WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Björn Borg Brands AB v. Rita Shealey
Case No. D2017-0694
1. The Parties
Complainant is Björn Borg Brands AB of Stockholm, Sweden, represented by IPQ IP Specialists AB, Sweden.
Respondent is Rita Shealey, Springfield, Ohio, United States of America ("USA").
2. The Domain Name and Registrar
The disputed domain name <björnborgkengät.com> (the "Domain Name") is registered with PSI-USA, Inc. dba Domain Robot (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 6, 2017. On April 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 7, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on May 11, 2017.
The Center appointed Clive L. Elliott Q.C., as the sole panelist in this matter on May 31, 2017. 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
Complainant is a company engaged in the fashion industry, which owns and develops the Bjorn Borg brand, named after the former professional tennis player of the same name, and based in Stockholm, Sweden.
Complainant is the owner of the trademark BJÖRN BORG ("Complainant's trademark"), registered as word and device marks in several classes in many jurisdictions including the European Union ("EU") and Finland, e.g., EU trademark registration No. 009706731, registered on July 8, 2011.
According to WhoIs, the Domain Name was registered on November 25, 2016, and resolves to a website offering Complainant's goods or counterfeit goods.
5. Parties' Contentions
Complainant asserts it has rights in Complainant's trademark. It states that it has been registered as a domain name under several gTLDs and ccTLDs worldwide, among these being <bjornborg.com>. The BJÖRN BORG brand was established in the early 1990's and Complainant's products are sold in around 30 markets as well as through its web shop at "www.bjornborg.com". Complainant submits that Complainant's trademark was registered well before registration of the Domain Name.
Complainant contends that Complainant's trademark has become a well-established trademark within the area of fashion underwear and sports apparel, and as a result, the trademark and the products designated by Complainant's trademark are connected with good reputation and international recognition, and is a valuable asset to Complainant.
Complainant submits that the Domain Name is confusingly similar to Complainant's trademark, both aurally and visually, as it comprises the term "björnborg" in its entirety, with the addition of the word "kengät" which is "shoes" in Finnish. The addition of the word "kengät" will not have any impact on the overall impression of the dominant part of the Domain Name, "björnborg" and as Complainant's business is clothing and shoes the term "shoes" (in Finnish) strengthens the impression that the Domain Name is connected to Complainant. The addition of the generic Top-Level Domain ("gTLD") ".com" is non-distinctive and without legal significance when assessing the identity or similarity of the Domain Name.
Complainant has not found that Respondent has any registered trademarks or trade names corresponding to the Domain Name, nor that Respondent has been using the term "Björn Borg" in any way that would give any legitimate rights in the name and consequently Respondent may not claim any rights established by common usage.
Complainant advises that the Domain Name currently connects to an online web shop selling BJÖRN BORG clothing, and it states that it has not given any license or authorization to Respondent to use Complainant's trademark. Complainant claims that the website contains no disclaimer clarifying the lack of relationship between Respondent and Complainant, yet Complainant's trademark and logo are prominently displayed, as well as Complainant's copyright protected pictures, which Complainant submits gives Internet visitors the impression that the website is authorized by and connected to Complainant. The website is in Finnish and there is no company name listed under the contact section on the website, only an online form where visitors can fill out their contact information. Complainant suggests that Respondent is using the Domain Name to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website.
Complainant states that after it became aware of the website on March 21, 2016, it sent a cease and desist letter to Respondent, advising Respondent about the unauthorized use of Complainant's trademark within the Domain Name, requesting a voluntary transfer of the Domain Name and offering compensation for the expenses of registration and transfer fees (not exceeding out of pocket expenses). A reminder was sent on March 29, 29016 and no reply was received to either letters.
Complainant submits that the Domain Name has been registered and is being used in bad faith.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has established that it is the owner of Complainant's trademark. Complainant's trademark has become a well-established trademark within the area of fashion underwear and sports apparel, since the 1990's. Such rights date back to well before the date of registration of the Domain Name, which is 2016.
Complainant submits that the Domain Name is confusingly similar to Complainant's trademark, both aurally and visually. That is, on the basis that it comprises the term "björnborg" in its entirety, with the addition of the word "kengät". Complainant points out that "kengät" means "shoes" in Finnish. Complainant argues that addition of the word "kengät" will not have any impact on the overall impression of the dominant part of the name, "björnborg" and as Complainant's business is clothing and shoes the term "shoes" (in Finnish) strengthens the impression that the Domain Name is connected to Complainant. The latter part of the argument may be true in the case with Finnish speakers, but less so with those who do not speak Finnish. However, the contention that "kengät" will have little if any impact on the overall impression of the dominant part of the name, "björnborg" still has merit.
On this basis, it is found that:
a) Complainant has rights in respect of Complainant's trademark.
b) The Domain Name is not identical to but for the reasons set out above confusingly similar to Complainant's trademark.
Accordingly, the Panel is satisfied that the first element of the Policy has been met.
B. Rights or Legitimate Interests
Complainant contends that Respondent is using the Domain Name in connection with an online web shop selling BJÖRN BORG clothing. Complainant further contends that Complainant's trademark and logo are prominently displayed, as well as Complainant's images.
Complainant contends that Respondent has not demonstrated any rights or legitimate interests with respect to the Domain Name.
It is apparent that by virtue of its trademark rights and business interests in relation to fashion underwear and sports apparel (which are similar goods to shoes or footwear) that an unrelated entity using a very similar domain name is likely to lead to members of the public being confused and deceived.
It is reasonable to infer that Respondent's online web shop allows Respondent to generate revenue by using a deliberately similar version of Complainant's trademark and Complainant's goodwill or reputation to attract Internet traffic. These assertions are not disputed by Respondent.
The Panel is of the view that the Domain Name is being employed as a means of diverting Internet customers. In those circumstances, it is difficult to see how Respondent's conduct could be characterized as legitimate.
On this basis, it is found that Respondent has no rights or legitimate interests in the Domain Name.
The Panel is satisfied that the second element of the Policy has been met.
C. Registered and Used in Bad Faith
The Panel concludes that Respondent has intentionally attempted to attract for commercial gain Internet users to its websites or other online locations not related to Complainant and thereby creating a likelihood of confusion with Complainant and/or Complainant's trademark.
The Panel finds that Respondent registered and is using the Domain Name to take bad faith advantage of Internet users who may wish to purchase Complainant's fashion underwear and sports apparel and that these Internet users are likely to be attracted to Respondent's websites or other online presence and be misled as to their origins, sponsorship or association.
The Panel thus finds that the third limb of the Policy has been met.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <björnborgkengät.com> be transferred to Complainant.
Clive L. Elliott Q.C.
Date: June 14, 2017