’s Nobel Peace Prize Concert.

In the view of the Panel, the facts of this case do not allow for any plausible actual or contemplated active use of the disputed domain name by the Respondent in good faith. The Panel is therefore convinced that, even though the disputed domain name has not yet been actively used, the Respondent’s non-use of the domain name equals use in bad faith.

Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant satisfied the requirements of paragraph 4(a)(iii) of the Policy.

7. Reverse Domain Name Hijacking

The Respondent requests a finding of reverse domain name hijacking. This is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Moreover, paragraph 15(e) of the Rules provides as follows: “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”.

In the present case, the Panel finds that the Complainant has made out its case under the Policy and is accordingly entitled to its requested remedy; thus, the Panel finds that there is no room for a reverse domain name hijacking order.

8. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <nobelpeaceprizeconcert.org> be transferred to the Complainant.

Brigitte Joppich
Sole Panelist
Dated: October 10, 2011