WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Visma AS v. Domain Admin, Whois Privacy Corp.

Case No. D2019-1339

1. The Parties

The Complainant is Visma AS, Norway, represented internally.

The Respondent is Domain Admin, Whois Privacy Corp., Bahamas.

2. The Domain Name and Registrar

The disputed domain name <admincontrol.org> (the “Disputed Domain Name”) is registered with Internet Domain Service BS Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2019. On June 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 13, 2019, 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 June 14, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. That same day, the Center notified the Complainant of an administrative deficiency in its Complaint. On July 12, 2019, the Complainant filed an amendment to the Complaint.

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 July 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 9, 2019.

The Center appointed Nick. J Gardner as the sole panelist in this matter on September 3, 2019. 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 Norwegian Company. One part of its business (it appears to be a subsidiary company, Admincontrol AS) trades as “admincontrol” and offers online facilities for the secure sharing of documents and associated facilities such as collaborative working. It also provides related software apps under the same name. Admincontrol AS owns Norwegian trademark no. 281151, registered on March 26,2015 for the term ADMINCONTROL and European Union trademark no.1262546, registered on June 29, 2016 also for the term ADMINCONTROL (together the “ADMINCONTROL trademark”). The Complainant promotes its admincontrol business via a website linked to “admincontrol.com”.

The Disputed Domain Name was registered by the Respondent on September 14, 2018. It does not resolve to any active webpage.

5. Parties’ Contentions

A. Complainant

The Complainant says that the Disputed Domain Name is identical to the ADMINCONTROL trademark.

The Complainant says that the Respondent has no rights or legitimate interests in the term “admincontrol”.

The Complainant says that the Respondent’s registration and use of the Disputed Domain Name is in bad faith. It says it must have been chosen with knowledge of the Complainant’s ADMINCONTROL trademark and cannot legitimately be used. The Complainant also says that non-use is itself indicative of bad faith and refers to WIPO Case No.D2000-0005 as supporting its case. The Panel infers this reference is erroneous and intended to be to the well-known case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

B. Respondent

No Response has been filed.

6. Discussion and Findings

Preliminary Matters - No Response

The Panel notes that no communication has been received from the Respondent. However given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).

Preliminary Matters - Complainant Identity

It is unclear to the Panel why the Complaint is brought by Visma AS rather than its subsidiary, Admincontrol AS. However since the Respondent has not taken any issue with this and it appears that Admincontrol AS is a wholly owned subsidiary, the Panel will proceed on the basis that the term “Complainant” includes Admincontrol AS.

Substantive Matters

To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:

(i) the Disputed Domain Name is identical with 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

The Complainant has rights in the ADMINCONTROL trademark. It is well established that the generic Top‑Level Domain (“gTLD”), in this case “.org”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

Accordingly, the Panel finds that the Disputed Domain Name is identical to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:

(i) before any notice to the respondent of the dispute, 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 has been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the ADMINCONTROL trademark. The Complainant has prior rights in the ADMINCONTROL trademark which precede the Respondent’s acquisition of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003‑0455).

The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Disputed Domain Name. Accordingly, the Panel finds the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

The Panel infers it is more likely than not that the Respondent registered the Disputed Domain Name because it corresponded to the Complainant’s name and/or trademark and/or its <admincontrol.com> domain name. Whilst it would seem likely that the term “admincontrol” involves the conjoining of an abbreviation of the English word “administration” with the English word “control”, that conjoined term seems to the Panel to be distinctive and (apart from a Japanese company called “EESS admincontrol”) there is no evidence of anyone else using the term. The Panel infers the Respondent’s registration of the Disputed Domain Name was not coincidental. On the evidence provided it appears that the Respondent has made no use of the Disputed Domain Name in the time it has owned it. In the circumstances of this case the Panel adopts the approach set out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.3 as follows:

“Can the ‘passive holding’ or non-use of a domain name support a finding of bad faith?

From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding.

While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”

In the present case the Panel adopts this approach and notes in particular the Respondent’s failure to provide any evidence of actual or contemplated good-faith use.

Overall it does not generally matter that the Respondent has not as yet used the Disputed Domain Name. “Passive holding” can itself amount to bad faith registration and use where the holding involves a domain name deliberately chosen because of its association with the Complainant. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574; Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131; Westdev Limited v. Private Data, WIPO Case No. D2007-1903; Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393; and Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273.

Accordingly, and applying the principles in the above-noted UDRP decisions, the Panel finds that the third condition of paragraph 4(a) of the Policy has been fulfilled.

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 <admincontrol.org> be transferred to the Complainant.

Nick. J Gardner
Sole Panelist
Date: September 17, 2019