WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nilfisk A/S v. Whois Privacy Protection Service by onamae.com / Yuji Yoshimura

Case No. D2015-0849

1. The Parties

The Complainant is Nilfisk A/S of Br√łndby, Denmark, represented by Bech-Bruun Law Firm, Denmark.

The Respondent is Whois Privacy Protection Service by onamae.com of Tokyo, Japan / Yuji Yoshimura of Tokyo, Japan.

2. The Domain Name and Registrar

The disputed domain name <nilfisk-partner.com> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2015. On May 18, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 20, 2015, 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 May 21, 2015 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 May 22, 2015.

On May 21, 2015, the Center notified the Parties in both English and Japanese that the language of the Registration Agreement for the disputed domain name was Japanese. On May 22, 2015, the Complainant requested for English to be the language of the proceeding, to which the Respondent has not replied.

The Center verified that the Complaint together with 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 in both English and Japanese, and the proceeding commenced on May 27, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 16, 2015. In response to an email communication from the Respondent of May 30, 2015, the Complainant requested a suspension of the administrative proceeding for 30 days in order to explore a settlement on June 3, 2015. The administrative proceeding was suspended on June 3, 2015. On July 1, 2015 the Complainant requested re-institution of the proceeding. On the same date, the proceeding was reinstituted.

The updated due date for Response was July 14, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Parties about the commencement of panel appointment process on July 15, 2015.

The Center appointed Yukukazu Hanamizu as the sole panelist in this matter on July 23, 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 a long-standing manufacturer of commercial and professional cleaning machines and cleaning equipment. The Complainant is based in Denmark and has production facilities in Asia, Europe and the United States of America. The Complainant has sales companies in 44 countries across the world.

The Complainant primarily focuses on the commercial cleaning market, which includes institutional and industrial customers, as well as professional contract cleaners. The products are sold under a wide range of brands, including Nilfisk, Nilfisk-ALTO, Advance, Clarke, Viper and Nilfisk-CFM.

The Complainant’s trademark is registered in several jurisdictions, including Japan and the European Union.

- Japanese trademark NILFISK, number 4498023 registered on August 10, 2001.

- International trademark NILFISK, number 813249 registered on July 4, 2003.

- Community trademark NILFISK, number 002882504 registered on August 2, 2004.

Furthermore the Complainant owns and maintains a website promoting its products under the domain name <nilfisk.com> with registration date May 2, 1997.

The Complainant’s trademark is well-known, especially on the commercial cleaning market.

The disputed domain name was first registered on March 14, 2015.

5. Parties’ Contentions

A. Complainant

A.1 Identical or Confusingly Similar

The disputed domain name must clearly be considered to be confusingly similar with the Complainant’s well-known trademark NILFISK for the following reasons:

“Nilfisk” is an invented word with a high degree of inherent distinctiveness reinforced by widespread international use.

The Complainant’s trademark is fully incorporated in the disputed domain name with the addition of the suffix “-partner” which is merely a generic term.

The addition of the suffix “-partner” in the disputed domain name does not make any significant difference to the disputed domain name to distinguish it from the Complainant’s well-known trademark.

It has been established in previous UDRP decisions that the mere addition of a generic or descriptive term or any other non-distinctive term as a prefix or suffix to a trademark in a domain name is not sufficient to avoid confusing similarity between the domain name and the trademark.

It is well-established that the Top-Level Domain (“TLD”), in this case “.com”, should typically be disregarded when determining whether a trademark is identical or confusingly similar to a domain name.

Thus, neither the addition of the suffix “-partner”, nor the TLD “.com” detracts from the overall impression of the dominant part of the disputed domain name, the trademark NILFISK. Accordingly, customers might be convinced that the Respondent is the Complainant or that there is a connection or co-operation between the Respondent and the Complainant.

A.2 Rights or Legitimate Interests

The Complainant submits that the Respondent does not have rights or legitimate interests in respect of the disputed domain name.

There is no evidence to conclude that the Respondent owns any service marks or trademarks that reflect the disputed domain name and nothing suggests that the Respondent is commonly known by the name “Nilfisk”. Further, the Complainant’s registration and use of its trademarks for NILFISK predate the Respondent’s registration of the disputed domain name by several years.

The Respondent’s reasons for the registration of the disputed domain name must be considered to be use of the disputed domain name for attracting Internet users to the website under the disputed domain name for commercial gain by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website under the disputed domain name.

Although the website under the disputed domain name at first appears to be advertising or offering wellington boots for sale, it is not actually possible to buy anything from the website. When users click on a link trying to buy a pair users are redirected to another website at the domain name <hageji.jp>.

It has been established in previous UDRP decisions that attracting Internet users to a website and redirecting them to other websites advertising different products and services is not a bona fide offering of goods or services.

Thus, the website under the disputed domain name is not used for a bona fide offering of goods but is used as a landing page or pay-per-click page meant to redirect users to another website.

The NILFISK trademark does not seem to have any relation to the links on the Respondent’s website and there is no logical explanation for the Respondent having adopted the disputed domain name other than to attract viewers familiar with the Complainant’s trademark.

The mere registration of a domain name does not establish rights or legitimate interests in that name. Accordingly, there must be a fair or noncommercial use or bona fide offering of goods or services under the disputed domain name to establish rights or legitimate interest. No such use exists in this case.

The Complainant has not licensed or otherwise authorized the Respondent to use the Complainant’s NILFISK trademark, or to apply for or register any domain name incorporating the said trademark. There is no business relationship between the Complainant and the Respondent. Consequently, the disputed domain name is not used in connection with a bona fide offering of goods.

Accordingly, the Complainant has shown prima facie evidence of the absence of any rights or legitimate interests in the disputed domain name by the Respondent.

A.3 Registered and Used in Bad Faith

The Complainant submits that the disputed domain name has been registered and is being used in bad faith and that the Respondent is using the disputed domain name to attract Internet users to its website.

The Respondent appears to have acquired the disputed domain name on March 14, 2015. The Complainant’s trademark, on the other hand, has been established prior to the registration of the disputed domain name.

The Complainant’s trademark NILFISK is an invented word with a high degree of inherent distinctiveness and is well-known.

By using the Complainant’s trademark, the Respondent is likely to divert Internet traffic to the website under the disputed domain name and deceive Internet users to believe that the website is connected to the Complainant, and thereby potentially harm and tarnish the Complainant’s reputation and the Complainant’s trademark.

Furthermore, the Respondent used a privacy protection service to conceal its identity. Although UDRP panels have found that the use of a privacy or proxy registration service is not in itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith, since privacy services can be subject to manipulation by a registrant seeking to evade enforcement of legitimate third-party rights or to obstruct proceedings commenced under the Policy or elsewhere.

Based on the above, the registration and use of the disputed domain name has undoubtedly been made in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Language of Proceedings

Under paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise. In the present case, the language of the Registration Agreement is Japanese.

The Complainant submitted its Complaint in English and requested the language of the proceeding to be English. The Respondent has not submitted any comments in this regard despite having been given the opportunity. The Center notified the commencement of the administrative proceeding in both English and Japanese, indicating that it would accept a Response in Japanese. In these circumstances, and taking into account the Respondent’s default, the Panel concludes that, in accordance with paragraph 11(a) of the Rules, it is appropriate in this case to determine that the language of the proceeding be English.

Therefore, the Panel has decided to accept the Complainant’s filings in English and issue a decision in English.

B. Identical or Confusingly Similar

The Complainant has produced substantial evidence to demonstrate that it has registered trademark rights in the marks NILFISK in several jurisdictions including Japan and the European Union.

In assessing the degree of confusing similarity between the Complainant’s trademark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of confusing similarity between the Complainant’s trademark and the disputed domain name is to be considered from the perspective of the average consumer of the good or services concerned and in this case, the average consumer is the Internet users seeking to purchase or download information about the Complainant’s commercial or professional cleaning equipment.

The disputed domain name comprises (a) an exact reproduction of the Complainant’s trademark NILFISK, (b) the suffix “-partner”, and (c) the TLD suffix “.com”. The Complainant’s mark has been reproduced in its entirety in the disputed domain name. The Panel accepts the Complainant’s contention that the addition of the suffix “-partner” does not impart any significant difference to the disputed domain name to distinguish it from the Complainant’s well-known trademark. Therefore, the Panel finds that the addition of the suffix “-partner” to the word “nilfisk” does not serve to distinguish it from the Complainant’s NILFISK trademark. The Panel also accepts the Complainant’s contention that the gTLD suffix “.com” in the disputed domain name, in this case, is of no relevance in determining confusing similarity. The TLD, in this case “.com”, would typically be disregarded when determining whether a trademark is identical or confusingly similar to a domain name, on the grounds that this is required for technical reasons and is wholly generic.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the trademark NILFISK in which the Complainant has rights.

The Panel finds for the Complainant on the first part of the test.

C. Rights or Legitimate Interests

The burden of proof on this element lies with the Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests to a disputed domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions.

According to paragraph 4(c) of the Policy, the Respondent may establish its rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel finds that the Complainant has made out a prima facie showing and notes that the Respondent has not provided any evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name.

Based on the following reasons, the Panel also finds that the Respondent has no rights or legitimate interests in the disputed domain name:

1. There is no evidence to show that the Complainant has authorized, licensed or otherwise consented to use the disputed domain name by the Respondent;

2. There is no evidence that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name, or has been using the disputed domain name in connection with a bona fide offering of goods or services.

The Panel finds for the Complainant on the second part of the test.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website 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 website or location or of a product.

The Panel concludes that the circumstance referred to in paragraph 4(b)(iv) of the Policy is applicable for the following reasons:

First, the Panel finds that the Complainant enjoys a widespread reputation in its NILFISK trademark with regard to its commercial and professional cleaning machines and cleaning equipment. The Respondent registered the disputed domain name after the Complainant registered the trademark NILFISK in Japan and the European Union. Further, the Complainant’s trademark is an invented word with a high degree of inherent distinctiveness and is well-known. Consequently, in the absence of contrary evidence from the Respondent, the Panel finds that the NILFISK trademark would not be adopted other than for the purpose of creating an impression of an association with the Complainant. Thus, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name. However, the Respondent has chosen not to respond to the Complainant’s allegations in the Complaint and this leads the Panel to conclude that the disputed domain name was registered by the Respondent in bad faith with the intent to create an impression of an association with the Complainant and its products.

Second, the Complainant has also adduced evidence to prove that by using a confusingly similar disputed domain name, the Respondent is likely to divert Internet traffic to the website under the disputed domain name and deceive Internet users to believe the website is connected to the Complainant. Further, the Panel accepts the Complainant’s contention that the Respondent attempts to attract Internet users to its website which contains links to another website selling products that do not originate from the Complainant, thereby profiting from the goodwill connected to the Complainant and its well-known trademark. In the absence of evidence to the contrary and rebuttal from the Respondent, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.

The Panel finds for the Complainant on the third part of the test.

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 <nilfisk-partner.com> be transferred to the Complainant.

Yukukazu Hanamizu
Sole Panelist
Date: August 4, 2015