WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Svenskt Tenn AB v. 12Timer ApS, Greger Bjorkegren
Case No. D2013-1640
1. The Parties
The Complainant is Svenskt Tenn AB, of Stockholm, Sweden, represented by Zacco Sweden AB, Sweden.
The Respondent is 12Timer ApS, Greger Bjorkegren, of Copenhagen, Denmark.
2. The Domain Name and Registrar
The disputed domain name <joseffrank.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2013. On September 19, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 19, 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 September 30, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2013. The Respondent submitted an email communication on October 20, 2013, as described below. Accordingly, the Center notified the Parties of the commencement of the Panel appointment process on October 21, 2013.
The Center appointed Tuukka Airaksinen as the sole panelist in this matter on November 5, 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.
The Respondent contacted the Center on October 20, 2013 by email to request an extension of the response filing deadline and to make substantive allegations in the event his request was denied. The Center informed the Respondent that his message would be forwarded on to the Panel for consideration and that it would be in the Panel’s discretion whether or not to grant the requested extension. The Complainant submitted a supplemental filing to the Center by email on October 29, 2013. The Center informed the Complainant that it would be in the Panel’s discretion whether or not to consider and/or admit this filing in rendering its decision.
On November 5, 2013, the Center received two additional supplemental filings from the Respondent and informed him that it would be in the Panel's discretion whether or not to consider these filings.
4. Factual Background
The Complainant is the owner of the trademark JOSEF FRANK, registered inter alia as a Community Trade Mark No. 000227355 covering furniture and various household products. The mark was registered on May 22, 1998. The disputed domain name was registered on August 30, 2003.
5. Parties’ Contentions
The Complainant is an interior design company founded in 1924. In 1934, the Complainant initiated cooperation with the designer Josef Frank, a well-known figure within the interior design industry.
The Complainant contends that the disputed domain name is identical with the Complainant’s registered trademark JOSEF FRANK. Furthermore, the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the disputed domain name and the Complainant has not agreed to the use of its trademark in the domain name.
The Respondent is using the website to which the disputed domain name resolves to host a pay-per-click site with advertising links to competing products. Hence the Respondent is taking advantage of the Complainant’s trademark.
The Respondent has registered and is using the disputed domain name in bad faith, because it resolves to a pay-per-click website. Considering that Josef Frank is a well-known person and that the Respondent has been active within the market of interior design, it is unlikely that the Respondent would not have been aware of the trademark JOSEF FRANK when registering the disputed domain name.
The Respondent submitted, simultaneously with his request for extension, a response described as his basic view on the matter. The Respondent explains that he is creating an online design museum with the works of Josef Frank. He states that he has not accepted offers for the disputed domain name and that any commercial activities have been beyond his control.
On November 5, 2013, the Respondent submitted a supplemental filing. In his supplemental filing the Respondent reiterates the same arguments as in his response of October 20, 2013.
6. Discussion and Findings
The Panel will first address the supplemental filings from the Parties and the Respondent’s request for extension.
It is in the Panel's discretion to decide whether or not such supplemental filings or extensions will be admitted. In this case, it is evident that in his supplemental filing of November 5, 2013, the Respondent does not present any new arguments or evidence in support of his response. The Panel has therefore decided not to consider the Respondent’s supplemental filings, or the request for extension to submit the same, and even if it had been considered, it would have made no difference to the outcome of this case.
Also the Complainant’s supplemental filing of October 29, 2013 does not include any substantial arguments that would be relevant for issuing a decision in the case. Hence it is not necessary to decide whether or not they should be admitted. The Panel has therefore decided not to consider the Complainant’s supplemental filing, and even if it had been considered, it would have made no difference to the outcome of this case.
A. Identical or Confusingly Similar
The Complainant’s registered trademark consists of the words JOSEF FRANK. This trademark is included in its entirety in the disputed domain name, which is entirely devoid of any other relevant elements. The Complainant’s trademark is therefore identical to the disputed domain name.
B. Rights or Legitimate Interests
According to the Respondent, it has planned a virtual design museum for the works of Josef Frank to be accessible under the disputed domain name. While such use could well be considered as a bona fide offering of goods or services or legitimate noncommercial use of the domain name, the Respondent has not provided any evidence or other documentation of its preparations.
Considering that the Respondent has registered the disputed domain name ten years ago, it would be reasonable to expect that the project would have been completed by now, or that at the very least there would be documentation available to support this argument.
Considering the lengthy time with no evidence to support the Respondent’s argument and also that the disputed domain name resolved to a pay-per-click website with advertising links to competing products, the Panel finds the Respondent’s argument unconvincing.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Respondent has explained that his intention was to open a virtual museum of the works of Josef Frank under the disputed domain name. The Respondent was therefore aware of the person Josef Frank when registering the disputed domain name. For the same reason, it is unlikely that the Respondent would not have been aware of the Complainant’s use of the trademark JOSEF FRANK.
The Respondent has explained that any commercial activities relating to the disputed domain name have not been under his control. The direction of the disputed domain name to a pay-per-click website may well be a default direction initiated by the Registrar. However, as the proprietor of the disputed domain name, the Respondent has had all means to redirect the disputed domain name to another website. This is confirmed by the fact that the disputed domain name does currently not resolve to any website.
The Panel finds that the Respondent registered the disputed domain name fully aware of the Complainant’s use of the trademark JOSEF FRANK and that it directed to a pay-per-click website including advertising links to competing products in order to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's trademark, within the meaning of paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
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 <joseffrank.com> be transferred to the Complainant.
Date: November 18, 2013