WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hatten Förlag AB v. Transure Enterprise Ltd, Host Master, Above.com Domain Privacy

Case No. D2014-2238

1. The Parties

The Complainant is Hatten Förlag AB, Danderyd, Sweden, represented by Domain and Intellectual Property Consultants, DIPCON AB, Sweden.

The Respondent is Transure Enterprise Ltd, Host Master, Above.com Domain Privacy, City Tortola, Tortola, Virgin Islands (British), United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <babblarna.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 December 22, 2014. On December 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. December 24, 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 December 24, 2014 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 December 29, 2014.

The Center verified that 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 7, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 30, 2015.

The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on February 25, 2015. 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 Hatten Förlag AB, a Swedish company. The Complainant is active in the business of language learning for children through the publishing of books, games, films and other materials on the topic of language training. The published materials by the Complainant are based on the cartoon characters called “Babblarna”. Also, such materials are used both by professionals and consumers.

The Complainant further submitted evidence that it is the owner of a Swedish (national) trademark and a European trademark for the BABBLARNA brand, in connection with a range of goods and services related notably to books, toys and games and language learning. The Complaint further indicates that the registered owner of both trademarks is the chair of the company's board, who licenses the trademarks to the Complainant.

The Complainant has, since 2007, also registered and is actively using the trademark BABBLARNA as domain name <babblarna.se>.

The Complainant sent via email a cease and desist letter to the Respond on October 13, 2014. The Respond has not responded to such letter.

The disputed domain name <babblarna.com> was registered on December 25, 2011.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

(a) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant contends that the disputed domain name comprises the term “babblarna”, which is identical to the mark BABBLARNA (the “Trademark”) of which the Complainant is and has been for many years the right holder in numerous countries.

The Complainant further contends that the term “babblarna” is made up and has therefore no meaning in any language.

Finally, the Complainant submits that the generic Top-Level Domain (gTLD) “.com” in the disputed domain name has no impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant when determining the confusing similarity.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant argues that the Respondent has no trademark rights or trade names corresponding to the disputed domain name and that it is not using “babblarna” in any way that would give it any legitimate rights.

The Complainant asserts that it has trademark rights for “babblarna” and no license or authorization was granted to the Respondent to use the Trademark in the disputed domain name or in any other manner.

The Complainant further contends that the Respondent is taking advantage of the Complainant's trademark in order to disrupt its business and take unfair advantage of the Complainant's reputation.

The Complainant further argues that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services, as according to the Complainant, the usage of the disputed domain name suggests that it was registered with the Trademark in mind and to commercially profit from misleading consumers searching for information about the Complainant's business and activities.

(c) The disputed domain name was registered and is being used in bad faith.

The Complainant submits that the disputed domain name was registered and used in bad faith by the Respondent.

Firstly, the Complainant submits that its national (Swedish) trademark was registered well before the Respondent registered the disputed domain name. Furthermore, the Complainant is using the Trademark at the domain name <babblarna.se> since 2004. The Complainant therefore contends that it is inconceivable that the Respondent was not aware of the Complainant’s rights in the trademark BABBLARNA when registering the disputed domain name.

Secondly, the Complainant argues that the Respondent seeks to take advantage of the Trademark in order to draw traffic to the disputed domain name. The Complainant submits that the disputed domain name contains a list of sponsored links, of which some relate to entertainment for children. Finally, the Complainant argues that there are circumstances indicating that the disputed domain name is for sale. The Complainant therefore contends that the disputed domain name was registered to commercially profit from the likelihood of confusion between the trademark and the disputed domain name, and thus that the latter was registered and used in bad faith by the Respondent.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Notwithstanding a respondent’s default, the complainant must nevertheless still establish each of the three elements required by paragraph 4(a) of the Policy (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition “WIPO Overview 2.0”, paragraph 2.1 and paragraph 4.6, and the relevant decisions cited therein). Nonetheless, the Panel shall decide this administrative proceeding on the basis of the Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and, in the absence of exceptional circumstances, draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.

As a result, asserted facts that are not unreasonable will be taken as true by this Panel.

Finally, in accordance with paragraph 4(a) of the Policy, in order to decide on the remedy sought by the Complainant, this Panel will examine whether each the following three elements are present:

(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the 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.

Consequently, this Panel shall further analyse the eventual concurrence of these three grounds in the present case.

A. Identical or Confusingly Similar

The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s).

First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to BABBLARNA (since well before the disputed domain name was registered).

Also, the Complainant has sufficiently demonstrated and evidenced that it has a lengthy use of its Trademark for its commercial activities, and in particular in relation to goods and services in the areas for children entertainment and language learning.

Secondly, the disputed domain name fully incorporates the Complainant’s distinctive BABBLARNA Trademark in which the Complainant has exclusive rights. This Panel finds, similarly to other UDRP panels, that it is established that where the domain name incorporates a complainant’s registered trademark, as the dominant element, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy (Aktiebolaget Electrolux v. Diana Virginina Rodríguez Cazorla, Govone Develops, S.L., WIPO Case No. D2014-0940; Nokia Corporation v. Jameela Seif, WIPO Case No. D2009-1665; Société Nationale des Chemins de Fer Français SNCF contre Assane Amadoun, WIPO Case No. D2012-0714).

Thirdly, this Panel finds, similarly to other UDRP panels, that the addition of the gTLD “.com” to the disputed domain name does not constitute an element so as to avoid confusing similarity for purposes of the Policy.

On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant’s BABBLARNA Trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:

“When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. 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 non-commercial 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”.

This Panel finds in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s trademarks has been granted to the Respondent. Thus, the Respondent has no rights in the term “babblarna”.

Examination of the website operating under the disputed domain name, as sufficiently evidenced by the Complainant, shows no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services.

Moreover, this Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the disputed domain name.

This Panel further finds that no evidence has been presented that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. In fact, this Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration of the disputed domain name, and finds after reviewing the website as evidenced by the Complainant, and as it appears following this Panel’s independent researches, that the Respondent had or should have had full knowledge of the trademark and that its only intention is for commercial gain by depriving the Complainants from a strategic domain name. In this respect, this Panel notes that the Complainant has registered and is using and exploiting the Swedish domain name <babblarna.se> since 2004, where only the gTLD is different from the disputed domain name.

For all the foregoing reasons, this Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:

“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:

(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 web site or location or of a product or service on your web site or location.”

Each of the four circumstances in paragraph 4(b) of the Policy, if found, would an instance of “registration and use of a domain name in bad faith”.

First of all, this Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration of the disputed domain name. In this respect, this Panel believes, after reviewing the website as evidenced by the Complainant, and in particular of the existence of the Complainant's website “babblarna.se”, that the Respondent must have known and been aware of the rights on the prior BABBLARNA trademark and the associated products and services at the time of the registration of the disputed domain name.

Furthermore, this Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s use of the disputed domain name.

In this respect, this Panel believes after reviewing the site at the disputed domain name and its content as evidenced by the Complainant that the Respondent registered and uses the disputed domain name to generate traffic and income through sponsored ads and to attract, for commercial gain, Internet users to the site, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its site.

Consequently, this Panel finds that the Respondent intentionally registered and used the disputed domain name for commercial gain and that the Respondent’s actual use of the disputed domain name is intended to mislead consumers and confuse them by making them believe that the website is associated, fostered or recommended by the Complainant. Such misleading behaviour is indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy, on the part of the Respondent.

Based on this Panel's own research of historical version of the disputed domain name available through the Internet Archive’s “Wayback Machine”, this Panel finds that the disputed domain name has, in the past, been offered for sale by the Respondent. Such attitude constitutes evidence of bad faith within the meaning of paragraph 4(b)(i) of the Policy, on the part of the Respondent. This Panel concludes that the disputed domain name was registered and is being used for the purpose of commercial sale (Wal-Mart Stores, Inc. v. Brad Tauer, WIPO Case No. D2000-1076; Intesa Sampaolo S.p.A. and Cassa di Risparmio di Terni e Narni S.p.A. v. Carit Inc., WIPO Case No. D2010-0338; PHD Group Pty Ltd, Barrett Property Group Pty Ltd., Barrett Property Group Western Region Pty Ltd., BPS Group Pty Ltd., BPG Access Pty Ltd., RSS Property Holdings Pty Ltd. V. Abedellatif Shatila, WIPO Case No. D2010-0812).

In light of the foregoing, this Panel finds that the disputed domain name was registered and used by the Respondent in bad faith under the Policy.

7. Decision

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, <babblarna.com> be transferred to the Complainant.

Benoit Van Asbroeck
Sole Panelist
Date: March 15, 2015