WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mötesplatsen i Norden AB v. Above.com Domain Privacy and Transure Enterprise Ltd
Case No. D2014-0238
1. The Parties
The Complainant is Mötesplatsen i Norden AB of Varberg, Sweden, represented by Domain and Intellectual Property Consultants, DIPCON AB, Sweden.
The Respondents are Above.com Domain Privacy of Beaumaris, Victoria, Australia and Transure Enterprise Ltd of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <wwwmoteplassen.com> is registered with Above.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 17, 2014, 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 February 20, 2014 providing the registrant and contact information disclosed by the Registrar and invited the Complainant to submit an amendment to the Complaint. The Complainant filed the first amended Complaint on February 21, 2014 and the second amended Complaint on February 27, 2014.
The Center verified that the second 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on February 27, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was March 19, 2014. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on March 20, 2014.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on March 26, 2014. 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 paragraph 7 of the Rules.
The Panel determines that, pursuant to paragraph 11(a) of the Rules, the language of the proceeding is English, i.e. the language of the Registration Agreement, which the Registrar confirmed to be English.
4. Factual Background
The Complainant is a Swedish matchmaking company. The Complainant has been the owner of one of the biggest matchmaking sites in Sweden since 2001.
The Complainant is the owner of the Swedish trademark registration, MÖTESPLATSEN.SE, filed on December 17, 2005 and registered under number 0381707 with the Swedish Trademark Office (“the Mark”).
The Complainant is also the owner of a much visited domain name containing the Mark, <motesplatsen.se>,which had over 2.6 million unique visitors between mid-December 2013 and mid-January 2014, i.e. during a period of 30 days.
The disputed domain name was created on June 3, 2008.
5. Parties’ Contentions
(i) The Complainant submits that the disputed domain name is confusingly similar to the Mark. The Complainant asserts that the letters “www” not followed by a dot at the beginning of the disputed domain name do not serve to distinguish the disputed domain name from the Mark and that removing the second “t” and changing the position of the first “s” (resulting in the word “moteplassen” instead of “motesplatsen”) do not prevent the obvious visual and auditory similarity between the disputed domain name and the Mark.
(ii) The Complainant contends that the Respondents have no rights or legitimate interests in respect of the disputed domain name. Furthermore, the Complainant contends that it never licensed or in any way permitted the Respondents to register the Mark as a domain name. The Complainant also asserts that the Respondents are not commonly known by the disputed domain name or making a legitimate noncommercial or fair use of the disputed domain name.
(iii) The Complainant submits that by registering the disputed domain name, the Respondents acted in bad faith because they obviously knew about the Complainants’ rights in and to the Mark by intentionally misspelling it, and are also using it in bad faith, since the Respondents commercially profit from misleading consumers who are searching the Internet for information about the Complainant’s business, insofar as the disputed domain name resolves to a website that displays sponsored links, some of which lead to services competing with those of the Complainant while others lead to adult dating websites.
(iv) Finally, the Complainant contends that the Respondent Above.com Domain Privacy acts in bad faith because it did not answer a cease and desist letter sent on December 2, 2013.
(v) The Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Procedural Aspects
The Respondents are formally in default pursuant to paragraphs 5(e) and 14(a) of the Rules and paragraph 8(c) of the Supplemental Rules, because no Response was received from the Respondents within the time limit set by the Policy and the Rules.
Under paragraphs 5(e) and 14(a) of the Rules, the effect of a default by a respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.
Under paragraph 4(a) of the Policy, it is the Complainant’s burden to establish that all three of the required criteria for a transfer of the disputed domain names or other remedy have been met.
Under paragraph 14(b) of the Rules, the Panel is empowered to draw such inferences from the Respondents’ default as it considers appropriate under the circumstances.
In this case, the Panel finds that as a result of the default, the Respondents have failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant. In particular, by defaulting and failing to respond, the Respondents have failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondents have any rights or legitimate interests in the disputed domain names, such as making legitimate noncommercial or fair use of the disputed domain name.
Moreover, as discussed below, the Respondents have failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondents have acted in bad faith.
B. Requirements of Paragraph 4(a) of the Policy
(i) Identical or Confusingly Similar
This disputed domain name, <wwwmoteplassen.com>, is almost identical to the Mark owned by the Complainant, which it replicates almost entirely. Indeed, the Mark is replicated in the disputed domain name, save for the removal of the second “t” and the change in the position of the first “s”.
The consensus view of UDRP panels is that a domain name which contains an obvious misspelling of a mark will normally be found to be confusingly similar to such mark, where the misspelled mark remains the dominant or principal component of the domain name. See Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775; Allstate Insurance Company v. Acme mail, WIPO Case No. D2010-2162; Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258; Confédération Nationale du Crédit Mutuel v. Web Advertising Corp., WIPO Case No. D2007-0655; and Hunter Douglas Industries, BV, and Hunter Douglas Window Fashions, Inc. v. Erik Little, WIPO Case No. D2005-0460.
The addition of generic terms (such as, in this case, “www”), does not serve to distinguish a domain name from registered marks. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367; Royal Bank of Canada v. Rouslan Tambiev, WIPO Case No. D2002-0672; and Allianz AG v. Marian Dinu, WIPO Case No. D2006-0318.
The Panel finds that the similarity in this case between the disputed domain name <wwwmoteplassen.com> and the Mark is such as to create confusion for Internet users.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
(ii) Rights or Legitimate Interests
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of a respondent.
Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden of production of evidence to the respondent to come forward with evidence of a right or legitimate interest in a domain name, once the complainant has made a prima facie showing, as the Panel believes the Complainant has made in this case. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
As previously noted, the Respondents offered no reason for selecting the disputed domain name. There is no evidence that the Respondents are commonly known by the disputed domain name or a corresponding name or use a corresponding name in a business.
The website associated with the disputed domain name resolves to a website that displays a number of sponsored links to various websites offering services similar to or competing with those of the Complainant.
No information is provided on what rights or legitimate interests the Respondents may have in the disputed domain name.
To counter any notion that the Respondents have such rights or legitimate interests, the Complainant has argued that the Respondents: (i) have no rights or legitimate interests in the disputed domain name; (ii) have no license or permission from the Complainant; and (iii) are not commonly known by the disputed domain name.
In the circumstances, the Panel concludes that the Complainant has established the requirement of paragraph 4(a)(ii) of the Policy with respect to the disputed domain name.
(iii) Registered and Used in Bad Faith
As noted above, the Respondents have failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainants’ arguments that the Respondents acted in bad faith by creating confusion to the detriment of the Complainant by registering the disputed domain name confusingly similar to the Mark.
The Panel considers that it is highly unlikely that the Respondents chose to register the disputed domain name randomly with no knowledge of the Mark. See Barney’s Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059; Kate Spade, L.L.C. v. Darmstadter Designs, WIPO Case No. D2001-1384 citing Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028; and SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092. Taking also into account the misspelling of the Mark and the fact that the disputed domain name resolves to a website with sponsored links to services of the same kind as those offered by the Complainant, the Panel considers it highly likely that the Respondents had the Mark in mind when they registered the disputed domain name.
Where a respondent knew or should have known of a trademark prior to registering the disputed domain name, such conduct may also suggest bad faith. See Weetabix Limited v. Mr. J. Clarke, WIPO Case No. D2001-0775.
In addition, the Panel notes that many UDRP panels have found bad faith use of a domain name by a respondent when good faith use is in no way plausible (see Audi AG v. Hans Wolf, WIPO Case No. D2001-0148), considering the specificity of the activity.
Moreover, some UDRP panels have found that in certain circumstances, persons who are registering domain names have an affirmative duty to abstain registering and using a domain name which is either identical or confusingly similar to a prior trademark held by others and that contravening that duty may constitute bad faith. See Policy, paragraph 2(b); Nike, Inc v. B.B. de Boer, WIPO Case No. D2000-1397; Nuplex Industries Limited v. Nuplex, WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.
The Complainant has also argued and provided evidence that the Respondents are not making a bona fide use of the disputed domain name, and that the disputed domain name is used to divert Internet users for commercial gain.
The Panel accepts that the Respondents’ website will directly or indirectly have generated revenue for the Respondents or whoever is responsible for the uploading of third-party links on the website to which the disputed domain name resolves. The fact that it might not be the Respondents who have derived the gain is irrelevant. See Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912.
The Panel also notes that the Respondent Transure Enterprise Ltd is, as of this date, a named respondent in 733 WIPO UDRP cases, often jointly with the Respondent Above.com Domain Privacy.
Although using a proxy service to hide the identity of the registrant is not per se conclusive of bad faith registration and use (see Trinity Mirror Plc and MGN Ltd. v. Piranha Holdings, WIPO Case No. D2008-0004), this fact added to the Respondents’ conduct in diverting Internet users for commercial gain is strongly indicative of bad faith.
The Panel finds that the evidence submitted supports a finding of bad faith under paragraph 4(b)(iv) of the Policy.
Finally, some panels have applied the passive holding concept to mere “parking” by a third-party. It is well established that the mere passive holding of a domain name may in appropriate circumstances be evidence not only of bad faith registration, but also of bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallow, WIPO Case No. D2000-0003; DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232; Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004; Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260.
Here, the fact that the Respondent Above.com Domain Privacy did not answer a cease and desist letter and continued to host a parking page sponsoring links that potentially compete with the Complainant amounts to use in bad faith.
The Panel concludes in these circumstances that the Respondents’' registration and use of the disputed domain name constitute bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case.
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, <wwwmoteplassen.com>, be transferred to the Complainant.
Date: April 9, 2014