The Complainant is Borum A/S, Denmark, represented by PATRADE A/S, Denmark.
The Respondent is Thomas A. Borum, D.V.M., United States of America.
The disputed domain name <borum.com> is registered with Network Solutions, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2021. On April 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 27, 2021, 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 April 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 20, 2021.
The Center appointed Alistair Payne as the sole panelist in this matter on May 25, 2021. 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 based in Denmark is a supplier of machinery, tools, software, and vehicles for line markings and roads, as well as other related products. The Complainant owns various trade mark registrations worldwide for or which include the BORUM word mark. It relies in particular upon its European Union Word mark registration 18004741 for BORUM registered on May 23, 2019, and its United States word mark registration for BORUM registered on August 25, 2020.
The Respondent is based in the United States. The publicly-available WhoIs indicates that the disputed domain name was originally created on September 23, 1998, and the information was updated on December 18, 2017. The disputed domain name does not currently and does not appear to have ever been used to resolve to a website.
The Complainant submits that it owns registered trade mark rights for the BORUM mark and that the disputed domain name consists exclusively of its BORUM trade mark (disregarding the Top-Level Domain “.com”).
The Complainant asserts that no content is currently available on the website to which the disputed domain name resolves and the Complainant is unable to find evidence that the Respondent uses the disputed domain name in connection with a bona fide offering of goods and/or services. The Complainant says that it is unable to find any registered trade- or service marks for BORUM or similar that are owned by the Respondent. It says that the Respondent is not affiliated with the Complainant and the Complainant has not given permission to the Respondent to register the disputed domain name. Finally, in relation to rights and legitimate interests, the Complainant asserts that the registrant’s name in the WhoIs records may in fact be an alias used to match the disputed domain name.
The Complainant submits that the onus is upon the Respondent to show that an unbroken registration record exists from the date of creation of the disputed domain name in 1998 until the present and notes that the WhoIs was updated in mid-2017 well after the date of the Complainant’s business registration in Denmark on May 2, 1996.
As a result of the Complainant’s international presence and number of international trade mark registrations it is likely, says the Complainant, that the Respondent has acquired the disputed domain name due to an awareness of the Complainant’s trade mark and with the purpose of capitalizing on the reputation of the Complainant’s business. At the very least, says the Complainant, the Respondent willfully failed to search for conflicting trade marks, prior to acquiring the disputed domain name. The Complainant argues that by virtue of its obvious online presence and trade marks in various jurisdictions such as the United States, European Union, China and more, the Respondent should have known about the Complainant’s conflicting trade mark rights and that this points to the Respondent’s bad faith. Particularly in circumstances that he is based in the United States. Simple searches of the Respondents national trade mark database, or a simple search engine query, would easily have revealed the presence of the Complainant’s brand, submits the Complainant.
The Complainant asserts that its business is disrupted because the Respondent’s registration of the disputed domain name. It says that the lack of active use of the disputed domain name by the Respondent does not prevent a finding of bad faith under the Policy. It says that the BORUM mark has a high degree of distinctiveness and a substantial reputation. The Complainant asserts that the onus should be upon the Respondent to show when he originally registered the disputed domain name, that the WhoIs information is correct, and his actual or contemplated good-faith use, failing which it submits that the disputed domain name has been acquired and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
The Complainant has demonstrated that it owns various trade mark registrations that incorporate the BORUM mark including European Union Word mark registration 18004741 for BORUM registered on May 23, 2019, and United States word mark registration for BORUM registered on August 25, 2020.
The disputed domain name wholly contains the BORUM mark and is therefore identical to the disputed domain name. As a result, the Complaint succeeds under the first element of the Policy.
Under this element of the Policy, the onus is upon the Complainant to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
This case is reasonably straightforward in that the Respondent’s surname is “Borum”, the Respondent is based in the United States and not Denmark, and the Respondent registered the disputed domain name (as more fully described under Part C below) at least 17 months before the earliest of the registered trade mark rights relied upon by the Complainant, and possibly much earlier than that.
The Respondent is listed in the WhoIs records as “Thomas Borum D.V.M.” and the Panel understands the initials “D.V.M.” to mean “doctor of veterinary medicine”. While the Panel cannot be certain, it is perfectly feasible that the Respondent, based in Mississippi in the United States, registered or acquired the disputed domain name, whether in 1996 or in 2017 for the purposes of a website in his own name for his business as a veterinarian but never got around to using it. In any event, the case ultimately does not turn on this as this was well before the Complainant acquired its trade mark rights and there is nothing in the record to suggest that the Respondent would or should have been aware of the Complainant’s business. Contrary to the Complainant’s allegations in its submission, there is no evidence to suggest that the Respondent somehow acted illegitimately or with a view to trade off goodwill or reputation attaching to the Complainant’s mark.
For these reasons and for the reasons further set out under Part C below, the Panel finds that the Complainant has not succeeded in making out a case that the Respondent has no rights or legitimate interests in the disputed domain name. As a result the Complaint fails under this element of the Policy.
The onus under this element of the Policy is upon the Complainant to demonstrate that the Respondent has both registered and used the disputed domain name in bad faith.
The disputed domain name was first created in 1998 and the WhoIs was subsequently updated in December 2017. Although the Panel is unable to discern whether the Respondent was the initial registrant of the disputed domain name in 1998, or only acquired it in December 2017 as the Complainant suggests, both of these dates predate the registration of the Complainant’s European Union word mark 18004741 in mid-2019 and also its United States word mark which was registered in August 2020. Similarly, the Complainant’s combined word and logo mark registration 79268288 in the United States is later still only having been registered on February 23, 2021.
In general, a disputed domain name that is registered or acquired by a respondent prior to the date on which the complainant has demonstrated that it owns trade mark rights will not be found by a panel to support a finding of registration in bad faith. There are very limited circumstances in which this will not be the case, including in which a disputed domain name is registered in anticipation of trade mark rights, as noted under section 3.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), but there is no evidence of those circumstances applying in this case. It is clear that the disputed domain name pre-dates the earliest of the registered trade mark rights upon which the Complainant relies by at least 17 months. Although the Complainant commenced its business in Denmark in 1996, there is nothing in the record presented by the Complainant to demonstrate that the Respondent would have necessarily have been aware of the Complainant’s business whether in 1996, or 2017. Accordingly, the Panel finds that the Complainant has failed to demonstrate that the disputed domain name was registered in bad faith.
Neither, does the Panel find that there is evidence to support the Complainant’s submission that the disputed domain name was used in bad faith. The Complainant’s main case under this head was that the Respondent has never used the disputed domain name and has therefore made a passive holding of it in bad faith. Factors that previous panels have considered relevant in applying the passive holding doctrine as noted at section 3.3 of WIPO Overview 3.0, include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.
Although the Complainant’s mark is distinctive per se there is little evidence presented by the Complainant of the degree of reputation attaching to it in the United States or elsewhere. While there is no response available, there is also no evidence of the Respondent having concealed his identity at any time. In any event, it seems to the Panel unlikely that he would ever have attempted to do so when the disputed domain name is identical to his surname and the most obvious and credible explanation for his registration of it in the first place was for his own business purposes in connection with his professional occupation.
Accordingly, the Panel finds that the disputed domain name was neither registered nor has been used in bad faith.
For the foregoing reasons, the Complaint is denied.
Date: June 15, 2021