WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bonnierförlagen AB v. Jacob Sonderdaag
Case No. DCO2021-0030
1. The Parties
The Complainant is Bonnierförlagen AB, Sweden, represented by Ports Group AB, Sweden.
The Respondent is Jacob Sonderdaag, Denmark.
2. The Domain Name and Registrar
The disputed domain name <albertbonniers.co> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2021. On April 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 28, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 29, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on April 29, 2021.
The Center verified that the Complaint together with 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 April 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 21, 2021.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on May 28, 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 one of Sweden’s leading publishing house. The Complainant is part of the Bonnier Group, a
Swedish media group of 175 companies operating in 16 countries, started in 1804 by Gerhard Bonnier in Copenhagen. The Bonnier book publishing companies in Sweden are part of the book publishing house Bonnierförlagen AB that includes Albert Bonniers Förlag, Wahlström & Widstrand, Forum, and Bonnier Carlsen. Gerhard Bonnier’s son, Albert Bonnier, created Albert Bonniers Förlag in Sweden. The parent company of the Bonnier Group is Albert Bonnier AB. As of 2019, the Bonnier Group generated net sales of roughly 20,406 billion Swedish crowns worldwide, and had 7,978 employees.
The Complainant owns several trademarks incorporating the trademark BONNIER, such as the BONNIER BOOKERY European Union Trade Mark (“EUTM”) registration No. 018313456, registered on February 5, 2021 and the BONNIER LÄRA EUTM registration No. 017470378, registered on February 27, 2018. Both trademarks were registered before the Domain Name.
The Complainant owns various domain names, such as <albertbonniers.se>, <bonnierförlagen.se>, <bonnier.com> and <albertbonniersförlag.se>.
The Domain Name was registered on March 29, 2021. At the time of filing the Complaint, the Domain Name did not resolve to an active webpage. At the time of drafting the decision, the Domain Name resolved to a webpage informing that the “This Account has been suspended”.
5. Parties’ Contentions
The Complainant argues the Domain Name is confusingly similar to the Complainant’s trademark, as it incorporates its trademark entirely with the addition of “Albert” that is a direct reference to Albert Bonnier, the founder of the Complainant.
The Complainant asserts that the Respondent is not affiliated with nor authorized by the Complainant in any way. There is no evidence that the Respondent is commonly known by the Domain Name. The Complainant argues that the Respondent cannot establish rights in the Domain Name as the Respondent 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. On the contrary, the Domain Name has resolved to an inactive page, but it also been used to create an email address from which the Respondent has sent at least one fraudulent email to an author purporting to be from a Literary Director at a subsidiary of the Complainant.
Finally, the Complainant submits that it is evident from the Respondent’s use of the Domain Name that the Respondent knew of the Complainant and its trademark when the Respondent registered the Domain Name. The Respondent’s use of the Domain Name to create an email account used for fraud is evidence of bad faith use. Moreover, the Respondent has not replied to the Complainant’s cease and desist letter, nor has it responded to the Complaint.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established rights in its trademark BONNIER. The test for confusing similarity involves a comparison between the trademark and the Domain Name. In this case, the Domain Name incorporates the Complainant’s trademark in its entirety, with the addition of the founder of the Complainant’s first name in front, and the letter “s” at the end. The additions do not prevent a finding of confusing similarity.
For the purposes of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the country code Top-Level Domain (“ccTLD”) “.co”.
The Panel finds that the Domain Name is confusingly similar 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 asserts that the Respondent is not affiliated with nor authorized by the Complainant in any way. There is no evidence suggesting that the Respondent has any rights or legitimate interests in the Domain Name. The Complainant has not granted any authorization to the Respondent. The Domain Name resolves to an error page. There is no evidence of bona fide use in the case file. The Respondent’s use of the Domain Name to set up an email address to send fraudulent emails is of course not bona fide. It is evidence of bad faith, see below.
Furthermore, the nature of the Domain Name, comprising the Complainant’s trademark and the term “albert”, carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 2.5.1.
The Panel finds that the Complainant has made out an unrebutted 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
Based on the Complainant’s submissions, the Panel is convinced that the Respondent knew of the Complainant’s trademark and its business when the Respondent registered the Domain Name.
The Panel notes that the Domain Name does not resolve to an active page. The non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding. See section 3.3 of the WIPO Overview 3.0.
Additionally, the Panel notes that the Domain Name has been used to create an email account used for fraud and this further evidence of bad faith. Furthermore, the Respondent has not replied to the Complainant’s contentions and used a privacy service when registering the Domain Name. These circumstances are further indications of bad faith.
The Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of the 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 <albertbonniers.co> be transferred to the Complainant.
Date: June 1, 2021