WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aftenposten AS v. Whois Agent, Domain Protection Services, Inc. / Project Mayhem, Hans Jørgen Furfjord
Case No. D2020-0940
1. The Parties
The Complainant is Aftenposten AS, Norway, represented by Ports Group AB, Sweden.
The Respondent is Whois Agent, Domain Protection Services, Inc., United States of America / Project Mayhem, Hans Jørgen Furfjord, Norway.
2. The Domain Name and Registrar
The disputed domain name <aftenposten.lol> (the “Domain Name”) is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2020. On April 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 16, 2020, 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 April 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 20, 2020. On May 20, 2020, the Respondent sent an email to the Center, indicating its willingness to settle the dispute. On the same day, the Center sent an email regarding possible settlement to the Parties. On May 22, 2020, the Complainant requested for a suspension of the proceeding, and the proceeding was suspended until June 21, 2020 according to the Notification of Suspension. On June 25, 2020, the Complainant requested for an extension of the suspension, and the proceeding was further suspended until July 21, 2020. On July 20, 2020, the Center received the Respondent’s inquiry about reinstitution. On July 21, 2020, the Complainant requested for reinstitution of the proceeding, and the proceeding was reinstituted on July 22, 2020. The Center received another inquiry email from the Respondent on July 23, 2020.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on July 31, 2020. 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 privately held company based in Oslo, Norway, founded in 1860. The Complainant is one of Norway’s largest printed newspapers by circulation with an estimated 1.2 million readers and 740 employees.
The Complainant owns several trademark registrations for AFTENPOSTEN, inter alia, Norwegian trademark registrations No. 199900967, registered May 27, 1999, and No. 200407003, registered June 30, 2006; and the International trademark registration No. 833252, registered July 16, 2004. The Complainant is also the holder of the domain name <aftenposten.no> since November 15, 1999.
The Domain Name was registered on December 28, 2019. The Complainant has provided evidence that the Domain Name resolved to a pay-per-click (“PPC”) webpage, and later an error page, prior to filing of the Complaint. At the time of drafting the Decision, the Domain Name resolves to an error page.
5. Parties’ Contentions
The Complainant provides evidence of trademark registrations. The Complainant argues that the Domain Name is identical to the Complainant’s trademark as the Domain Name incorporates the Complainant’s Trademark in its entirety, with the addition of the new generic Top-Level Domain (“gTLD”) “.lol”.
The Complainant asserts that the Respondent is not authorized to use the Complainant’s trademark. The Respondent is not commonly known by the Domain Name. The Respondent cannot establish rights in the Domain Name as it has not made any use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. The Respondent has used the Domain Name to resolve to a PPC webpage, which is currently inactive. In the Respondent’s email reply to the cease and desist letter, the Respondent did not present any element that could lead to believe that the Respondent has rights or legitimate interests in the Domain Name.
The Complainant believes the Respondent was aware of the Complainant’s activity and trademark, being located in Norway. By registering the Complainant’s trademark in the Domain Name, the Respondent was seeking to create a likelihood of confusion with the trademark to attempt to attract Internet users on its website for commercial gain and capitalize on the Complainant’s trademark rights and reputation. Following the reception of a cease and desist letter sent on March 17, 2020, the PPC webpage was deactivated. At current, the Domain Name resolves to an inactive page, but this does not prevent a finding of bad faith, as the Complainant’s trademark has a strong reputation, there is no evidence of actual or contemplated good faith use by the Respondent, and the Respondent has taken active steps to conceal its true identity by activating the Registrar’s privacy service.
The Respondent did not formally reply to the Complainant’s contentions.
The Respondent sent an email to the Center on May 20, 2020, indicating an intention settle the present dispute and claiming, without providing evidence, that the disputed domain name was intended for purposes other than trading off of the Complainant’s trademark.
The Respondent sent two inquiry emails to the Center on July 21 and 23, 2020 regarding the reinstitution of the proceeding.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark AFTENPOSTEN.
The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name is identical to the Complainant’s trademark. For the purpose of assessing under paragraph 4(a)(i) of the Policy, the Panel may ignore the gTLD “.lol”; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.
The Panel finds that the Domain Name is identical to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register the Domain Name containing the Complainant’s trademark or otherwise make use of its mark. There is no evidence that the Respondent has registered the Domain Name as a trademark or acquired unregistered trademark rights. The Respondent’s email correspondence to the Center does not offer any documentation of demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services.
Furthermore, the nature of the disputed domain name, being identical to the Complainant’s trademark, carries a high risk of implied affiliation with the Complainant. See WIPO Overview 3.0, section 2.5.1.
The Panel finds that the Complainant has made out an unrebutted prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Domain Name is identical to the trademark AFTENPOSTEN. The Respondent was aware of the Complainant when it registered the Domain Name. The Panel agrees with the Complainant that the Respondent by registering the Complainant’s trademark in the Domain Name was seeking to create a likelihood of confusion with the trademark to attract Internet users on its website for commercial gain and capitalize on the Complainant’s trademark rights and reputation.
The fact that the Domain Name resolves to an inactive page, does not change this, as the Complainant’s trademark has a strong reputation, there is no evidence of any actual or contemplated good faith use by the Respondent, and the Respondent has taken active steps to conceal its true identity by activating the Registrar’s privacy service, see WIPO Overview 3.0, section 3.3.
For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of paragraph 4(a)(iii) 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 Domain Name <aftenposten.lol> be transferred to the Complainant.
Date: August 11, 2020