WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ferm Living ApS v. PrivacyProtect.org / Domain Admin, Private Registrations AG
Case No. D2013-0093
1. The Parties
The Complainant is Ferm Living ApS of Herning, Denmark, represented by Sandel, Løje & Partnere, Denmark.
The Respondent is PrivacyProtect.org of Queensland, Australia / Domain Admin, Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines.
2. The Domain Name and Registrar
The disputed domain name <fermliving.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2013. On January 15, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 16, 2013, 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 January 16, 2013 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 January 16, 2013.
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 January 17, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 6, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 7, 2013.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on February 14, 2013. 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 Complainant is in the business of interior design. The company name Ferm Living ApS contains the old Danish word “Ferm”, which has an English translation along the lines of clever, smart or skilled. The company name was registered at the Danish Commerce Agency on November 27, 2006.
The Complainant holds the following trademark registrations:
FERM LIVING, word mark, Danish Patent and Trademark Office, date of application September 12, 2006, registered March 27, 2007, registration number VR 2007 00835, classes 16, 20, 35;
FERM LIVING, Community Trademark, Office for Harmonization of the Internal Market, date of application November 17, 2009, registered August 24, 2010, registration number 008690976, classes 21, 24 and 27.
The Complainant registered its own domain name <ferm-living.com> on the same date as its application for its trademark on September 12, 2006.
Nothing is known about the Respondent, whose true name and address are concealed by means of a privacy service. The disputed domain name was registered on February 26, 2007.
5. Parties’ Contentions
The Complainant has produced copies of the registration documents in respect of the two trademarks listed in section 4 above, and a copy of the registration document for the company name “Ferm Living ApS”.
The Complainant contends that the disputed domain name is identical to a trademark or service mark in which the Complainant has rights. The priority date of application to the Danish Trademark Office for the trademark FERM LIVING is September 12, 2006, which is earlier than the date of registration of the disputed domain name on February 26, 2007. Furthermore the company name “Ferm Living ApS” was adopted on November 23, 2006 and registered by the Danish Commerce Agency on November 27, 2006.
The Complainant further contends that it has made out a prima facie case to the effect that the Respondent does not have any rights or legitimate interests in the disputed domain name.
The appropriate searches have not revealed the Respondent has any rights in the disputed domain name. The Respondent has not been authorised to use the Complainant’s trademark in any way. The Respondent’s use of the disputed domain name for a pay-per-click website, in the same field of business as the Complainant, does not constitute bona fide use in trade. The Respondent is not and does not claim to be known by the disputed domain name or a similar name. The use of the disputed domain name is commercial.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith.
The Complainant outlines a chronology in which it applied to register its trademark and also its own domain name <ferm-living.com>, both on September 12, 2006, shortly after which both the trademark application and the Complainant’s own domain name would have become public information. The acceptance and registration of the company name “Ferm Living ApS” on November 27, 2006 was thereafter public information. The Complainant’s own website could be viewed on the Internet in January 2007. Shortly thereafter, on February 26, 2007, the Respondent registered the disputed domain name.
The Complainant says that its trademark is unusual and inherently distinct. The word “ferm” has no known meaning in languages other than Danish. The Complainant says that the Respondent knew of the Complainant’s prior trademark rights and registered the disputed domain name in order to attempt to take economic advantage of the Complainant’s omission to register the disputed domain name <fermliving.com>. It is highly unlikely that the Respondent did not know about the Complainant and its trademark.
The Complainant contends that the disputed domain name is used for commercial gain by way of a pay-per-click website, which refers visitors to links related to interior design, and that the Respondent may intend in the future to try to sell it to the Complainant. Internet users intending to visit the Complainant may make a typographical mistake, or make the wrong selection from search results, and arrive at the Respondent’s website at the disputed domain name instead.
The Complainant contends under the heading of bad faith registration and use, that the Respondent has concealed its identity by means of a privacy service.
The Complainant requests the transfer to itself of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identity of the Respondent
Paragraph 1 of the Rules defines a respondent as “the holder of a domain-name registration against which a complaint is initiated”. According to the WhoIs information made available by the Registrar at the time the Complaint was filed, the addresses of the disputed domain name owner (registrant contact), and the administrative and technical contacts were all given initially as: “Name: Domain Admin; Company: PrivacyProtect.org” followed by an address comprising an identification code with a postal box number and the note “All Postal Mails Rejected, visit PrivacyProtect.org”; then a location in Australia with a telephone country code not being that of Australia.
In reply to the Center’s request for registrar verification, the Registrar said, among other things:
“You have mentioned PRIVACYPROTECT.ORG as respondent towards the UDRP proceedings initiated vide case id - D2013-0093 for the domain name fermliving.com. Please note, Privacy protection is only a service that the Respondent has enabled for this domain name. For your reference below are the correct Respondent (Registrant) details.”
The registrant was then named as “Domain Admin”, an email address on the “.ws” (Samoa) registry, then “Private Registrations Aktien Gesellschaft”, with a physical address in Kingstown, Saint Vincent and the Grenadines, and a telephone number and country code not being that of Saint Vincent and the Grenadines.
The decision as to who should be named as the Respondent generally in cases involving a privacy service is not entirely settled, as discussed in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”) at paragraphs 3.9 and 4.9. Since on a literal reading of the original WhoIs information for the disputed domain name the Respondent was listed under the individual name of “Domain Admin” and the company name “PrivacyProtect.org”, and the concerned Registrar promptly responded to the Center’s request for Registrant information disclosing “Domain Admin, Private Registrations Aktien Gesellschaft” as registrant, the Panel accepts the Complainant’s choice in its Amended Complaint to add “Domain Admin, Private Registrations Aktien Gesellschaft” as a Respondent and considers both entities as Respondents for purposes of this proceeding. In light of the practical likelihood of the ultimate registrant resting with a single guiding mind or entity, the Respondent will be referred to in the singular.
The Domain Name Registration Agreement between the Registrar and the Respondent at the applicable appendix C, under the heading “Provision of Registration Data”, reads: “As part of the registration process, you are required to provide us with certain information and to update this information to keep it current, complete and accurate”. The list of required information that follows includes all contact details of the registrant, administrative and billing contacts.
It may reasonably be concluded that in this case the Respondent has contrived to avoid providing an acknowledgement of having been contacted in respect of the disputed domain name. As said, however, by the learned Panelist in Grove Broadcasting Co. Ltd v. Telesystems Communications Limited, WIPO Case No. D2000-0703:
“[the Center] goes to some lengths to ensure that proper service is effected on the named registrant at the place disclosed in the WHOIS database or in the information supplied to the domain name Registrar. Some registrants provide only a post office box number or a convenience address. If the place of service does not happen to be the Respondent’s address as advised to the Registrar, then the Respondent has only him or herself to blame in that circumstance”.
The Panel in this case is satisfied that the Center has fulfilled its obligations to attempt to contact the Respondent in service of the Complaint in accordance with paragraph 2 of the Rules.
B. Identical or Confusingly Similar
The Complainant has produced adequate evidence of its ownership of the trademark FERM LIVING. The wording of paragraph 4(a)(i) of the Policy does not mandate that the trademark, whether registered or otherwise, should have been owned or used by the Complainant prior to the registration of the disputed domain name, however it is noted that the trademark was first applied for at the Danish Patent and Trademark Office on September 12, 2006, prior to the registration of the disputed domain name on February 26, 2007, and the trademark was registered on March 27, 2007.
The Panel finds the disputed domain name <fermliving.com> to be confusingly similar and effectively identical to the Complainant’s trademark FERM LIVING in the terms of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant has asserted that it has not authorised or licensed the Respondent to use the Complainant’s trademark and has conducted searches satisfactory to the Panel in order to establish prima facie that the Respondent does not have rights or legitimate interests in the disputed domain name.
The Policy provides for the Respondent to seek to rebut the Complainant’s prima facie case by reference to the illustrative provisions of paragraph 4(c) of the Policy, or otherwise to the satisfaction of the Panel.
The Respondent has not made any submissions and has not replied at all. On the evidence, the Panel does not find any realistic prospect that the Respondent can demonstrate use of the disputed domain name in a bona fide manner for the purposes of business, or that the Respondent as an individual or business has been commonly known by a name similar to the disputed domain name, or that the disputed domain name has been in noncommercial or fair use. The Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Complainant has the onus of proving under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a Respondent, namely:
“(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 web site 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 provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.
Screen captures made on December 4, 2012 and January 15, 2013 of the website to which the disputed domain name resolved, show what is plainly a click-through website comprising links that, if clicked, would lead the viewer to other websites. This type of website is often called pay-per-click because the links lead to other websites that are in effect advertisers, who pay the originating website a fee for each referral or sale. A pay-per-click operation may be an entirely legitimate business, either standing alone or, for instance, as part of a public information website in order to generate income and defray operating costs.
For a pay-per-click website to succeed commercially it must attract visitors in order to refer them to the websites of the advertisers, so that revenue may be generated. In the present case it may reasonably be concluded that the Respondent has incorporated the Complainant’s trademark into the disputed domain name for the purpose of attracting visitors familiar with the Complainant’s name and trademark. At least some of the visitors or intending visitors to the Respondent’s corresponding website may be expected to be confused into believing, at least initially, that the website is associated with or endorsed by the Complainant, when in fact it is not, but contrives to refer visitors to advertisers in or broadly related to the same field of business as the Complainant. The Respondent’s conduct is contemplated by paragraph 4(b)(iv) of the Policy: the disputed domain name has been used intentionally to attempt to attract, for commercial gain, Internet users to the Respondent’s website by confusion with the Complainant’s trademark. The Panel finds there to have been bad faith use of the disputed domain name under paragraph 4(a)(iii) of the Policy. The Panel finds on the evidence and on the balance of probabilities that the disputed domain name was registered for the purpose for which it has been used, and with the Complainant’s trademark in mind, constituting registration in bad faith.
The Respondent has concealed its true identity by means of a privacy service. Users of the Internet may have entirely legitimate reasons for the use of a privacy service. The Complainant has submitted that in this case, the concealment of the Respondent’s identity is an indication of bad faith. Having regard to all the circumstances, including the Respondent’s provision of incomplete contact details with apparently spurious telephone numbers, its inability to be traced and its failure to reply to the Complaint, together with the findings above of bad faith registration and use, the Panel finds the Respondent’s concealment of its identity to be a compounding factor in bad faith under paragraph 4(a)(iii) of the Policy.
There is not sufficient evidence to support the contention that the Respondent’s primary intention was to sell the disputed domain name to the Complainant or a competitor of the Complainant within the meaning of paragraph 4(b)(i) of the Policy.
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 <fermliving.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: February 25, 2013