WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Samherji hf. v. Vista Print Technologies Ltd.
Case No. DCO2014-0030
1. The Parties
The Complainant is Samherji hf. of Akureyri, Iceland, represented by Lex Law Offices, Iceland.
The Respondent is Vista Print Technologies Ltd. of Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland ("United Kingdom").
2. The Domain Name and Registrar
The disputed domain name <icefresh.co> is registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 11, 2014. On November 11, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 14, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on November 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 9, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 11, 2014.
The Center appointed Jonas Gulliksson as the sole panelist in this matter on December 19, 2014. 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 the owner of the following Icelandic trademarks:
1. ICEFRESH, Icelandic trademark, trademark no. 581/2014, registered on September 15, 2014.
2. ICEFRESH SALMON, Icelandic trademark, trademark no. 122/2004, registered on February 2, 2004.
According to WhoIs, the disputed domain name was registered on October 13, 2014.
5. Parties' Contentions
The Complainant is currently the second biggest company in the Icelandic fish industry and was founded in 1983. The Complainant is controlling a significant volume of fishing quota and operating a powerful fleet of fishing vessels, such as freezer and fresh fish trawlers, multipurpose vessels, white fish factories and fish farming. The Complainant also runs extensive sales and marketing operations which are coordinated at the head office. The Complainant has also taken part in abroad operations across the world, including Germany (Icefresh GmbH), Poland, United Kingdom, the Faroe Islands, Africa, Canada, France and Spain.
The Complainant has domain names and websites containing the ICEFRESH trademark and name, such as <icefresh.is>, <icefresh.de> and <icefreshseafood.de>.
Identical or Confusingly Similar
The disputed domain name is confusingly similar to the ICEFRESH and ICEFRESH SALMON trademarks as the disputed domain name incorporates the word "icefresh" in its entirety.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in respect of the disputed domain name as the Respondent is not affiliated or related to the Complainant in any way, nor is the Respondent licensed or authorized to use the ICEFRESH trademark. No business relationship has ever occurred between the Complainant and the Respondent. The Respondent is not commonly known by the disputed domain name and has not acquired any trademark or service mark rights involving the "icefresh" name.
Registered and Used in Bad Faith
The Respondent has registered and is using the disputed domain name in bad faith as the Respondent without any doubts had knowledge of the well-known ICEFRESH trademark.
The Respondent is using the disputed domain name only in order to direct Internet users to a parking website containing the Respondent's logo and information that redirect Internet users to another affiliated website. In addition, the Respondent has created at least one email address using the disputed domain name purporting to be an employee of the Complainant, using the same local part as the correct email address. The email address involving ".co" has been used to contact at least one of the Complainant's customers, claiming that a "temporal change" has been made regarding the Complainant's email domain and that all communication instead should be directed to the Respondent's new email address. In addition thereof, attached to the email a falsified invoice was sent by the Respondent using another of the Complainant's trademarks.
The Respondent has also been found to have registered and used domain names in bad faith in four other cases under the Policy, which suggests a pattern of such conduct on the part of the Respondent.
Therefore, the Respondent has registered and is using the disputed domain name with the intention to attract Internet users to the website for commercial gain by creating a likelihood of confusion with the Complainant's trademarks.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant is the holder of the registered trademarks ICEFRESH and ICEFRESH SALMON. The disputed domain name consists of the Complainant's trademark ICEFRESH in its entirety and incorporates therefore the key element "icefresh" of the trademark ICEFRESH SALMON, with the addition of the country code Top-Level Domain ("ccTLD") ".co". According to well established consensus among UDRP panels, the ccTLD is generally not distinguishing.
In the light of what is stated above, the Panel finds the disputed domain name identical to the ICEFRESH trademark and confusingly similar to the ICEFRESH SALMON trademark. The first element of paragraph 4(a) of the Policy is thus fulfilled.
B. Rights or Legitimate Interests
In cases when a respondent fails to present a response, the complainant is still required to make a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition ("WIPO Overview, 2.0"), paragraph 2.1., and The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 and Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465. Further, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
The Complainant has asserted that no permission has been granted to the Respondent to register the disputed domain name. Moreover, the Complainant has stated that the Respondent has no rights or legitimate interests in the disputed domain name.
Having considered the submissions of the Complainant, and the absence of a formal Response from the Respondent, the Panel finds that the Respondent is not connected with the Complainant or authorized to use any of the Complainant's ICEFRESH and ICEFRESH SALMON trademarks in the disputed domain name. Nor does the Panel find any indications that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, or has rights or legitimate interests in any other way in the disputed domain name.
In the light of what is stated above, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant's allegations. Therefore, the Panel finds that the second element of the Policy is fulfilled.
C. Registered and Used in Bad Faith
The Panel notes that the Complainant's trademarks predate the registration of the disputed domain name.
The Complainant has cited four prior UDRP proceedings in which the Respondent was ordered to transfer domain names to a complainant or that the domain names at issue were cancelled. These adverse decisions reach a conclusion of bad faith by the Respondent under the Policy. The Panel notes however that the Respondent is not a competitor of the Complainant with a direct interest in preventing the Complainant from using its trademark in a domain name. Moreover, the Complainant is alleging that the website at the disputed domain name is containing the Respondent's logo and an advertising link to an affiliated website. Further, the Respondent has sent an email to one of the Complainant's customer with an attached falsified invoice and pretended to be the Complainant. As the Respondent has not rebutted the Complainant's allegations, the Panel finds that the Respondent has both engaged in a pattern of similar conducts and intentionally attempted to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant's ICEFRESH and ICEFRESH SALMON trademarks.
In light of these facts, the Panel finds that the disputed domain name has been both registered and is being used in bad faith.
The third and final element of the Policy is fulfilled.
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 <icefresh.co> be transferred to the Complainant.
Date: December 30, 2014