WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gresvig AS v. Hu Yanlin
Case No. D2014-1191
1. The Parties
Complainant is Gresvig AS of Askim, Norway, represented by Grette DA, Norway.
Respondent is Hu Yanlin of Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <norheim.com> is registered with eNom (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 8, 2014. On July 9, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 9, 2014, 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 Respondent of the Complaint, and the proceedings commenced on July 18, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 7, 2014. The Response was filed with the Center on August 6, 2014.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on August 13, 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 the Rules, paragraph 7.
By email dated August 13, 2014, Complainant transmitted to the Center and Respondent a supplemental submission. In that email, Complainant responded to certain claims of Respondent in its Response, and provided certain information regarding a proposed offer for sale that was not included in its Complaint. To the extent the supplemental submission addressed the claims by Respondent that could not reasonably have been foreseen by Complainant, the Panel accepts that part of the supplemental submission. To the extent that the supplemental submission provided information that preceded the filing of the Complaint and should have been furnished in it, the Panel rejects that part of the supplemental submission. By email dated August 14, 2014, Respondent replied to Complainant's supplemental submission, and further requested a finding of reverse domain name hijacking. Because the Panel has accepted the supplemental submission of Complainant in so far as it addresses matters newly raised by Respondent, the Panel accepts Respondent's supplemental submission regarding these matters. By email dated August 20, 2014, Complainant submitted additional factual information regarding its use of the trademark. Because such factual information was available, foreseeably relevant, and should have been included with the Complaint, the Panel does not accept this supplemental submission.
4. Factual Background
Complainant is the owner of registration of the trademark NORHEIM on the trademark registry of the Norwegian Industrial Property Office, registration number 239223, registration dated May 14, 2007, in international classes (ICs) 18, 25 and 28 (word and device), and; registration number 260796, registration dated November 27, 2011, in ICs 18, 25 and 28 (word).1 Complainant is the owner of registration of the trademark N NORHEIM (word and device) at the same office (registration dated November 27, 2011).
Complainant indicates that it has operated in Norway under the NORHEIM trademark since 1947. While international classes of trademark registration provide some indication of the type of business that Complainant may be conducting (e.g., sports apparel), Complainant did not furnish specific information in the Complaint regarding the nature of the business it conducts under the NORHEIM trademark.
Complainant asserts registration of the domain name <norheimsport.no> as of July 2, 2014, but did not provide information regarding use of that domain name.2
According to the Registrar's verification, Respondent is registrant of the disputed domain name. According to that verification, the registration for the disputed domain name was created on September 14, 2010. The Registrar did not specifically identify the identity of the initial or creation registrant.
Complainant provided undated screenshots of the website identified by the disputed domain name. Although Complainant did not identify the location from which the screenshots were generated, because a number of the search results appear to be in the Norwegian language, under the circumstances it is reasonable to presume that these results were generated in Norway. Those screenshots show what appear to be standard link farm parking pages. They are headed with the banner "Norheim.com", and provide links to "Norheim", as well as to articles of clothing (including, e.g., "Ladies NorthFace Jacket" (in English) and "Billige Jakker"). Complainant provided a screenshot of a webpage showing a click through to an offer of discount clothing items. At the top of the standard link farm parking pages, there is the statement "Click here to buy Norheim.com for your website name!". Respondent has not asserted any other current or prior use of the disputed domain name.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties' Contentions
Complainant alleges that it has rights in the trademark NORHEIM based on use in Norway since 1947 and as evidenced by registration in Norway. Complainant alleges that the disputed domain name is identical or confusingly similar to this mark.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name because: (1) Respondent only uses the disputed domain name for random advertising "to attract Internet users to variable online stores which are not related to goods or services sold or offered under NORHEIM-related marks or where NORHEIM is mentioned"; (2) sponsored listings on Respondent's website refer to several brands such as Vans, Nike and Converse, and there is no legitimate connection between Respondent's website and the actual goods and services provided for under it; (3) Respondent is not commonly known under the disputed domain name, and; (4) Respondent has no trademark or trade name rights in NORHEIM and has not been authorized by Complainant to use its trademark.
Complainant contends that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent is offering to sell the disputed domain name, and; (2) the only documented use of the disputed domain name is in connection with a website intended to misleadingly divert consumers to online stores without any connection to NORHEIM and which is suited to blurring or tarnishing Complainant's trademark.
In it supplemental filing, Complainant contends that Respondent is not in the wine business and does not have any connection with the Norheim region in Germany, confirming that he registered the disputed domain name for the purpose of selling it to a third-party.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent contends that "Norheim" is a common and general name that is widely known and a long time geographic name (from Wikipedia, it is a state-recognized tourism community and winegrowing village).
Respondent alleges that Complainant could have, but failed, to register the disputed domain name over a long period of doing business, although Complainant has not substantiated that it has been doing business since 1947. Respondent states that Complainant has not explained where its name originates.
Respondent claims that he had never heard of NORHEIM as a sport product when he registered the disputed domain name. Respondent alleges that there is no NORHEIM trademark registered in China, nor in the European Union or the United States.
Respondent asserts that Complainant's main website at "www.gresvig.no" is in Norwegian, and that the term "Norheim" does not seem to appear on the website.
Respondent claims that he is unable to verify the alleged trademark registrations of Complainant.
Respondent argues that he has rights and legitimate interests in the disputed domain name because it is a general and common term, and a famous location and person's name.
Respondent contends that he did not register and use the disputed domain name in bad faith because "I have right to sell, rent, provide email service, or reserve it for future development, as long as for fair use. I am the bona-fide owner." Respondent contends that he has never before seen the links shown on the screenshots provided by Complainant.
Respondent said he never tried to sell the disputed domain name to Complainant or any other party. He also argues that he did not register it to prevent Complainant from reflecting the trademark in a corresponding domain name, that he is not a competitor of Complainant and is not attempting to disrupt its business, and that he did not registered the disputed domain name to divert Internet users by creating a likelihood of confusion.
In his supplemental filing, Respondent states that he is a loyal consumer and fan of wine, and likes the history of, and traveling to, Germany.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center notified the Complaint to Respondent, and Respondent timely filed a Response. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps satisfy the Policy's notice requirements. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided evidence of trademark registrations in Norway, the earliest of which is in 2007, for the term NORHEIM (see Factual Background supra). Complainant has not provided substantial evidence of use of the NORHEIM trademark in commerce, a fact to which Respondent has alluded. Respondent has argued that the term "Norheim" refers to a winegrowing region or municipality in Germany (based on a Wikipedia reference), apparently arguing that "Norheim" therefore may not serve as a trademark in Norway, and alternatively suggesting that use of the NORHEIM trademark by Complainant might be limited to association with sporting-goods. Respondent has not provided a specific legal basis under Norwegian law for challenging the validity of Complainant's Norwegian registrations. Registration typically establishes a presumption of rights in a trademark in favor of the owner. The Panel does not understand there to be a general principle of trademark law that the name of a region in one country may not be used as a trademark in another country (in the absence of a specific preclusion under the national law where the trademark claims are made). The Panel accepts that Complainant has rights in the trademark NORHEIM in Norway based on the presumption in favor of the trademark owner customarily provided by registration.
The disputed domain name <norheim.com> is identical to Complainant's NORHEIM trademark from the standpoint of the Policy.
The Panel determines that Complainant has rights in a trademark and that the disputed domain name is identical to that trademark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue." (Policy, paragraph 4(c)).
Complainant's allegations to support Respondent's lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent alleges that "Norheim" is a common and general term identifying a winegrowing region in Germany. Respondent contends that because of this generic or common meaning of the term, he is allowed to make whatever use of it wishes on his website. The Panel would characterize this as an argument in favor of fair use of a common descriptive term or geographic term. As a factual matter, Respondent notes that while the link farm parking pages generated by Complainant in Norway may appear to somehow be competitive with Complainant and its business, that he (located in China) was unaware of those links or their alleged association with Complainant.
Based on the Wikipedia entry for "Norheim", the Panel accepts that there is the possibility of fair use of this term in connection with identification of a region or municipality in Germany. But, regardless of whether the term is capable of being used fairly so as to establish rights or legitimate interests, the evidence in this proceeding is that Respondent has used it only for the purpose of establishing a link farm parking page that includes reference to the possibility for purchasing the disputed domain name. The Panel does not accept that this constitutes use in connection with identifying a region or municipality in Germany that might be considered fair or legitimate use the meaning of paragraph 4(c)(iii) of the Policy.
The Panel determines that Respondent has failed to rebut Complainant's prima facie showing of Respondent's lack of rights or legitimate interests in the disputed domain name.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name "has been registered and is being used in bad faith" (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that "for the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith." Among those circumstances are: "(i) circumstances indicating that [the respondent has] registered or [the respondent has] 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 [the respondent's] documented out-of-pocket costs directly related to the domain name"; or "(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] 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 [the respondent's] web site or location or of a product or service on [the respondent's] web site or location."
Respondent, a resident of China, has provided Wikipedia evidence identifying "Norheim" as a winegrowing region or municipality in Germany. Respondent asserts a fascination with German history and wine. He contends that the term "Norheim" is capable of common descriptive use, and that he is using it in that way.
The Panel rejected Respondent's assertion of rights or legitimate interests in the disputed domain name on grounds that it constitutes a generic, commonly descriptive or geographic term. Yet the panel acknowledges that "Norheim" refers to a geographic region or municipality in Germany. Even though Respondent has not used the term specifically to refer to that geographic area, there is a basis for Respondent to have selected the disputed domain name other than to take advantage of Complainant and its trademark. This alternative reason for Respondent to have registered the disputed domain name does not establish a per se defense to a finding of bad faith, but it clarifies that the term "Norheim" is not solely associated with Complainant.
Based on the evidence, it is not entirely clear to the Panel why Respondent chose to register the disputed domain name. Yet Complainant has not presented a persuasive explanation as to how Respondent might have become aware become aware of its trademark. Complainant has not presented any evidence of its use of the trademark NORHEIM on the Internet (or elsewhere) such that Respondent, residing in China, might have viewed it. While Complainant registered the term at the Norwegian Intellectual Property Office in 2007, several years prior to Respondent's registration of the disputed domain name, Complainant has not suggested that Respondent was under some duty to search the database of the Norwegian Intellectual Property Office prior to registering the disputed domain name.
In terms of Respondent's knowledge of Complainant's trademark rights when he registered the disputed domain name, the Panel has considerable difficulty in drawing the conclusion that Respondent had either "actual knowledge" or "constructive knowledge" of those rights.4 The most the Panel can deduce from the facts before it is that Respondent engaged in some form of speculation regarding whether the term "Norheim" would have some future value to a third-party, a not untypical form of domain name speculation.5
On the basis of the evidence before the Panel (i.e., the Wikipedia reference to a region in Germany, as contrasted with virtually no evidence of use of the term by Complainant), it seems more likely to the Panel that Respondent would have been aware of the Norheim region in Germany than of Complainant's trademark. Complainant failed to present evidence of use of its trademark in any way that Panel might reasonably conclude that Respondent was aware of when he registered the disputed domain name, or should be considered to have had constructive knowledge of it. There is no factual basis for the Panel to conclude that Respondent knew or should have known of Complainant's trademark, and therefore no basis for the Panel to conclude that Respondent sought to take advantage of it when he registered the disputed domain name.
Because Complainant has failed to demonstrate that Respondent registered the disputed domain name in bad faith, Complainant does not succeed in satisfying the third element under the Policy.
The Panel rejects Respondent's request for a finding of Reverse Domain Name Hijacking. While Complainant has not succeeded in proving that Respondent registered and used the disputed domain name in bad faith, Complainant has demonstrated rights in a trademark identical to the disputed domain name, and Respondent has not provided evidence to substantiate his assertion that Complainant initiated this proceeding in bad faith.
For the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Date: August 26, 2014
1 Complainant provided trademark numbers and registration dates, but did not provide printouts or other direct evidence regarding the registrations at the Norwegian Intellectual Property Office. In the interest of expediting the proceeding (avoiding a request for supplemental information), the Panel confirmed the registration information at the website of the Norwegian Intellectual Property Office (panel visit to "www.patentstyret.no/en/", August 26, 2014).
2 As of August 23, 2014, the text-referenced domain name resolved to a parking page.
3 It might (or might not) be that the term could not be registered as a trademark in Germany because of its geographic significance.
4 Respondent's only use of the disputed domain name has been in connection with a link farm parking page that includes an offer to sell the disputed domain name. Subsequent to filing the Complaint, Complainant transmitted evidence that it had responded to the offer for sale, and that a broker had rejected the offer as too low. The Panel has not accepted that submission. But, if it had, this offer by Complainant and its rejection would only substantiate that Respondent was indeed prepared to sell the disputed domain name, which fact Respondent has not contested.
5 It could be that Respondent is working with some type of sophisticated algorithm or database search mechanism that somehow identified Complainant and its trademark as a target, but there is no evidence on the record to support such a conclusion.