WIPO Domain Name Decision: D2005-0963

The Complainant is Viagruppen AS, Oslo, Norway, represented by Thommessen Krefting Greve Lund AS, Norway.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2005. On September 9, 2005, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On September 9, 2005, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 September 27, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 17, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 24, 2005.

The Center appointed Dr. Reinhard Schanda as the Sole Panelist in this matter on November 8, 2005. 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.

Having reviewed the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under Paragraph 2(a) of the Rules “to employ reasonably available means calculated to achieve actual notice to the Respondent.” Therefore according to Paragraph 5(e) and 14(a) of the Rules, the Panel shall issue its Decision based on the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of any Response from the Respondent.

The domain name <viagruppen.com> was registered on June 2, 2004, with Tucows Inc. The language of the registration agreement is English.

On November 21, 2002, the Complainant registered the following trademarks in Norway:

In addition, the Complainant has also registered the following domain names in Norway:

The Complainant is a registered company in Norway that offers travel agency services in Norway. The Complainant contends that it was established in Norway in 1991 and registered as a company with the Norwegian Registrar of Companies in 1995.

The Complainant is a part of a Group of Companies which falls under the Via Travel Group-umbrella, which is a publicly listed company. The Group of Companies provides travel agency services to its customers throughout Scandinavia, hereunder Norway, Denmark and Sweden. The Group of Companies has over the past 30 years grown to become a leading travel management company within Scandinavia. The brands and market share of the Group of Companies dominate the region both within its core business an corporate travel as well as within leisure and the growing online market.

The Group of Companies has 132 travel agencies located in Scandinavia, of which 105 are in Norway, 10 in Denmark and 17 in Sweden. The Group of Companies currently employs 1370 employees, including its franchises and had a gross turnover of BNOK 7,5 in 2004. The Complainant contends that in 2002 it has registered several trademarks in Norway, amongst others the trademark VIAGRUPPEN A.S. In addition the Complainant has also registered several domain names, amongst others the domain name <viagruppen.no>.

Furthermore the Complainant submits that the domain name at dispute is identical, alternatively confusingly similar to the Complainant’s registered trademark VIAGRUPPEN A.S., except that the disputed domain name has the gTLD “.com” added to the name. In this regard the Complainant submits that the reference to the extension to the disputed domain name indicating the gTLD “.com” is irrelevant in determining the identity or similarity of a domain name with a trademark. Furthermore the fact that the domain name does not have the reference to “a.s” as in the registered trademark does not have an effect on determining whether the domain name is identical or similar to the trademark. The omission of the letters “a.s” in the domain name does not alter the fact that the domain name is identical, alternatively confusingly similar to the Complainant’s trademark.

The Complainant therefore contends that it has a right in and to the trademark VIAGRUPPEN A.S. and furthermore that the domain name <viagruppen.com> is identical, alternatively confusingly similar to the Complainant’s trademark.

To the Complainant’s knowledge, neither the previous owner of the domain name, Mr. Henrik Olsen, nor the Respondent are known under the mark VIAGRUPPEN. The Complainant has not licensed or given authorization to the previous owner or the Respondent to use the trademark VIAGRUPPEN and there is no relationship between the Complainant and the previous owner or the Respondent. The Respondent’s use of the domain name has thus nothing to do with the Complainant’s registered trademarks. In this regard the Complainant submits that the Respondent has no rights or legitimate interests in the said domain name.

Since the domain name at dispute was used as a link by the previous owner to a pornographic site the Complainant is of the view that the domain name was registered by Mr. Olsen for the purpose of attracting Internet users to the pornographic website, by creating the likelihood of confusion with the Complainant’s mark. The transfer of the domain name by Mr. Olsen to the Respondent is in the Complainant’s view an attempt to delude the Complainant and to prevent the Complainant from enforcing its rights against the domain name and a deliberate attempt to escape the jurisdiction of an administrative UDRP panel. In this regard the Complainant submits that the Respondent’s telephone number listed with the Registrar is invalid, furthermore the Respondent’s name “Via Gruppen” is not listed in an Internet directory service for the United States of America and neither is the Respondent’s contact name, Ms. Newport. The Complainant contends that the previous owner is deliberately trying to avoid the effects of a UDRP decision. Furthermore the Internet site “www.viagruppen.com” is at present not used for a particular purpose. As a result the Complainant submits that the domain name is registered and is being used in bad faith.

Paragraph 15(a) of the Rules instructs this Panel to “decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

The Panel is of the view that the Respondent’s domain name <viagruppen.com> is confusingly similar to the Complainant’s trademark VIAGRUPPEN A.S.. The relevant part of the domain name at issue is “viagruppen,” and this is clearly identical or confusingly similar to the trademark VIAGRUPPEN A.S. which is registered and owned by the Complainant. Furthermore the addition of generic or descriptive terms like “a.s” to the Complainant’s trademark do not defeat the confusingly similar requirement of the Policy. See America Online, Inc. v. Yeteck Communication, Inc., WIPO Case No. D2001-0055; Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Henry Chan, WIPO Case No. D2004-0218.

The Panel is furthermore of the view that the addition of the generic top-level domain (“gTLD”) “.com” is irrelevant in determining the element of confusing similarity. The Panel is of the view that such minor changes are insufficient to negate a finding of confusing similarity pursuant to the Policy paragraph 4(a)(i). It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy. See Sony Kabushiki Kaisha v. Inja, Kil, WIPO Case No. D2000-1409; Little Six, Inc. v. Domain For Sale, Nat. Arb. Forum Decision No. FA 96967; Microsoft Corp. v. Mehrotra, WIPO Case No. D2000-0053.

As a result the Panel finds that the domain name <viagruppen.com> is confusingly similar to the Complainant’s mark cited above.

The Complainant need to show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:

(a) The Respondent has made 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 prior to the dispute;

(b) The Respondent is commonly known by the domain name, even if he has not acquired any trademark rights; or

(c) The Respondent intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

In accordance with the previous UDRP decisions this Panel takes the position that while the Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270; Inter-Continental Hotel Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., Nat. Arb. Forum Decision No. FA 118277 (“Because the complainant’s submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”).

The Panel determines that the Complainant has discharged the onus of proof for the second criterion: The Respondent has failed to demonstrate any legitimate right or interest.

The panel finds the Complainant has established this element. The Respondent has no right or legitimate interest in the disputed domain name.

“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

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

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

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

The Complainant has demonstrated that the domain name was transferred from the previous registrant of record, Mr. Henrik Olsen to the Respondent immediately after the Complainant had sent a cease and desist letter to Mr. Olsen. The Panel finds, in the absence of reguttal by the Respondent, that it can be reasonably inferred that such a transfer was made only to evade the current proceeding and that the entity behind the regsitration is still Mr. Olsen. The fact that the disputed domain name was redirected to a pornographic website may indicate that the domain name has been registered and used in bad faith. See for example: Ty Inc v. O.Z. Names WIPO Case No. D2000-0370 (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith); Six Continents Hotels, Inc v. Seweryn Nowak WIPO Case No. D2003-0022 (noting that “the diversion of the domain names to a pornographic site is itself certainly consistent with the finding that the domain name was registered and is being used in bad faith”).

The Complainant has also shown that it was not the first time that Mr. Olsen has been engaged in cyber-squatting. See Bavarian Nordic A/S v. Henrik Olsen, The Vamune Family, WIPO Case No. D2004 – 0855. Based on the information given in the Complaint and the evidence provided attached to the Complaint, the Panel finds that the Respondent has registered and has used the domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

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, <viagruppen.com> be transferred to the Complainant.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION