WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rungstedlundfonden v. Easyspace Privacy / Karina Weicher, The Safari Fashion Company
Case No. D2016-1648
1. The Parties
The Complainant is Rungstedlundfonden of Rungsted Kyst, Denmark, represented by Bech-Bruun Law Firm, Denmark.
The Respondent is Easyspace Privacy of Glasgow, United Kingdom of Great Britain and Northern Ireland (“UK”) / Karina Weicher, The Safari Fashion Company of Cambridgeshire, UK, represented by Plesner Law Firm, Denmark.
2. The Domain Name and Registrar
The disputed domain name <blixen.com> is registered with Easyspace Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 15, 2016. On August 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 16, 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 August 23, 2016 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 amendment to the Complaint on August 23, 2016.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 14, 2016. The Response was filed with the Center on September 13, 2016.
The Center appointed Luca Barbero as the sole panelist in this matter on September 28, 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.
4. Factual Background
The Complainant is a Danish foundation which is currently responsible for the management of the artist’s rights of the Baroness Karen von Blixen-Finecke, also known professionally as Karen Blixen, a famous Danish author who is best known for her memoir Out of Africa, an account of her life while living in Kenya, and for one of her stories, Babette’s Feast, both of which have been adapted into Academy Award-winning motion pictures. She is also noted for her Seven Gothic Tales, particularly in Denmark.
The Complainant also manages the Karen Blixen museum, located in Rungsted Kyst, which was Karen Blixen’s residence.
The Complainant is the owner of several Danish trademark registrations incorporating KAREN BLIXEN, including Nos. VR200602331 for KAREN BLIXEN (figurative mark), registered on June 26, 2006, in classes 29, 30 and 31; VR20702759 for KAREN BLIXEN’s GAESTEBUD (word mark), registered on August 3, 2007, in classes 8, 20 and 21; VR200702758 for KAREN BLIXEN’S JUL (word mark), registered on August 3, 2007, in classes 8, 20 and 21; and VR200703343 for KAREN BLIXEN’S AFRIKA, registered on September 7, 2007, in classes 8, 20 and 21.
The Complainant is also the owner of the European Union trademark No. 005977632 for KAREN BLIXEN’S CRYSTAL, registered on March 25, 2008, in classes 8, 20 and 21.
The Complainant operates its web site at the domain name <blixen.dk>, which was registered on February 2, 1998 and is used by the Complainant to provide information about the Karen Blixen museum, including the museum’s café and shop, and the Karen Blixen’s life and works.
The disputed domain name <blixen.com> was registered on February 5, 2007, and is not pointed to an active web site at the time of the drafting of this decision.
5. Parties’ Contentions
The Complainant underlines that all the trademark registrations that it owns incorporate the surname of Karen Blixen and claims that the protection of the trademark KAREN BLIXEN is not limited to goods for which it is registered since the trademark KAREN BLIXEN is well-known, in light of Karen Blixen’s substantial impact on the society of her time because she portrayed the perspective of life from a modern woman and her text, publications and art and was highly admired and valued throughout the world.
The Complainant also states that it holds rights to the name Karen Blixen, since the author assigned all her rights to the Complainant before her death in 1962, as highlighted in the charter issued by His Majesty King Frederick IX and the Complainant’s by-laws.
The Complainant further states that it has been using the trademark KAREN BLIXEN as an unregistered trademark since at least 1962 in connection with goods and services related to the author Karen Blixen, as also highlighted on the Complainant’s web site “www.blixen.dk”. The Complainant also submits that an unregistered trademark is subject to the same protection as a registered trademark according to Section 3(1)(2) of the Danish Trademarks Act.
The Complainant contends that the disputed domain name is identical to the dominant part of the Complainant’s trademark rights, since the word “blixen” is identical to i) the Karen Blixen’s surname in which the Complainant holds rights and ii) the dominant part of the trademark registrations held by the Complainant. It also asserts that the fact that the Complainant’s trademark registrations do not cover class 25 is irrelevant since the trademark KAREN BLIXEN is well-known.
The Complainant states that the Respondent has no right to use the name Blixen, and has not been provided with any permission or license of use by the Complainant.
The Complainant informs the Panel that the Respondent contacted the Complainant concerning her clothing line “BLIXEN – exclusive safari & outdoor clothing” inspired by “Karen Blixen’s African universe” and proposing a collaboration between the parties. Therefore, the Complainant concludes that the Respondent has been aware of the Complainant’s rights all long, and that the Respondent registered the disputed domain name in bad faith with the intention of exploiting the advertising value of the author’s name.
The Complainant also states that it was in contact with the Respondent about the transfer of the disputed domain name but the Respondent was not willing to cancel or transfer it.
Therefore, the Complainant concludes that the Respondent’s registration and continuous use of the disputed domain name has been made in bad faith and is misleading to the public as it is capable of giving the wrongful impression that the Respondent’s intended clothing line is somehow associated with, or endorsed by, the Complainant.
The Respondent states that Karen Blixen is undoubtedly a famous author and, while many people know her name, KAREN BLIXEN is not a trademark as her name is not being used as a trademark. It also states that the author’s African universe has been an inspiration to many people, which can be derived inter alia from the fact that several companies are arranging trips to Africa under the name “Blixen”, such as the companies Bravo Tours, Blixen Tours, and Ree Park Safari.
The Respondent denies confusing similarity between the disputed domain name and the Complainant’s Danish trademark No. VR 2006 02331 since i) the Complainant’s trademark is a figurative mark illustrating a handwritten signature, where the wording “Karen Blixen” is not clearly visible and the figurative element is dominant; and ii) the Complainant’s trademark consists also of the prefixed name “Karen” and the classes of goods for which the trademark is protected (i.e. foodstuffs) are not similar to the goods for which the disputed domain name will be used (i.e. safari and outdoor clothing).
The Respondent also rebuts the Complainant’s contentions about confusing similarity of the disputed domain name with the Complainant’s word trademarks, since they are constituted of the sign BLIXEN in combination with the prefixed name “Karen” and another word (“Gæstebud”, “Jul”, and “Afrika”) and the classes of goods for which the trademarks are protected are not similar to the goods for which the disputed domain name will be used.
The Respondent further states that the Complainant cannot claim unregistered trademark rights on KAREN BLIXEN because the “artists’ rights” assigned by Karen Blixen to the Complainant consist only in the author’s rights and do not include trademark rights. The Respondent points out that the Panel would have to interpret the regulation of the Complainant’s foundation in order to establish what type of rights the author Karen Blixen did or did not assign to the Complainant, which is not within the competence of the Panel pursuant to the UDRP.
The Respondent contends that, even if the Panel chooses to interpret the regulation and finds that the “artists’ rights” comprise the right to the name “Karen Blixen”, the Complainant has not provided any evidence proving that the name should be considered an unregistered trademark, i.e. that the name has become a distinctive identifier associated with the Complainant’s goods and/or services, or a well-known trademark. In addition, the Respondent underlines the fact that the term BLIXEN is not solely associated with the Complainant is supported by the fact that several other companies use the term BLIXEN and have trademark rights where the term BLIXEN is part of the trademark.
The Respondent claims to have a legitimate interest in respect of the disputed domain name since it intends to use it in connection with a web shop from which it will be possible to buy exclusive safari and outdoor clothing bearing the trademark BLIXEN. The Respondent asserts that it has never denied to be inspired and fascinated by Karen Blixen’s African universe and highlights that it does not pretend to have a relationship with Karen Blixen or cooperation with the Complainant.
As to the Complainant’s allegations about the Respondent’s bad faith, the Respondent states that it did not register the disputed domain name for the purpose of selling, renting, or transferring it to any third party; that the classes of goods for which the Complainant’s trademarks are protected are not similar to the goods for which the disputed domain name will be used and, therefore, the disputed domain name was not registered to disrupt the Complainant’s business; that the Respondent’s use of a proxy registration service does not amount to bad faith since the Respondent disclosed its contact details in the communication addressed to the Complainant; and that the Respondent had no way of knowing that the Complainant would try to prevent the Respondent from referring to Karen Blixen when several other companies already do so.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that 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;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
As stated in paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), ownership of a trademark generally satisfies the threshold requirement of having trademark rights, the location of the trademark, its date of registration, and the goods and/or services for which it is registered being irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP.
In the case at hand, the Complainant has provided evidence of ownership of valid Danish and European Union trademark registrations reproducing the term BLIXEN in its entirety with the addition of the prefixed name “Karen” and the suffixes “Gæstebud” (“feast” in Danish), “Jul” (“Christmas” in Danish), and “Afrika” (“Africa” in Danish).
The Panel, therefore, finds that the disputed domain name is confusingly similar to the Complainant’s registered trademarks as the sign BLIXEN, constituting the disputed domain name, is the most distinctive element of the Complainant’s trademarks.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to registered trademarks in which it has established rights as prescribed by paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant is required to make a prima facie case that the Respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the Respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393; Accor v. Eren Atesmen, WIPO Case No. D2009-0701, and WIPO Overview 2.0, paragraph 2.1.
The Panel finds that the Complainant has made a prima facie case and that the Respondent has failed to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy.
According to the evidence on records, there is no relation between the Respondent and the Complainant and the Respondent has not obtained any authorization to use the Complainant’s trademarks or the disputed domain name.
In addition, there is also no indication before the Panel that the Respondent might be commonly known by the disputed domain name.
As highlighted by the documents submitted by the parties, the Respondent sent an email communication to the Complainant, prior to the filing of the Complaint, in which it proposed collaboration on its project consisting in the launch of “a new international luxury Safari and outdoor clothing company inspired by Karen Blixen’s universe”. The Respondent stated that its clothes would have been commercialized in several countries of the world under the trademark BLIXEN, providing “exciting opportunities” for the Complainant. The Respondent also stated that it was thinking to include selected literature of Karen Blixen in its web shop.
In this Panel’s view, the Respondent’s communication clearly highlights that the Respondent intended to use BLIXEN as a trademark and domain name to exploit the advertising value of the author’s name and derive profits from the sale of goods under the said trademark. In the absence of any authorization from the Complainant and in view of the likelihood of confusion between the disputed domain name and the Complainant’s trademarks, the Panel finds that the Respondent has not used, or made preparation to use, the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use prior to receiving notice of the dispute.
Therefore, the Panel finds that also the requirement prescribed by paragraph 4(a)(ii) of the Policy has been met.
C. Registered and Used in Bad Faith
The correspondence of the disputed domain name with the surname of the famous Danish author Karen Blixen and the core of the Complainant’s prior trademarks and the Respondent’s statements as to the purpose of its registration suggest that the Respondent was clearly aware of the Complainant’s trademark at the time of registration and registered the disputed domain name with a view to profiting from the likelihood of association with the Complainant and its trademark.
The Panel finds that the Respondent’s intended use of the disputed domain name in connection with a web shop selling clothing under the trademark BLIXEN as expressly illustrated by the Respondent to the Complainant would cause confusion with the Complainant’s trademarks as to the source, affiliation, sponsorship and endorsement of the Respondent’s web site and products.
Therefore, the Panel finds that the disputed domain name was registered and is being used in bad faith.
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 <blixen.com> be transferred to the Complainant.
Date: October 14, 2016