Sund og Baelt Holding A/S and A/S Storebaeltsforbindelsen v. guerciotti
Claim Number: FA1305001500937
Complainant is Sund og Baelt Holding A/S and A/S Storebaeltsforbindelsen (“Complainant”), represented by Kasper Frahm of Plesner Law Firm, Denmark. Respondent is guerciotti (“Respondent”), Denmark.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brobizz.com>, registered with DNC HOLDINGS, INC.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 21, 2013; the National Arbitration Forum received payment on May 21, 2013.
On May 21, 2013, DNC HOLDINGS, INC. confirmed by e-mail to the National Arbitration Forum that the <brobizz.com> domain name is registered with DNC HOLDINGS, INC. and that Respondent is the current registrant of the name. DNC HOLDINGS, INC. has verified that Respondent is bound by the DNC HOLDINGS, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 22, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 11, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@brobizz.com. Also on May 22, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on June 11, 2013.
On June 18, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Preliminary Issue: Multiple Complainants
There are two Complainants in this matter: Sund og Baelt Holding A/S and A/S Storebaeltsforbindelsen. Sund og Baelt Holding A/S is owned 100% by the government of Denmark, and was founded as an entity tasked with managing a ticket system to allow motorists to drive through certain bridges linking Denmark and Sweden, without the hassle of stopping at every tollbooth. A/S Storebaeltsforbindelsen was founded as a wholly-owned subsidiary of Sund og Baelt Holding A/S.
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
The Complaint is sufficient to establish a sufficient nexus or link between the Complainants. The Panel shall treat Complainants as a single entity in this proceeding and collectively refer to them as “Complainant.”
A. Complainant
i. Respondent has used the domain name for a “domain parking” website comprised only of advertisements for a number of websites. These websites often offer official BROBIZZ chips/tickets, along with competing and rival ticket services. Respondent has only used this domain name to earn money through third-party advertisement farms.
ii. Respondent has stopped using the website entirely, as it now does not resolve to any active page. Respondent made the domain name inactive at some point after Complainant contacted Respondent to express concerns over the presence of the BROBIZZ mark in this domain name.
i. Respondent is in fact disrupting and has disrupted the business of Complainant. Respondent’s use of the <brobizz.com> domain name to display competing hyperlinks can be interpreted as an attempt to disrupt the Complainant’s business operations under the BROBIZZ mark.
ii. Respondent sought to register and use this domain name to attempt to attract the attention of confused Internet users, who would assume such a domain name as <brobizz.com> would take them to official BROBIZZ websites, and not merely hyperlinks web-farms. Respondent’s website under the domain name <brobizz.com> consisted until recently of a number of advertisement links to various companies, including Complainant. Internet users notice that because Complainant’s products are advertised on the website, the website and its other hyperlinks must have some endorsement by Complainant. Thus Internet users click through these hyperlinks—meanwhile, Respondent accrues advertisement cash.
iii. Respondent’s domain name only makes sense in the Danish language, as the term “Bro” means “Bridge” and the term “Bizz” is a fabricated term used by Complainant. Respondent thus had to have known of Complainant, and Complainant’s rights in BROBIZZ. Communications between the parties illustrate that Respondent is aware of Complainant and its mark.
i. This doctrine does not apply as a defense in UDRP proceedings and even if the doctrine of laches does apply as a defense, the conditions for finding laches are not met in this case. Complainant was first aware of this registration in 2003 when communications between Complainant and Respondent resulted in Respondent demanding the equivalent of $21,000 USD for the domain name. Complainant, at that time, assumed BROBIZZ would be confined to Denmark, and thus determined attorney’s fees were not worth the benefit. However, Complainant renewed its request for this domain name in 2013 when it became clear that a European EasyGo cooperation would make the BROBIZZ business an integral part of trans-European highways and road systems. The UDRP Policy makes no mention to acquiescence of a party’s actions, nor is there any timeline or limitation mandated by the Policy. UDRP is primarily based in a contractual foundation, and not in equity. Because the relief granted under the doctrine of laches is equitable, it is inappropriate in this case because both the parties are residents of Denmark—a country ruled by the civil law system and not the common law. Even if laches did apply, there must be shown (1) unreasonable delay in commencing UDRP proceedings, and (2) Respondent relied on the delay to its detriment. The delay that is important does not start in 2003, but in 2012 when Complainant was made aware of the fact that the <brobizz.com> domain name would serve an integral role in its future in the European EasyGo system. Respondent never relied on any delay to its detriment—the domain name was never used for anything other than a parked website with hyperlink advertisements. It seems clear that Respondent suffered no detriment at all.
B. Respondent
1. General Contentions
ii. Respondent states it has not violated the UDRP.
iii. Respondent claims it is “Ib Hansen”
2. Doctrine of Laches
iv. Respondent states it was “first to the mill and first served” in registering this domain name, and did so legally.
v. Complainant, owned mostly by the Danish Government, has waited ten full years before coming to take the <brobizz.com> domain name.
vi. Complainant has shown gross and extreme passivity in pursuing this litigation.
Complainant uses the BROBIZZ mark in connection with an electronic apparatus used for the ticket-sale operations for a bridge from the Danish isle of Zealand to the country of Sweden. The BROBIZZ mark electronic chips allow the user to pass over the entirety of this bridge without the inconvenience of making stops at tollbooths, as the BROBIZZ products debit the user’s account directly rather than requiring them to pull over and pay at each toll. Complainant asserts that the BROBIZZ mark has since been used on both the Great Belt Bridge and the Oresund Bridge, with over 70% of the bridges’ 17.5 million vehicles per-year using BROBIZZ products. Complainant has obtained BROBIZZ trademark registrations with the Danish authorities. See DPTO Reg. No. VR 1998 00769 registered on Feb. 13, 1998.
Respondent has registered the <brobizz.com> domain name, which only adds the functionally requisite “.com” and is otherwise identical to the BROBIZZ mark.
Respondent registered the <brobizz.com> domain name on March 10, 2003.
Respondent has used the domain name for a “domain parking” website comprised only of advertisements for a number of websites. These websites often offer official BROBIZZ chips/tickets, along with competing and rival ticket services. Respondent has only used this domain name to earn money through third-party advertisement farms. Recently, Respondent stopped using the website entirely, as it now does not resolve to any active page.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
The Panel finds that Complainant’s registration of the BROBIZZ mark with the DPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
Complainant alleges that Respondent has registered the <brobizz.com> domain name, which only adds the functionally requisite “.com” and is otherwise identical to the BROBIZZ mark. Respondent’s addition of a generic top-level domain (“gTLD”) is inconsequential to a Policy ¶ 4(a)(i) analysis. See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that Respondent’s <brobizz.com> domain name is identical to Complainant’s BROBIZZ mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
The WHOIS information identifies “guerciotti” as the registrant of the disputed domain name. Respondent self-identifies as “Ib Hansen.” Therefore, the Panel finds that Respondent is not commonly known by the <brobizz.com> domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant asserts that Respondent has used the domain name for a “domain parking” website comprised only of advertisements for a number of websites.
Complainant argues that the first link on page 1 and the first three links on page 3 of Respondent’s website located at <brobizz.com> are advertisements for Complainants’ own BROBIZZ goods/services. Complainant contends that Respondent has only used the domain name for a parking site to earn money via pay-per-click third party advertising—often times through advertisements for Complainant’s competitors. Complainant argues that Respondent has now stopped using the website for said advertisements, and that this change may be attributable to the recent contact between the parties. Until recently, Respondent is used the disputed domain name to provide links to Complainant and to third-party competitors, and now the website is inactive. The Panel finds that Respondent is not a making a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the disputed domain name. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Complainant claims that Respondent is in fact disrupting and has disrupted the business of Complainant. Respondent’s website located at the <brobizz.com> domain name provided hyperlinks, some of which may directly compete with Complainant’s business. Respondent’s disputed domain name disrupts Complainant’s business. The Panel finds that Respondent has registered and is using the domain name in bad faith under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant alleges that Respondent’s registration and use of the domain name has been in an attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s trademark and the company name of one of its subsidiaries as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel concluded that “[r]espondent was using the disputed domain name to operate a website which featured links to competing and non-competing commercial websites from which [r]espondent presumably received referral fees. Such use for [r]espondent’s own commercial gain was evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).” Therefore, the Panel finds that Respondent has attempted to attract Internet users to its own website for commercial gain, evidencing bad faith use and registration under Policy ¶ 4(b)(iv).
Complainant argues that Respondent’s domain name only makes sense in the Danish language, as the term “Bro” means “Bridge” and the term “Bizz” is a fabricated term used by Complainant. Complainant contends that Respondent thus had to have known of Complainant, and Complainant’s rights in the BROBIZZ mark. Complainant also claims that communications between the parties illustrate Respondent’s awareness of Complainant and its mark. In a January 28, 2013 reply, Respondent acknowledges that he has contacted Complainant in the past. Respondent points out that he is “extremely annoyed over” Complainant and is not happy Complainant is waiting so long to obtain this domain name. These circumstances show that Respondent had actual knowledge of Complainant’s BROBIZZ mark at the time of Respondent’s registration of the <brobizz.com> domain name. See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
Doctrine of Laches
As Complainant waited ten years before bringing this proceeding, Respondent contends that this action is barred by laches.
Complainant argues that the doctrine of laches does not apply as a defense in UDRP proceedings and even if the doctrine of laches does apply as a defense, the conditions for finding laches are not met in this case. Complainant claims that it became aware of Respondent’s registration of the <brobizz.com> domain name in 2003 and Complainant therefore contacted Respondent with the intention of acquiring the domain name, but that Respondent demanded DKK 120,000 (approximately 21,000 USD) for the transfer of the domain name. Complainant says that it was neither able nor willing to purchase the domain name. Subsequently, Complainant sent a letter to Respondent on January 21, 2013, demanding the transfer of the domain name. Complainant argues that the UDRP Policy makes no mention to acquiescence of a party’s actions, nor is there any timeline or limitation mandated by the Policy. Complainant claims that because the relief granted under the doctrine of laches is equitable, it is inappropriate in this case because both parties are residents of Denmark—a country ruled by the civil law system and not the common law system from which laches arises. Complainant contends that even if laches applies, there must be a showing of (1) unreasonable delay in commencing UDRP proceedings, and (2) Respondent’s detrimental reliance on the delay. Complainant claims that the delay in this case does not start in 2003, but in 2012 when Complainant was made aware of the fact that the <brobizz.com> domain name would serve an integral role in its future in the European EasyGo system. Complainant further argues that Respondent never relied on any delay to its detriment—the domain name was never used for anything other than a parked website with hyperlink advertisements or an inactive website.
Where appropriate, laches is a valid defense in a domain name dispute. See N.Y. Times Co. v. Name Admin. Inc. (BVI), FA 1349045 (Nat. Arb. Forum November 17, 2010)(laches is “a valid defense in any domain dispute where the facts so warrant). When a complainant fails to act for a substantial time and Respondent develops a confusingly similar or identical domain name for its own legitimate use, laches bars complainant from using a respondent’s “detrimental reliance to its own unjust benefit.” Id.; Professional Rodeo Cowboys Association, Inc. v. Alternative Advertising Concepts, Inc. / Kenneth Forman, FA 1440736 (Nat. Arb. Forum June 26, 2012)(“the URDP only offers what amounts to equitable relief and there has been a growing recognition and willingness to expressly consider laches as an equitable defense in a proceeding where equitable relief is the only possible remedy”); see also Square Peg Interactive Inc. v. Naim Interactive Inc., FA 209572 (Nat. Arb. Forum Dec. 29, 2003) (“Although laches by itself is not a defense to a complaint brought under the Policy, Complainant's delay in seeking relief is relevant to a determination of whether Respondent has been able to build up legitimate rights in the Domain Name in the interim, and whether it is using the Domain name in bad faith.”); see also Interior Design Media Group, LLC v. P.A. Gordon, FA 1467034 (Nat. Arb. Forum December 19, 2012)(laches or delay is a factor in determining a claim of registration in bad faith). Therefore, the Panel shall consider whether the doctrine of laches bars this action.
Here, the Panel concludes that laches does not bar Complainant’s claim. Although the Panel concludes that Complainant’s reasons for the delay are not justifiable, Respondent has not relied on the delay to its detriment. Throughout, Respondent has never made a legitimate use of the domain name. Respondent used the domain name for a parked website with hyperlink advertisements and, only recently, an inactive website. Since Respondent has not made a legitimate use of the domain name, Respondent has failed to show detrimental reliance on Complainant’s delay. Therefore, the doctrine of laches does not bar Complainant’s claim.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brobizz.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 2, 2013
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