WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Finn. no AS v. Finn Bedrift
Case No. D2013-0991
1. The Parties
The Complainant is Finn. no AS of Oslo, Norway, represented by Advokatfirmaet Schjødt AS, Norway.
The Respondent is Finn Bedrift of Oslo, Norway.
2. The Domain Name and Registrar
The disputed domain name <finnbedrift. net> is registered with Domeneshop AS dba domainnameshop. com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2013. On June 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 10, 2013, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 2, 2013.
The Center appointed Jonas Gulliksson as the sole panelist in this matter on July 15, 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 a Norwegian company in the online services sector. Furthermore, the Complainant is the holder of the following trademark registrations in Norway:
- FINN, registration no. 192448, registered for goods in class 35, 36, 38, 39, 41 and 42 on August 27, 1998.
- FINN BEDRIFTER, registration no. 244567, registered for goods in class 35 and 38 on February 28, 2008.
- FINN BEDRIFTSSØK, registration no. 244565, registered for goods in class 35 and 38 on February 28, 2008.
The disputed domain name was registered on August 5, 2010.
5. Parties’ Contentions
The Complainant runs and operates the website “www.finn.no”, which is an online marketplace portal on which Internet users can advertise items they have for sale or rent, and services they are offering. In addition, the portal is used for job advertisements and vacancies, as well as general profiling of businesses.
The Complainant and its website “www.finn.no” are both well-known and famous in Norway. According to the website information service at “www.alexa.com”, “www.finn.no” is the 5th most visited website in Norway. Furthermore, the above-mentioned website has a sub site, “www.finn.no/bedrift”, which enables the site users to search for various companies that offer services on the site.
When the Complainant became aware of the registration of the disputed domain name, the Complainant contacted the Respondent by letter and email. The Complainant has not received any reply from the Respondent.
The disputed domain name resolves to a website which enables users to search for Norwegian companies, and find relevant information about these companies.
The disputed domain name is confusingly similar to the Complainant’s trademark FINN, since it incorporates the trademark in full, with the addition of the term “bedrift”, which in Norwegian means “company”. The mere addition of terms such as “bedrift” is insufficient to avoid confusing similarity between a domain name and the trademark of a complainant. On the contrary, the addition of “bedrift” only serves to make the disputed domain name even more similar to the Complainant’s trademarks. Moreover, the Complainant has registered the trademark FINN BEDRIFTER. The disputed domain name only differs from said mark in that the word “bedrift” is in singular and not plural. The Complainant holds that this is a clear case of so-called typo squatting, as the disputed domain name is simply a slight alphabetical variation from the Complainant’s trademark FINN BEDRIFTER.
Furthermore, the Complainant has registered the trademark FINN BEDRIFTSSØK (“bedriftssøk” meaning “company search”). The Complainant holds that the disputed domain name is confusingly similar also to this trademark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. No license, permission, authorization or other consent to use the trademark, FINN, FINN BEDRIFTER or variations thereof have been granted to the Respondent. The Respondent is named Finn Bedrift NUF (“NUF” meaning a Norwegian branch of a foreign company), with its parent company being the British company Finn Bedrift Ltd. Finn Bedrift Ltd. has its registered address at Maple Road, Bramhall, Stockport, United Kingdom of Great Britain and Northern Ireland. This address is most likely a mail forwarding service address, with no real business activities being performed at said address. As such, the Norwegian branch Finn Bedrift NUF seems to be more of a pro forma company that has been registered in order to own domain names, with its name purposely being as similar to the Complainant’s trademarks as possible in order to trade off the Complainant’s reputation. The Respondent is not at all famous or well-known in Norway, and there is no reason for the Respondent to own domain names incorporating the Complainant’s trademarks other than to trade off the good will and reputation of the Complainant.
The disputed domain name was registered and is being used in bad faith. Both the disputed domain name and the website content are highly similar and close to identical to those of the Complainant. The Complainant holds that the Respondent is trying to trade off the well-known names and trademarks of the Complainant, by registering domain names that are confusingly similar to the Complainant’s domain names and trademarks.
The Complainant’s trademarks are highly famous in Norway, and the Complainant uses them intensively. Thus, it is highly unlikely that the Respondent had no positive knowledge as to the existence of the Complainant’s trademarks at the time of registration of the disputed domain name.
As the disputed domain name is similar in both name and actual content in terms of the services being offered on the website, there is a risk that Internet users might believe that there is a relationship between the Complainant and the Respondent. The services offered on the website under the disputed domain name are services one has to pay for, and are similar to services offered by the Complainant. The Complainant maintains that the Respondent intentionally attempts to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks.
The fact that the website corresponding to the disputed domain name as of now seemingly is not working properly, is not relevant when determining whether the disputed domain name is being used in bad faith or not.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name 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 disputed domain names; and (iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is the holder of the Norwegian trademark registrations for FINN, FINN BEDRIFTER and FINN BEDRIFTSSØK. The disputed domain name consists of the word “finn”, with the addition of the word “bedrift” and the generic Top-Level Domain (gTLD) “.net”. According to well-established consensus among UDRP panels, the gTLD is generally not distinguishing.
The disputed domain name and the FINN BEDRIFTER trademark only differ in that the word “bedrift” is in singular in the disputed domain name. The Panel finds that this difference is insufficient to avoid a finding of confusing similarity under the first element of the Policy.
In accordance with the findings above the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s FINN BEDRIFTER trademark in the meaning of paragraph 4(a)(i) of the Policy and the first element of the Policy is thus fulfilled.
B. Rights or Legitimate Interests
In cases when a respondent fails to present a response, the complainant is still required to make a prima facie case that the respondent lacks rights or legitimate interests in the domain name, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2. 0”), paragraph 2.1., and The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064, and Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465. Further, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
The Complainant has asserted that no permission to register the disputed domain name has been granted to the Respondent. Moreover, the Complainant has stated that the Respondent has no rights of its own or legitimate interests to the disputed domain name.
Having considered the submissions of the Complainant, and the absence of any response from the Respondent, the Panel finds that the Respondent is not connected with the Complainant or authorized to use the Complainant’s FINN BEDRIFTER trademark in the disputed domain name. Neither does the Panel find any other indications that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
In the light of what is stated above, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the second element of the Policy is fulfilled.
C. Registered and Used in Bad Faith
The disputed domain name was registered more than two years after the Complainant’s trademark registration of FINN BEDRIFTER, and more than a decade after the registration of FINN. Furthermore, the disputed domain name resolves to a website which offers the same sort of services as the Complainant’s website “www.finn.no” and its sub site “www.finn.no/bedrift”. The Panel finds these facts as an indication of bad faith. Also, the Panel finds it highly improbable that the Respondent has selected arbitrarily the disputed domain name’s word combination without having prior knowledge of the Complainant’s rights and business.
Thus, it is in this Panel’s view apparent that the disputed domain name was registered with knowledge of the Complainant’s trademark rights and with the intention of attracting Internet users for commercial gain by creating a likelihood of confusion with that same mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
All in all, the Panel finds that the disputed domain name was registered and is being used in bad faith. The third element of the Policy is thus fulfilled.
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 <finnbedrift.net> be transferred to the Complainant.
Date: July 25, 2013