WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Horten Advokatpartnerselskab v. Domain ID Shield Service CO., Limited / Krutikov Valeriy Nikolaevich
Case No. D2016-0205
1. The Parties
The Complainant is Horten Advokatpartnerselskab of Hellerup, Denmark, internally represented.
The Respondent is Domain ID Shield Service CO., Limited of Hong Kong, China / Krutikov Valeriy Nikolaevich of Neya, the Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <horten-canada.com> is registered with OnlineNic, Inc. d/b/a China‑Channel.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 2, 2016. On February 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 3, 2016, 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 3, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on February 5, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on February 9, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 29, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 1, 2016.
The Center appointed Zoltán Takács as the sole panelist in this matter on March 4, 2016. 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 language of this administrative proceeding is English, that being the language of the Registration Agreement.
4. Factual Background
The Complainant, founded by attorney Hans R. Horten in 1953, is one of the most recognized full-service law firms in Denmark. In addition to being a leading legal adviser to business clients and to the Danish public, the Complainant also has a strong national and international network.
The Complainant owns Danish Trademark Registration No. VR 2009 02631 for the mark HORTEN registered on September 4, 2009 for goods and services of Classes 16, 35, 36, 41 and 45 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (hereinafter: the "Nice Classification").
The Complainant also owns the domain name <horten.dk>, the registration date for this domain name being October 2, 1997.
The publicly available WhoIs indicates that the disputed domain name was registered on July 24, 2015.
At the time of rendering this administrative decision the website under the disputed domain name contained two advertisements in the Russian language. The Complainant has submitted in its evidence emails sent from the disputed domain name in which fraudulent offers of employment with the Complainant are made.
5. Parties' Contentions
The Complainant contends that the disputed domain name reflects its HORTEN trademark in its entirety and that the second element of the disputed domain name, "canada", only designates a geographical location.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii) or (iii) of the Policy.
The Complainant claims that the Respondent has registered and is using the disputed domain name in bad faith, since the disputed domain name has not only been registered to misuse the reputation of its HORTEN trademark, but as a deliberate act to misguide consumers into believing that the disputed domain name and emails sent from it are related to or originate from the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel's decision be made "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".
It has been a consensus view in UDRP panel decisions that a respondent's default does not automatically result in a decision in favor of the complainant. See paragraph 4.6 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that;
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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.
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.
It has been a consensus view among UDRP panels that if the complainant owns a registered trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant produced sufficient evidence that it holds registered rights in the trademark HORTEN, and for the purpose of this proceeding, the Panel finds that the Complainant's Danish Trademark Registration No. VR 2009 02631 for the mark HORTEN satisfies the requirement of having trademark rights for the purpose of the Policy.
Having determined that the Complainant has trademark rights in the HORTEN mark, the Panel next assesses whether the disputed domain name <horten-canada.com> is identical or confusingly similar to the HORTEN mark.
According to paragraph 1.2 of the WIPO Overview 2.0, the threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name to determine Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, negative terms in the domain name typically being regarded as insufficient to prevent threshold Internet user confusion. In addition, the applicable top-level suffix in the domain name would also be usually disregarded under the confusing similarity test, as it is a technical requirement of registration.
The only distinctive element of the disputed domain name <horten-canada.com>, other than, descriptive, geographical term "Canada" and the ".com" generic Top-Level Domain ("gTLD") suffix, is the inherently distinctive HORTEN trademark of the Complainant.
The Panel finds that the disputed domain name <horten-canada.com> is confusingly similar to the Complainant's HORTEN trademark and that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;
(ii) it has been commonly known by the domain name;
(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds well-established rights in the trademark HORTEN.
The Complainant has never authorized the Respondent to use its HORTEN trademark in any way, and the Complainant's prior rights in the HORTEN trademark long preceded the date of registration of the disputed domain name.
It has been a consensus view among UDRP panels, that although the burden of proof on the second element rests with the complainant, this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. If a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production then shifts to the respondent.
The Panel finds that the Complainant has made out a prima facie case.
The Respondent defaulted and failed to respond, and by doing so has failed to offer the Panel any evidence of the types set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant's prima facie case.
On the basis of all these facts and circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
"(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 website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
The Complainant presented extensive and undisputed evidence which convince the Panel that the Respondent has registered and is using the disputed domain name in bad faith.
Shortly after registration of the disputed domain name an individual with the alias "Lucas Hansen", claiming to be representing the Complainant, was making reference to the "www.horten.dk" website of the Complainant in relation to job postings in Canada on the "www.kijiji.ca" website and was using the email address "[…]@horten-canada.com", pretending to be associated with the Complainant.
In the view of the Panel this clearly shows that the Respondent knew of the HORTEN trademark of the Complainant when registering the disputed domain name.
On January 6, 2016, the Waterloo Regional Police Service in Waterloo, Canada sent the following email to the Complainant, with the subject line "Fraudent Kajiji Job Posting", in relation to the Waterloo Regional Police report WA16-003675:
"Hello, I wanted to inform you that someone is using your company name and website to recruit people over Kajiji to 'work for them'. The company asks the person to accept a bank transfer and then re direct that transfer using moneygram".
This individual with the alias "Lucas Hansen" continued sending emails from the email address "[…]@horten-canada.com" offering jobs at the Complainant even after having received written warning letters from the Complainant requesting him to cease using its HORTEN trademark in any way.
The HORTEN trademark of the Complainant here is evidently involved and in the view of the Panel it is clearly misused by the Respondent in a way which falls within the examples of evidence of bad faith set out in paragraph 4(b)(iv) of the Policy.
In the view of the Panel the Respondent's fraudulent scheme is a type of abusive domain name registration and use that the Policy is intended to prevent and the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.
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 <horten-canada.com> be transferred to the Complainant.
Date: March 17, 2016