WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Royal Unibrew A/S v. Daniel Wallace

Case No. D2017-2519

1. The Parties

The Complainant is Royal Unibrew A/S of Faxe, Denmark, internally represented.

The Respondent is Daniel Wallace of Rotterdam, Netherlands.

2. The Domain Name and Registrar

The disputed domain name <royalunibrew-as.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2017. On December 19, 2017, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the disputed domain name. On December 20, 2017, the Registrar transmitted by e-mail to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on January 3, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 23, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 25, 2018.

The Center appointed Christian Pirker as the sole panelist in this matter on February 20, 2018. 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, Royal Unibrew A/S, is a company in the business of beverages acting both in Europe and in the international market.

The Complainant has provided evidence of trademark registrations for the ROYAL UNIBREW trademark (and including this term) in the European Union and Denmark, for various products and services.

The Complainant has also registered a domain name containing the words “royal unibrew” to represent the company and to offer its products on the Internet, including:

- <royalunibrew.com> registered on October 20, 2004.

The Respondent is located in the Netherlands.

The disputed domain name <royalunibrew-as.com> was registered on December 8, 2017 and is used as a platform promoting beverage wholesale among other products.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the ROYAL UNIBREW trademark has become distinctive and well-known globally and has enjoyed such distinctiveness since long prior to the date which the Respondent registered the disputed domain name.

The Complainant asserts that it is entitled to protection with the right to prevent any use of the ROYAL UNIBREW trademark or a confusingly similar representation of it in connection with any products or services.

The Complainant alleges that the disputed domain name creates a likelihood of confusion with the Complainant’s trademark due to an aural, visual and conceptual similarity between each other.

The Complainant asserts that it has not authorized the Respondent to register the disputed domain name, nor does it maintain any licensing relationship with the Respondent.

The Complainant asserts that the Respondent was familiar with the ROYAL UNIBREW trademark at the time it registered the disputed domain name. In particular, as the Complainant’s administrative data figure on the Respondent’s website, the Complainant considers that the Respondent is currently acting in bad faith by using the disputed domain name to attract customers to its website and through it, acquire their personal information and/or make consumers believe they are entering into business with the Complainant.

Accordingly, the Complainant alleged that the Respondent registered the disputed domain name in order to take advantage - for a commercial gain - from the reputation of the Complainant’s trademark.

The Complainant requests the Panel to issue a decision that the disputed domain name <royalunibrew‑as.com> be transferred to the Complainant.

B. Respondent

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

The Respondent did not give any response nor communicate any message at any time during the present proceedings.

6. Discussion and Findings

As no response was submitted in due time, the Respondent is in default pursuant to paragraphs 5(e) and 14 of the Rules, and paragraph 7(c) of the Supplemental Rules.

The effect of a default by the Respondent is that the Panel “shall proceed to a decision on the complaint” under paragraphs 5(e) and 14(a) of the Rules. Under paragraph 14(b) of the Rules, the Panel is empowered to draw such inferences from the Respondent’s default as it considers appropriate under the circumstances.

Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought:

(i) that the disputed domain name 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.

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”.

A. Identical or Confusingly Similar

The disputed domain name <royalunibrew-as.com> is made of three different parts: (1) the Complainant’s ROYAL UNIBREW trademark; (2) the suffix “-as”; (3) the Top-Level Domain “.com”.

The addition of a generic Top-Level Domain is without legal significance on the ground that it is insufficient to distinguish the disputed domain names from the Complainant’s trademark ROYAL UNIBREW (See, e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696).

The Panel will therefore focus its analysis with the first two parts of the disputed domain name (i.e., <royalunibrew-as>).

The addition of a generic and non-distinctive suffix in a domain name incorporating a trademark in its entirety does not negate a finding of confusing similarity to the trademark (see Birkenstock Orthopädie GmbH & Co. KG v. Chen Yanbing, WIPO Case No. D2010-0746; Chanel Inc. v. Dong Jiancai, WIPO Case No. D2010-0144; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7).

As stated by the Complainant, the term “-as” in the disputed domain name is a generic term referring to a Danish type of companies. This designation does not allow to distinguish between the disputed domain name and the ROYAL UNIBREW trademark.

The Panel notes that the elimination of spaces between the trademark’s words is of no significance in determining a confusing similarity (see Red Bull GmbH v. Emory Virgil, WIPO Case No. D2005-0381). Thus, the space that has been removed between “royal” and “unibrew” is also insufficient to avoid a risk of confusion.

Furthermore, the ROYAL UNIBREW trademark is entirely included in the disputed domain name in a way that points of similarity are weighed more heavily than points of difference especially in regard with the fact that the generic term “-as” does not diminish the confusing similarity (See Nintendo of America, Inc. v. Gray West International, WIPO Case No. D2000-1219).

For all these reasons, the disputed domain name <royalunibrew-as.com> is confusingly similar to the Complainant’s trademarks ROYAL UNIBREW and ROYAL UNIBREW A/S according to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy a respondent can establish its rights or legitimate interests in its domain name if it shows the presence of any of the following circumstances:

(i) before any notice to the respondent of the dispute, the respondent’s 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service trademark rights; or

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

It is for the Complainant to demonstrate that this condition is met prima facie. Provided that the Complainant is successful in demonstrating that the condition is met prima facie, it is for the Respondent to demonstrate its rights or legitimate interests. Accordingly, the burden of production shifts to the Respondent.

The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.

The Respondent failed to respond to the Complaint.

Moreover, there is no evidence in the file that the Respondent has rights or legitimate interests in the disputed domain name.

Taking into consideration that the criteria of the paragraph 4(a)(ii) of the Policy consists of furnishing evidence of the non-existence of a material fact, the Panel considers that the Complainant has fulfilled its obligations under this element. A prima facie analysis concludes that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The third element to be established by the Complainant is that the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy states the following four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the disputed domain name.

(i) Circumstances indicating that the Respondent has registered or the Respondent has 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 trademark, or to a competitor of that Complainant, for valuable consideration in excess of the Respondent 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 trademark from reflecting the trademark 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 its website or other on-line location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or its location.

Although the above scenarios are non-exclusive, the Respondent’s conduct enters the forth limb of the paragraph 4(c) of the Policy.

The Complainant alleges that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the websites, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the websites.

Some UDRP panels in certain default cases have accepted credible factual allegation from a complainant as true, the factors that make out illegitimacy of a respondent’s use or the presence or absence of bad faith (See, e.g., Microsoft Corporation v. Andrey Tumakov, WIPO Case No. D2002-1039; Playmouth State College v. Domains, Best Domain, WIPO Case No. D2002-0939).

Under the WIPO Overview 3.0 section 3.1.1: “(…) panels will find bad faith (when) the respondent’s likely knowledge of the complaint’s rights” (see also Lloyd Shoes GmbH v. Ji Shupeng, Case No. D2017-1799).

When the Respondent mentions in the website at the disputed domain name information about the Complainant, it is sufficient to prove that the Respondent is well aware of the Complainant’s activity (See Birkenstock Orthopädie GmbH & Co. KG v. Chen Yanbing, WIPO Case No. D2010-0746). On the Respondent’s website, the Respondent mentions its e-mail below the Complainant’s administrative head office datas, but both aren’t related. The Respondent was therefore likely to have been aware of the Complainant’s trademark and information at the time of registration of the disputed domain name and drafting of the website.

Moreover, the Complainant’s trademark registered on June 7, 2005, in the European Union No. 085469, predates the registration of the disputed domain name by at least ten years. On top of that, the Respondent’s market among other things the same products (beverages) as the Complainant.

In this way, it is likely that the Respondent registered the disputed domain name to appear associated or affiliated with the Complainant’s ROYAL UNIBREW trademark to intentionally confuse consumers and Internet users in order to take advantage of it, specially to obtain a commercial gain from the Complainant’s reputation (See The Prudential Assurance Company Limited v. Prudential Securities Limited, WIPO Case No. D2009-1561).

As the Respondent acts for a commercial gain, Respondent’s conduct indicates an act of opportunistic bad faith and unfair advantage using the Complainant’s reputed trademark (Nintendo of America, Inc. v. Gray West International, WIPO Case No. D2000-1219; Birkenstock Orthopädie GmbH & Co. KG v. Chen Yanbing, WIPO Case No. D2010-0746; Conair Corp. v. Pan Pin, Hong Kong Shunda International Co. Limited, WIPO Case No. D2014-1564).

Accordingly, the Panel is convinced that the disputed domain name has been registered and is being used in bad faith and that the Complainant has fulfilled the third element under paragraph 4(a) of 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 <royalunibrew-as.com> be transferred to the Complainant.

Christian Pirker
Sole Panelist
Date: March 6, 2018