WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
S. Weisz-Uurwerken B. V v. Md Abdullah Al Noman
Case No. D2019-2556
1. The Parties
The Complainant is S. Weisz-Uurwerken B. V, Netherlands, represented by Van Doorne N.V., Netherlands.
The Respondent is Md Abdullah Al Noman, Bangladesh, represented by Ashfaq Ahmed, Bangladesh.
2. The Domain Names and Registrar
The disputed domain names <danishdesign.watch> and <danishdesignwatch.com> (the “Disputed Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2019. On October 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On October 18, 2019, the Registrar transmitted by email 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 October 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 17, 2019. The Respondent requested to extend the Response due date on October 30, 2019 by email. The Response Due Date was accordingly extended to November 21, 2019. The Response was filed with the Center on November 18, 2019.
The Center appointed John Swinson as the sole panelist in this matter on November 28, 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.
On December 10, 2019 the Complainant sent an email to the Center with further arguments but did not copy this communication to the Respondent. On December 16, 2019, the Respondent sent a fax to the Center in which Respondent commented on the Complainant’s supplemental filing dated December 9, 2019 and requested the Center to send the attachments of the Complainant’s supplemental fling to it. As a result, these materials were provided by the Center to the Respondent, and the Panel issued a Procedural Order giving the Respondent until December 26, 2019 to comment on the Complainant’s supplemental filing. Nothing further was received from the Respondent.
4. Factual Background
The Complainant is S. Weisz-Uurwerken B. V, a company incorporated in the Netherlands. The Complainant is part of the Weisz Group, a watch and jewelry manufacturing company. The Complainant holds the manufacturing and distribution rights for the watches under the name “Danish Design”.
The Complainant owns a number of registered trade marks for DANISH DESIGN, the earliest of which is Benelux registered trade mark number 0456976, registered on September 1, 1989 (“Trade Mark”).
The Complainant also owns a number of registered domain names which incorporate the Trade Mark, including <danishdesign.com>, <danishdesignwatches.com>, and <danishdesignwatches.eu>.
The Respondent is Md Abdullah Al Noman, an individual of Bangladesh. The Disputed Domain Names were registered on August 20, 2019. The Disputed Domain Names do not currently resolve to active websites.
5. Parties’ Contentions
The Complainant makes the following submissions.
Identical or confusingly similar
The Disputed Domain Names incorporate the entirety of the Trade Mark, with the addition of the word watch (either as part of the second level of the domain name or as a generic Top-Level Domain). The word “watch” does not avoid confusion, since it suggests that the website is related to the Complainant who sells Danish Design watches.
The Disputed Domain Names are confusingly similar to the Complainant’s Trade Mark.
Rights and legitimate interests
The Respondent has no rights or legitimate interest in the Disputed Domain Names because:
- There are no active websites associated with the Disputed Domain Names.
- There is no sign that the trading name Bangladesh Trading 605 is associated with a legitimate business. The Complainant has tried to find company certificates for Bangladesh Trading 605 and has not been able to do so.
- The Respondent is not commonly known by the Disputed Domain Names.
- The Complainant has no legal relationship with the Respondent.
Registered and used in bad faith
The Respondent contacted the Complainant almost immediately after registering the Disputed Domain Names. The Respondent registered the Disputed Domain Names on August 20, 2019. After approximately four hours, the Respondent informed the Complainant about the registrations and his desire to sell clocks under the sign Danish Design. It is highly likely that the Respondent knew of the Complainant when registering the Disputed Domain Names.
The Respondent indicated in an email to the Complainant that there are “interesting sales opportunities for the sign”. It is more than likely that the Respondent’s aim is to profit from the Disputed Domain Names by trading off the reputation of the Complainant.
The Respondent has threatened to have the Complainant’s trade marks cancelled if they do not allow for cooperation or co-existence.
The fact that the Respondent is not using the Disputed Domain Names does not preclude a finding of bad faith. The Respondent has registered and is using the Disputed Domain Name in bad faith.
The Respondent makes the following submissions.
Identical or confusingly similar
The Respondent admits that the Complainant has a Trade Mark which is similar to the Disputed Domain Names. However, the Respondent states there are no rights other than trademark rights. The Complainant does not seem to use the trade name “danish design”. And there is no such thing as the “right to a domain name”.
Rights and legitimate interests
The Respondent has a right to use the Disputed Domain Names as they consist of generic, descriptive words. Because the words “danish design” are descriptive, they are insufficient to be protected as a trade mark and must remain free for anyone to use. Danish design is particularly descriptive when it comes to the Complainant’s products which include wrist watches.
The Complainant’s trade mark is not sufficiently famous and there is no indication that it is well known. It is likely that the Benelux trade mark agency will cancel the Trade Mark. The sign “danish design” in combination with the sign “watch” can be meaningful for many types of products and services.
Registered and used in bad faith
The Respondent did not intend to sell the Disputed Domain Names. The Complainant is just trying to get hold of the Disputed Domain Names, which is an abuse of the UDRP system.
The Respondent intends to start a cancellation process of the Complainant’s Trade Mark. This is not done in bad faith. The Disputed Domain Names consist of a generic term that everybody is free to use. The Respondent is not trying to trade off the reputation of the Complainant.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) the Disputed Domain Names have been registered and are being used in bad faith.
A. Procedural Issues
Multiple Domain Names
The Complaint is in relation to two domain names. Paragraph 3(c) of the Rules states that “the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”. Paragraph 10(e) of the Rules gives the Panel discretion to decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and the Rules.
In this case, the Disputed Domain Names are both registered by Md Abdullah Al Noman. The Panel is satisfied that the Disputed Domain Names are under common control and that it is procedurally efficient to consolidate to the proceedings.
Supplemental filing by Complainant
On December 10, 2019 the Complainant sent an email to the Center.
Paragraph 10 of the Rules vests the Panel with the authority to determine the admissibility, relevance, materiality and weight of the evidence, and also to conduct the proceedings with due expedition. Paragraph 12 of the Rules provides that the Panel may request, in its sole discretion, further statements or documents from either of the Parties. There is no provision in the Rules for a party to file additional unsolicited submissions. Unsolicited supplemental filings are generally discouraged.
A party submitting an unsolicited supplemental filing should show some exceptional circumstances as to why it was unable to provide the information contained therein in its complaint or response (see section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel has reviewed the Complainant’s Supplemental Filing and decides to admit it in this instance, principally because the matters relate to events which occurred after the proceedings had closed.
The supplemental submission consisted of email correspondence between the Parties after the submission of the Complaint. The email correspondence includes:
- An email from the Respondent to the Complainant where the Respondent’s lawyer states “my client is open for consultation. For example, my client is prepared to not proceed with any intended sale of watches in the Benelux. But limit his focus to wall clocks. If there is no need for consultation, then I will fill the form for starting the Benelux cancellation."
- An email where from the Respondent to the Complainant offers the Disputed Domain Names for sale: “we suggest that your client takes over these names for a reasonable price on which both parties can agree.”
Supplemental filing by Respondent
On December 16, 2019 the Respondent sent a fax to the Center, commenting on the Complainant’s Supplemental Filing.
The supplemental submission, in summary asserted that the Complainant’s Benelux trade mark registration was invalid, that the Trade Mark consisted of generic, descriptive terms, and that the Trade Mark did not have force throughout the world. The Respondent also asserts that the Respondent intended to file cancellation proceedings in respect of the Complainant’s Benelux trade mark registration, but did not do so because the Complainant and the Respondent were in settlement discussions.
The Panel decides to admit the Respondent’s supplemental filing.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Names are identical or confusingly similar to the Trade Marks.
The Disputed Domain Names incorporate the entirety of the Trade Mark, both with the addition of the word “watch” (either as part of the second level or top level of the domain name). Where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark (see section 1.7 the WIPO Overview 3.0.
The addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) do not prevent a finding of confusing similarity under the first element (see section 1.8 of the WIPO Overview 3.0). In this case the term “watch” does not dispel confusing similarity.
The Disputed Domain Names are confusingly similar to the Trade Marks. The Complainant succeeds on the first element of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel considers the Complainant has made out a prima facie case. This finding is based on the following:
- The Respondent is not using (and there is no evidence that the Respondent has demonstrable preparations to use) the Disputed Domain Names in connection with a bona fide offering of goods or services. The Disputed Domain Names do not resolve to an active website.
- The Complainant has not authorised the Respondent to use the Trade Mark in the Disputed Domain Names.
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Names or has registered or common law trade mark rights in relation to this name.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Names without intent for commercial gain. There is no active website associated with the Disputed Domain Names.
The Respondent submits that the Respondent registered the Disputed Domain Names because of the meaning as a generic word and this constitutes legitimate rights in the Disputed Domain Names.
The Panel acknowledges that holding domain names consisting of dictionary words or common phrases can be bona fide under the Policy. The Panel is mindful that “Danish Design” comprises common dictionary words. However, the Respondent cannot rely solely on the fact the Disputed Domain Names are composed of dictionary words to ground the Respondent’s claim to rights or legitimate interests in it (see section 2.10 of the WIPO Overview 3.0).
In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trade mark rights (see Gibson, LLC v. Jeanette Valencia, WIPO Case No. D2010-0490). The Respondent had the opportunity to provide such evidence of preparations to use the Disputed Domain Name in connection with a Danish design company, but did not do so beyond statements in the Response. The Respondent did not provide any evidence or business plans or documents that reference “Danish Design”. The Respondent’s email suggests that he will use the Disputed Domain Name to sell clocks and possibly watches, but there is no reference to use in relation to Danish clocks and watches.
Preparations to use a domain name in connection with a bona fide offering of goods or services cannot be merely self-serving statements but should be inherently credible and supported by relevant pre-complaint evidence (see section 2.2 of the WIPO Overview 3.0). The Respondent has not provided any documentary evidence to substantiate these assertions.
Furthermore, the Complainant has provided evidence that the Trade Mark has developed a reputation and there is a strong likelihood of confusion between it and the Disputed Domain Names. As discussed in respect of the third element below, the Panel finds that it is more likely than not that the Respondent was aware of the Complainant’s rights when registering the Disputed Domain Names.
As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Names in bad faith.
The Complainant registered the Trade Mark in 1989. The Complainant’s registration of the Trade Mark predates the registration of the Disputed Domain Names by 20 years. The Panel is satisfied that the Complainant has built up a successful reputation in the Trade Mark. The Complainant has also operated a primary domain name incorporating the Trade Mark, <danishdesign.com>. The Complainant’s registration of this domain name significantly predates the registration of the Disputed Domain Name.
The Panel considers it unlikely that the Respondent applied to register the “.watch” gTLD without enquiring whether the “.com” gTLD was available. Further, the Complainant has provided evidence that Respondent emailed the Complainant within hours of registering the Disputed Domain Names. Therefore, the Panel considers it highly unlikely that the Respondent did not know of the Complainant when registering the Disputed Domain Names.
The Panel finds that the Disputed Domain Name was registered in bad faith.
The fact that the Disputed Domain Names are not being used does not preclude a finding of bad faith (see section 3.3 of WIPO Overview 3.0 and Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003).
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.
The particular circumstances of this case which lead to a conclusion of bad faith use are:
- The Trade Mark has developed a strong reputation and has been in existence since 1989.
- The Respondent emailed the Complainant as soon as the Respondent registered the Disputed Domain Names.
- The Respondent indicated in an email to the Complainant that they are “interesting sales opportunities for the sign”. It is more than likely that the Respondent’s aim is to profit from the Disputed Domain Names by trading off the reputation of the Complainant.
- The Respondent has offered to sell the Disputed Domain Names to the Complainant. The Panel acknowledges that an offer to sell a domain name would not be evidence of bad faith for purposes of the UDRP, in the event that a registrant has an independent right to the domain name (see section 3.1.1 of the WIPO Overview 3.0). However, here the Respondent does not have independent rights and it appears that the Respondent has attempted to profit from exploiting the Complainant’s registered Trade Mark.
- The Respondent has threatened to have the Complainant’s trade marks cancelled if they do not allow for cooperation or co-existence. There is no evidence that any cancellation proceedings have commenced.
In light of the above, the Panel finds that the Complainant has succeeded on the third element of the Policy.
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 Names <danishdesign.watch> and <danishdesignwatch.com> be transferred to the Complainant.
Date: January 6, 2020