WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TIM Varumärke AB (Now Eniro Brands AB), Eniro AB, Eniro Norge AS (Now Gule Sider AS), Eniro Danmark A/S (Now Krak A/S) v. Alej Gonz / Alejandro Gonzalez, Offshore Racks
Case No. D2020-2666
1. The Parties
Complainant is TIM Varumärke AB (Now Eniro Brands AB), Sweden, Eniro AB, Eniro Norge AS (Now Gule Sider AS), Norway, Eniro Danmark A/S (Now Krak A/S), Denmark, represented by Baker & McKenzie Advokatbyrå KB, Sweden.
Respondent is Alej Gonz / Alejandro Gonzalez, Offshore Racks, Panama.
2. The Domain Name and Registrar
The disputed domain name <gula-sidorna.com> (the “Domain Name”) is registered with Nicenic International Group Co., Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2020. On October 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 15, 2020, 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 October 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 12, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 13, 2020.
The Center appointed Robert A. Badgley as the sole panelist in this matter on November 18, 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
Complainant owns the trademarks for “one of the oldest digital phone books and largest online databases for company information such as addresses and phone numbers in Sweden, Norway and Denmark.” Complainant holds various trademark registrations, including Swedish Reg. No. 195639 for GULA SIDORNA (registered on April 12, 1985).
The Domain Name was registered on June 9, 2020. According to Complainant, it has received customer complaints indicating that “Respondent is fraudulently attempting to receive payments” from Complainant’s customers. Complainant asserts that Respondent has never had a relationship with Complainant, and that Complainant has never authorized Respondent to use the GULA SIDORNA mark in a domain name or otherwise.
5. Parties’ Contentions
Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the trademark GULA SIDORNA through registration and use demonstrated in the record. The Panel also concludes that the Domain Name is confusingly similar to that mark, as the only difference between the mark and the Domain Name is an inconsequential hyphen in the latter.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent has not come forward in this proceeding to articulate or prove his bona fides vis-à-vis the Domain Name. On the record before the Panel, it is undisputed that Complainant has had no relationship with Respondent, and has never authorized Respondent to use its trademarks in a domain name or otherwise. It is also alleged, and not disputed by Respondent, that Respondent has been using the Domain Name in order to perpetrate a fraud upon Complainant’s customers by impersonating Complainant and seeking payment from the customers. The failure to deny such a serious charge invites the reasonable conclusion that the charge is probably true.
Complainant has established Policy paragraph 4(a)(ii).
C. Registered or Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent registered and used the Domain Name in bad faith. As noted above, it has been alleged, and not disputed, that Respondent has tried to pass himself off as Complainant, and has sought to extract fraudulent payments from Complainant’s actual customers. Such conduct is clear bad faith within the meaning of Policy paragraph 4(b)(iv), quoted above.
Complainant has established Policy paragraph 4(a)(iii).
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 <gula-sidorna.com> be transferred to Complainant.
Robert A. Badgley
Date: November 22, 2020