WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Viking Arm AS v. Withheld for Privacy Purposes Privacy Service Provided by Withheld for Privacy ehf / Franc Silva

Case No. D2021-3939

1. The Parties

The Complainant is Viking Arm AS, Norway, represented by Zacco Sweden AB, Sweden.

The Respondent is Withheld for Privacy Purposes Privacy Service Provided by Withheld for Privacy ehf, Iceland / Franc Silva, United States of America.

2. The Domain Name and Registrar

The disputed domain name, <viking-arms.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 November 24, 2021. On November 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 24, 2021, 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 November 25, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 25, 2021.

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 December 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 17, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 18, 2022.

The Center appointed David Stone as the sole panelist in this matter on January 28, 2022. 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 that was founded in 2018 and which produces precision hand-tools such as the Viking Arm lift jack. The Viking Arm is marketed in China, the European Union, the United States of America, and elsewhere.

The Complainant owns the following trade marks (the “Marks”):

- VIKING ARM: United States of America registration number 6544097, filed on December 22, 2020, and registered on November 2, 2021, in Nice class 8;
- VIKING ARM: European Union registration number 018269909, filed on July 7, 2020, and registered on November 12, 2020, in Nice class 8;
- VIKING ARM: International registration number 1605870, filed and registered on July 15, 2021, in Nice class 8; and
- VIKING ARM: Chinese registration number 52435976, filed on December 24, 2020, and registered on August 28, 2021, in Nice class 8.

In addition, the Complainant owns the following domain names:

- <vikingarm.com>, registered on September 14, 2018; and
- <viking-arm.com>, registered on September 14, 2018.

The first of these is associated with the Complainant’s official website, at “www.vikingarm.com”.

The disputed domain name was registered on April 27, 2021.

On October 28, 2021, the Complainant sent a cease-and-desist letter to the Respondent, advising the Respondent of the Complainant’s rights in the Marks and asking the Respondent to transfer the disputed domain name to the Complainant voluntarily. Despite also sending a reminder on November 9, 2021, the Complainant received no response from the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the Marks. In particular, VIKING ARM is present in the disputed domain name in its entirety, and neither the addition of the letter “s” nor the presence of a hyphen in the disputed domain name serves to eliminate the confusion that this causes. The Complainant believes that the public will therefore wrongly think that the disputed domain name is owned by or otherwise commercially associated with the Complainant.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. According to the registration information received from the registrar, and the information available at one time on the website associated with the disputed domain name (the Panel notes that this website has since been taken down), the Respondent is not known by the disputed domain name, and the Complainant can find no other evidence to suggest that it is. To the Complainant’s knowledge, the Respondent is not licensed or otherwise authorised to use the Marks, and is not an authorised representative of the Complainant’s products or services.

The website previously associated with the disputed domain name was used to advertise third-party products similar to those sold by the Complainant, and featured images owned and used by the Complainant to advertise its own products, in particular the Viking Arm product, on its own website. The Complainant asserts that this was done to generate traffic and income on the Respondent’s website and to exploit the Marks, and that this does not constitute a bona fide offering of goods or services. The use of the Marks was an attempt to attract the Complainant’s existing customers to the Respondent’s website and cannot be considered legitimate. Rather, the disputed domain name is being used illegitimately for a commercial purpose that risks diluting and damaging the Marks.

The Complainant contends that the Respondent registered and used the disputed domain name in bad faith. At least three of the Marks were filed and/or registered before the disputed domain name was registered. This, and the fact that the Respondent’s website was advertising competing products using images owned and used by the Complainant, indicates that the Respondent was fully aware of the Complainant’s rights. Furthermore, the Respondent ignored the cease-and-desist letter sent by the Complainant, in which the Complainant set out its rights. The Complainant’s view is therefore that the Respondent has intentionally attempted to attract Internet users to its own website for commercial gain, by creating a likelihood of confusion with the Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Complainant also argues that the Respondent has registered the disputed domain name for the purpose of disrupting the business of a competitor.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy sets out the three requirements that the Complainant must prove in order to succeed:

(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

On the evidence provided by the Complainant, the Panel is satisfied that the Complainant has rights in the Marks¹. In assessing the similarity between the disputed domain name and the Marks it is permissible to ignore the Top-Level Domain. In this case, the disputed domain name then differs from the Marks only in the presence in the disputed domain name of a hyphen and the letter “s”: “viking-arms” versus “VIKING ARM”. These minor differences do not prevent a finding of confusing similarity caused by the presence in the disputed domain name of the entire text of the Marks (see Rolls-Royce plc v. John Holt, WIPO Case No. D2017-1842 and Instagram, LLC v. Peter Malandrinos, WIPO Case No. D2021-1335).

The Panel concludes that the condition in paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the criteria that determine whether a domain name registrant has rights or legitimate interests in a domain name:

(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business or other organisation) has been commonly known by the disputed domain name, even if the Respondent has acquired no trade mark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trade mark or service mark at issue.

The Complainant makes out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent has provided no evidence to contradict it.

On the facts and contentions before the Panel, the Respondent is not commonly known by the disputed domain name, is not authorised to use the Complainant’s marks and cannot claim any right or interest in them by virtue of prior registration.

The evidence adduced by the Complainant demonstrates, to the satisfaction of the Panel, that the Respondent used the website associated with the disputed domain name to advertise and, presumably, sell products similar to those sold by the Complainant, and in doing so used at least one image from the Complainant’s website. Given the confusing similarity between the Marks and the disputed domain name, the Panel is satisfied that this use of the disputed domain name was intended to mislead Internet users familiar with the Complainant, and so generate revenue from sales of products that the buyer falsely believed to be produced by or in association with the Complainant.

The panel in Signode Industrial Group LLC v. 李忠贵 (li zhonggui), 佛山市禅城依利达包装器材有限公司 (foshanshichanchengyilidabaozhuangqicaiyouxiangongsi), WIPO Case No. D2020-0366, held that “there [can] be [no] legitimate interests in the use of a third party’s trade mark in order to lure customers to its business in order to sell its own competing products by relying on the trade mark”. Regardless of whether the competing products advertised by the Respondent were its own or those of a third party, the Panel therefore concludes that the condition in paragraph 4(a)(ii) of the Policy is satisfied with respect to this use of the disputed domain name.

As of the date of this decision, attempting to visit <viking-arms.com> results in the following warning: “Your connection is not private. Attackers might be trying to steal your information from viking-arms.com. …”. Bypassing this warning shows that the disputed domain name does not at present resolve to an active website. In the circumstances, that is (i) the illegitimate use described above; (ii) the Respondent’s obvious awareness of the Complainant’s rights; and (iii) the Respondent’s decision not to defend itself, the Panel concludes that the removal of the previously available website was an attempt by the Respondent to obscure the previous illegitimate use, and that the Respondent’s present passive holding of the disputed domain name does not confer rights or legitimate interests. The condition in paragraph 4(a)(ii) of the Policy is therefore satisfied also with respect to this use of the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out the non-exhaustive criteria for bad faith. Generally, for the purposes of the Policy, bad faith constitutes registration and use of a domain name in order to:

(i) sell, rent or transfer the domain name to the trade mark owner (or a competitor thereof) for a profit;
(ii) prevent the trade mark owner from registering its trade mark in a domain name, provided that the respondent is engaged in a pattern of such conduct;
(iii) disrupt the business of a competitor; or
(iv) divert Internet traffic for commercial gain.

Regarding the registration and apparent first use of the disputed domain name, the Panel holds that the evidence adduced by the Complainant, in combination with the Respondent’s failure to defend its behaviour, satisfies the condition in paragraph 4(a)(iii) of the Policy. The similarity between the Marks and the disputed domain name, the similarity between the products advertised on the associated website (when available) and the products marketed by the Complainant, and the Respondent’s use of an image seemingly taken from the Complainant’s website make it apparent that the Respondent registered the disputed domain name with knowledge of the Marks and the Complainant’s business, with the intent to divert Internet traffic for commercial gain. Screenshots of the Respondent’s website show that the Respondent then acted on this intent.

Passive holding does not necessarily constitute use in bad faith. However, in the circumstances here, as itemised in the final paragraph of section 6B above, the Panel concludes that the Respondent removed the website to which the disputed domain name previously resolved in order to obscure its earlier bad-faith use. The Panel therefore holds the Respondent’s present passive holding of the disputed domain name also to be bad-faith use, satisfying paragraph 4(a)(iii) of the Policy.

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, <viking-arms.com>, be transferred to the Complainant.

David Stone
Sole Panelist
Date: February 7, 2022

¹ The Panel notes that International registration number 1605870 was filed and registered on July 15, 2021, i.e., filed after the disputed domain name was registered. While the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed. See section 1.1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).