About Intellectual Property IP Training IP Outreach IP for… IP and... IP in... Patent & Technology Information Trademark Information Industrial Design Information Geographical Indication Information Plant Variety Information (UPOV) IP Laws, Treaties & Judgements IP Resources IP Reports Patent Protection Trademark Protection Industrial Design Protection Geographical Indication Protection Plant Variety Protection (UPOV) IP Dispute Resolution IP Office Business Solutions Paying for IP Services Negotiation & Decision-Making Development Cooperation Innovation Support Public-Private Partnerships The Organization Working with WIPO Accountability Patents Trademarks Industrial Designs Geographical Indications Copyright Trade Secrets WIPO Academy Workshops & Seminars World IP Day WIPO Magazine Raising Awareness Case Studies & Success Stories IP News WIPO Awards Business Universities Indigenous Peoples Judiciaries Genetic Resources, Traditional Knowledge and Traditional Cultural Expressions Economics Gender Equality Global Health Climate Change Competition Policy Sustainable Development Goals Enforcement Frontier Technologies Mobile Applications Sports Tourism PATENTSCOPE Patent Analytics International Patent Classification ARDI – Research for Innovation ASPI – Specialized Patent Information Global Brand Database Madrid Monitor Article 6ter Express Database Nice Classification Vienna Classification Global Design Database International Designs Bulletin Hague Express Database Locarno Classification Lisbon Express Database Global Brand Database for GIs PLUTO Plant Variety Database GENIE Database WIPO-Administered Treaties WIPO Lex - IP Laws, Treaties & Judgments WIPO Standards IP Statistics WIPO Pearl (Terminology) WIPO Publications Country IP Profiles WIPO Knowledge Center WIPO Technology Trends Global Innovation Index World Intellectual Property Report PCT – The International Patent System ePCT Budapest – The International Microorganism Deposit System Madrid – The International Trademark System eMadrid Article 6ter (armorial bearings, flags, state emblems) Hague – The International Design System eHague Lisbon – The International System of Appellations of Origin and Geographical Indications eLisbon UPOV PRISMA Mediation Arbitration Expert Determination Domain Name Disputes Centralized Access to Search and Examination (CASE) Digital Access Service (DAS) WIPO Pay Current Account at WIPO WIPO Assemblies Standing Committees Calendar of Meetings WIPO Official Documents Development Agenda Technical Assistance IP Training Institutions COVID-19 Support National IP Strategies Policy & Legislative Advice Cooperation Hub Technology and Innovation Support Centers (TISC) Technology Transfer Inventor Assistance Program WIPO GREEN WIPO's Pat-INFORMED Accessible Books Consortium WIPO for Creators WIPO ALERT Member States Observers Director General Activities by Unit External Offices Job Vacancies Procurement Results & Budget Financial Reporting Oversight

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Aalborg Portland Holding A/S v. WhoisGuard Protected, WhoisGuard, Inc. / Dave Vasos, Vasos Consulting

Case No. D2021-1266

1. The Parties

The Complainant is Aalborg Portland Holding A/S, Denmark, represented by Bech-Bruun Law Firm, Denmark.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Dave Vasos, Vasos Consulting, United States of America.

2. The Domain Name and Registrar

The disputed domain name <aalborgportlond.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2021 regarding the domain names <aalborgportlond.com> et al. On April 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain names. On April 23, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrants and contact information for the domain names. The Center sent an email communication to the Complainant on April 27, 2021 providing the multiple underlying registrants and contact information disclosed by the Registrar, and inviting the Complainant to amend and/or separate the Complaint. The Complainant filed an amended Complaint on May 2, 2021 regarding the disputed domain name <aalborgportlond.com>.

The Center verified that the amended 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 May 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 26, 2021.

The Center appointed Andrew F. Christie as the sole panelist in this matter on June 4, 2021. 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 well-established company with around 27% share of global trade in white cement. It was founded in 1889 and has produced white cement since 1930. The Complainant, which has been headquartered in Aalborg, Denmark since its foundation, has an operational presence in 18 countries, a commercial presence in 70 countries, and employs around 3,000 people worldwide.

The Complainant is the owner of Danish Registration No. VR 200504834 for the word trademark AALBORG PORTLAND (filed on November 29, 2005; registered on December 1, 2005).

The Complainant’s subsidiary company Aalborg Portland A/S is the registrant of the domain names <aalborgportland.dk> and <aalborgportlandholding.com>, each of which resolves to a website at which the Complainant promotes its products.

The disputed domain name was registered on November 10, 2020. The Complainant has provided a copy of an email sent to one of the Complainant’s customers, under the pretense of being from an employee of the Complainant, from an email address that uses the disputed domain name. This email requests the customer to confirm the date and value of the last invoice paid and to provide copies of due invoices. The Complainant appears to have reported this action to the Danish police in November 2020. On November 27, 2020, the Complainant contacted the Registrar requesting that the disputed domain name be blocked and locked down immediately.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to a trademark in which it has rights because: (i) the Complainant’s AALBORG PORTLAND trademark has a high degree of distinctiveness and is well known due to widespread international use; (ii) the disputed domain name wholly incorporates the first word of the Complainant’s AALBORG PORTLAND trademark, which is the name of the Danish city in which the Complainant was founded and is headquartered; (iii) the only difference between the disputed domain name and the Complainant’s trademark is the use of the letter “o” in place of the letter “a” in the second word in the Complainant’s trademark, which is a clear misspelling solely used to produce a similarity between the Complainant’s trademark and the disputed domain name; (iv) aurally and visually the disputed domain name is highly similar to the Complainant’s trademark; (v) it has been accepted by UDRP panels that an obvious or intentional misspelling does not avoid confusing similarity between a domain name and a trademark; and (vi) the generic Top-Level Domain (“gTLD”) of the disputed domain name is generally disregarded in evaluating confusing similarity.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name because: (i) the disputed domain name has been used for illegal activity (which has been reported to the police) that involves unauthorized access to confidential customer information, impersonations of key employees at the Complainant, and financial fraud; (ii) these fraudulent actions were carried out shortly after the disputed domain name was registered, which supports the view that the sole purpose of the registration was to conduct illegal activity; and (iii) the Respondent’s reason for creating the disputed domain name was to confuse the Complainant’s employees and customers by taking advantage of a difference between the Complainant’s trademark and the disputed domain name that is not easily recognizable.

The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the Respondent appears to have acquired the disputed domain name on November 10, 2020, which is many years after the Complainant had registered and used its trademark; (ii) the disputed domain name has been registered with only minor alterations, which raises the preliminary assumption that it has been registered for some illegitimate purpose; (iii) the Respondent has used the disputed domain name to pretend that it is the Complainant, and in particular to create false emails pretending that they are genuine emails coming from the Complainant; (iv) the disputed domain name is used intentionally to deceive the Complainant and its consumers into providing confidential information; and (v) as the disputed domain name was used to contact the Complainant and its customers it is unlikely that the Respondent is unaware of the Complainant’s AALBORG PORTLAND trademark.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

Once the gTLD “.com” is ignored (which is appropriate in this case), the disputed domain name consists of the whole of the Complainant’s registered word trademark AALBORG PORTLAND except that the letter “a” in “portland” is replaced by the letter “o”. It is likely that a significant proportion of Internet users will not notice the letter substitution, and so will read the disputed domain name as being the Complainant’s trademark. In any case, it is clear that this letter substitution is an intentional misspelling of the Complainant’s trademark. A misspelling does not prevent a finding of confusing similarity of the disputed domain name with the Complainant’s trademark. As provided in section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its AALBORG PORTLAND trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name was used in an email address for an email communication that purported to be from the Complainant’s staff requesting a copy of invoices. Given the confusing similarity of the disputed domain name to the Complainant’s trademark and the absence of any relationship between the Respondent and the Complainant, such a use of the disputed domain name is neither a bona fide use nor a legitimate noncommercial or fair use of the disputed domain name. The Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has not rebutted this. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The disputed domain name was registered many years after the Complainant first registered its AALBORG PORTLAND trademark. It is inconceivable that the Respondent registered the disputed domain name ignorant of the existence of the Complainant’s trademark, given that the trademark has been widely used and that the disputed domain name consists of the trademark with the mere substitution of one letter as part of an intentional misspelling. Furthermore, the evidence on the record provided by the Complainant indicates that the Respondent has used the disputed domain name for attempted commercial gain, by creating confusion in the minds of the public as to an association between the Complainant and the email sent by the Respondent from the address using the disputed domain name. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.

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, <aalborgportlond.com>, be transferred to the Complainant.

Andrew F. Christie
Sole Panelist
Date: June 18, 2021

https://www3.wipo.int/contact/en/area.jsp?area=arbitration https://www.wipo.int/pressroom/en/ https://www.wipo.int/tools/en/disclaim.html https://www.wipo.int/en/web/privacy-policy/ https://www.wipo.int/en/web/accessibility/ https://www.wipo.int/tools/en/sitemap.html https://www3.wipo.int/newsletters/en/ https://www.wipo.int/podcasts/en/ https://www.wipo.int/news/en/