Nordic Council of Ministers v. NorIce
Claim Number: FA0206000114650
Complainant is Nordic Council of Ministers, Copenhagen, DENMARK (“Complainant”) represented by Per Håkon Schmidt, of Plesner Svane Grønborg. Respondent is NorIce, Reykjavik, ICELAND (“Respondent”) represented by Eggert Johannesson.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hallonorden.org>, registered with DotRegistrar.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Robert T. Pfeuffer, Senior District Judge as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 20, 2002; the Forum received a hard copy of the Complaint on June 20, 2002.
On June 24, 2002, DotRegistrar.com confirmed by e-mail to the Forum that the domain name <hallonorden.org> is registered with DotRegistrar.com and that the Respondent is the current registrant of the name. DotRegistrar.com has verified that Respondent is bound by the DotRegistrar.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 2, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 23, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on July 22, 2002.
On August 5, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Robert T. Pfeuffer as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Identical or Confusingly Similar Policy ¶ 4(a)(i).
Complainant asserts that it has offered services under the HALLO NORDEN mark since 1998. It states that the services offered under the HALLO NORDEN mark consist of providing citizens of the Nordic countries (Denmark, Finland, Iceland, Norway and Sweden) with the necessary information relating to emigration between Nordic countries and helps them if they get caught in a bureaucratic bind due to the differences in the social and legal systems of the various countries. Complainant asserts that its services offered under the HALLO NORDEN mark have a “broad public interest.” It further states that it has distributed information material regarding the HALLO NORDEN mark in all Nordic countries. Complainant contends HALLO NORDEN related services are “known by the public in the Nordic countries and enjoys high recognition by citizens as well as governments.” Complainant concludes by arguing that it has common law rights in the HALLO NORDEN mark through use of the mark in commerce associated with these services.
Complainant states that its common law rights in the HALLO NORDEN mark “have been confirmed by registrations of the trademark in Iceland, Denmark and Sweden.” Although conceding that these registrations took place after Respondent registered the <hallonorden.org> domain name. Complainant maintains that its common law rights in said mark were established prior to Respondent’s registration of <hallonorden.org>.
Pleading further on the subject of the names being identical or confusingly similar, Complainant states unequivocally that Respondent’s domain name is identical to its HALLO NORDEN mark.
Rights and Legitimate Interests Policy ¶ 4(a)(ii).
Complainant asserts that Respondent uses the <hallonorden.org> domain name as a mere link to Respondent’s own websites, <norice.com> and <home.no.net>. At these websites, Respondent “provides information and assistance to Icelanders who want to move to Norway or Denmark.” The Complainant alleges that Respondent offers services in competition with Complainant, with the only difference being that Respondent charges for its services. Complainant further maintains that “Respondent is a company which has been conducting business under the name “NorIce” and that it has not done business under the name HALLONORDEN in offering its goods and services.
Registration and Bad Faith Policy ¶ 4(a)(iii).
Complainant alleges that Respondent’s <hallonorden.org> domain name, which was registered shortly after considerable publicity of Complainant’s HALLO NORDEN information services, is used in a manner that confuses consumers as to source identification. It also asserts that it has received “complaints and inquires from Nordic citizens” that Complainant’s services are not free of charge and that information requested has not been distributed, while these consumers were using Respondent’s services located at <hallonorden.org>. Complainant also argues that Respondent’s use of the domain name to provide similar paying services represents bad faith registration and use under Policy ¶ 4(b)(iv).
In its Response the Respondent has failed to address any of the items of evidence listed in Exhibits 1 through 10 nor offer any pertinent comments by way of explanation.
The Panel finds that in fact the name registered by Respondent is identical or confusingly similar under the Policy ¶ 4(a)(i). See McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000) (the ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the Complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the policy); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”); see also Fishtech v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the Complainant has common law rights in the mark FISHTECH which it has used since 1982); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law). Although Complainant has conceded that its registration of the trademark HALLO NORDEN in Iceland, Denmark, and Sweden took place after the Respondent had registered the HALLO NORDEN domain name, the Panel finds that the Complainant had established its common law rights in the mark HALLO NORDEN prior to Respondent’s registration.
After review, the Panel finds that Complainant’s argument is valid when it states that Respondent’s <hallonorden.org> domain name is identical to its HALLO NORDEN mark. It is found that this argument is valid because generic top-level domains, such as “.org,” are inconsequential when conducting a Policy ¶ 4(a)(i) “identical” analysis. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants"); see also Visit Am., Inc. v. Visit Am., FA 95093 (Nat. Arb. Forum Aug. 14, 2000) (finding that the “.com” is part of the Internet address and does not add source identity significance).
Rights and Legitimate Interests
The Panel finds that by using Complainant’s mark in a domain name and using the domain name in competition with the Complainant, Respondent has not established a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor does it represent a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate interests when Respondent is using a domain name identical to Complainant’s mark and is offering similar services); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “[I]t would be unconscionable to find a bona fide offering of services in a Respondent’s operation of web-site using a domain name which is confusingly similar to the Complainant’s mark and for the same business”); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that “unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services”).
The Panel finds that Respondent is not commonly known by HALLONORDEN or <hallonorden.org>, as it appears from the evidence not to be and therefore Respondent has no rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
Registration and Bad Faith
The Panel finds that Complainant has provided evidence of actual consumer confusion from customers seeking Complainant’s services but find themselves using Respondent’s similar services due to the confusingly similar <hallonorden.org> domain name. It is further found that Respondent’s use of the domain name to provide similar paying services represents bad faith registration and use. Policy ¶ 4(b)(iv). See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with the Complainant’s mark and offering the same chat services via his website as the Complainant).
Complainant has attached as evidence Exhibits 1 through 10 representing strong evidence supporting its contentions. This evidence is contained in the Exhibits as follows:
Exhibit 1 Copy of Complainant’s web-site
Exhibit 2 Examples of advertisements in newspapers
Exhibit 3 Material regarding seminars and meetings
Exhibit 4 Copies of articles in newspapers, magazines and on the Internet
Exhibit 5 Copies of information material used by Complainant
Exhibit 6 Copies of the Complainant’s trademark registrations
Exhibit 7 Copy of Respondent’s web-site
Exhibit 8 Copy of Respondent’s letter dated 18 January 2002
Exhibit 9 Information material about the Complainant
Exhibit 10 Copy of Complainant’s letter dated 11 April 2002
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
The Panel finds that the domain name registered by Respondent is in fact identical and/or confusingly similar to Complainant’s trademark.
Rights or Legitimate Interests
The Panel finds that the Respondent has no rights or legitimate interests in respect to the domain name.
Registration and Use in Bad Faith
The Panel finds that the domain name has been registered by Respondent and is being used in bad faith.
The Panel directs that the domain name <hallonorden.org> be transferred immediately to Complainant.
ROBERT T. PFEUFFER, Panelist
Dated: August 8, 2002
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