Danbyg Ejendomme A/S v. Ib Hansen / guerciotti
Claim Number: FA1504001613867
Complainant is Danbyg Ejendomme A/S (“Complainant”), represented by Kasper Frahm of Plesner Law Firm, Denmark. Respondent is Ib Hansen / Guerciotti (“Respondent”), Denmark.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <danbyg.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.
Dennis A. Foster as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 10, 2015; the Forum received payment on April 10, 2015.
On April 13, 2015, DNC Holdings, Inc. confirmed by e-mail to the Forum that the <danbyg.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 April 16, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 6, 2015 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@danbyg.com. Also on April 16, 2015, 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 May 6, 2015.
On May 19, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dennis A. Foster as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
A. Complainant
- Complainant was founded in Denmark in 1970 and offers services in that country with respect to residential and commercial real estate, including the rental, administration and maintenance of buildings.
- Complainant operates its business under the DANBYG trademark, which is registered in Denmark. The mark is not a common Danish word.
- Complainant also conducts operations through its domain name, <danbyg.dk>, which was registered in 1996.
- The disputed domain name, <danbyg.com>, is identical to Complainant's DANBYG mark, because it wholly incorporates the mark without material addition. The inclusion of the generic top-level domain ("gTLD"), ".com", is immaterial in this consideration.
- Respondent has no rights or legitimate interests in the disputed domain name. Respondent is neither commonly known as the disputed domain name nor a licensee of Complainant. Furthermore, the disputed domain name resolves to a parked webpage with hyperlinks to both unrelated and competing websites. Also, Complainant had previously owned the registration for the disputed domain name from 2001 to 2003.
- The disputed domain name was registered and is being used in bad faith. Respondent has engaged in a pattern of bad faith registrations, is disrupting Complainant’s business, and is attempting to commercially profit from a likelihood of confusion between the disputed domain name and Complainant's mark. Moreover, Respondent has actual knowledge of Complainant’s trademark rights.
B. Respondent
- For retirement investment purposes, Respondent engages in the acquisition of dropped or deleted domain names. He prefers names that sound pleasing to him. The disputed domain name, <danbyg.com>, contains the common name, "Dan" (also useful as a shortened form of "Danmark"), and "Byg", a reference to grain and/or cereal in Danish.
- Respondent realizes no income from the disputed domain name through its current use, as the third-party website hosting company retains all the revenue. That company also determines what links are placed at the website connected to the disputed domain name.
- Respondent does not understand why Complainant dropped the disputed domain name in 2003, unless Complainant is simply lazy. Others have owned the disputed domain name from 2003 to 2014, and Complainant has waited too long in asserting its rights to the name given that Complainant registered its trademark in 2005. Furthermore, Respondent was unaware of that trademark registration until the filing of the Complaint.
A well-established Danish company, Complainant operates within Denmark in the spheres of real estate and building rental, administration and maintenance. Complainant has registrations with the Danish Patent and Trademark Office ("DPTO") for the mark, DANBYG (e.g., Reg. No. 200,504,218; registered October 28, 2005), which is used in connection with Complainant's business operations.
Respondent, a Danish resident, registered the disputed domain name, <danbyg.com>, on April 1, 2104. The name resolves to a website that provides links to the websites of third parties which offer goods and/or services that compete with or are unrelated to the offerings of Complainant.
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.
Complainant's presentation to the Panel of clear evidence (Exhibit 1) confirming trademark registration for the DANBYG mark with the DPTO satisfies the requirements of Policy ¶ 4(a)(i) regarding Complainant's possession of rights in that mark. See Sund og Baelt Holding A/S v. guerciotti, FA 1500937 (Nat. Arb. Forum July 2, 2013) ("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 also Andersen v. Direction Int'l, D2007-0605 (WIPO June 27, 2007) ("Complainant’s trademark is registered with the Danish Patent and Trademark Office and, therefore, is entitled to a presumption of validity.").
The Panel sees that the disputed domain name, <danbyg.com>, duplicates the DANBYG mark exactly, except for the inclusion of the gTLD, ".com". That inclusion is irrelevant for the purposes of establishing identity under Policy ¶ 4(a)(i), because all domain names are required to have a gTLD or similar suffix. Therefore, the Panel concludes that the disputed domain name is identical to Complainant's mark. See Luxair SA v. Puma Indust'l Co., Ltd, D2009-0162 (WIPO Mar. 31, 2009) (finding <luxair.com> to be identical to the LUXAIR mark); see also Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) ("The <vanderbilt.mobi> domain name is identical to Complainant’s VANDERBILT mark pursuant to Policy ¶ 4(a)(i), as the domain name wholly incorporates the registered mark and does not add anything except the generic top-level domain “.mobi,” which panels typically consider irrelevant to a Policy ¶ 4(a)(i) analysis."); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) ("The Panel finds...that the affixation of a gTLD to each domain name is irrelevant to a Policy ¶ 4(a)(i) analysis.").
As a result, the Panel finds that Complainant has established that the disputed domain name is identical to a trademark in which Complainant has rights.
Due to the inherent difficulty in proving a negative proposition, UDRP panels have commonly required a complainant to merely set forth a cursory prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name before shifting the burden onto that respondent to come forward with sufficient evidence to demonstrate otherwise. 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
In this case, Complainant has proven to the Panel's satisfaction that the disputed domain name is identical to the DANBYG mark. Also, Complainant has asserted clearly that it has not licensed to Respondent the right to use that mark in any manner. Moreover, there is no reason for the Panel to believe that Respondent, IB Hansen, or (presumably) his organization, guerciotti, have been commonly known as <danbyg.com>. Thus, in the Panel's view, Complainant has put forth an effective prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent contends that, for retirement investment purposes, he acquires domain names comprised of common words — with pleasing sounds. Unfortunately for this proceeding, Respondent has failed to present compelling evidence to the Panel that "danbyg" is a common word in Danish or, for that matter, in any other language. Instead, Respondent merely asserts that "dan" and "byg" can refer to terms used in Denmark: dan as a shortened proper name or an abbreviation of Danmark; and byg as a reference to grain and/or cereal. However, to the Panel's mind, that formulation does not constitute a single word, common or otherwise.
Even if the Panel were to give credence to the combination of definitions suggested by Respondent, he has failed completely to present evidence that the website connected to the disputed domain name relates to the meaning of either "dan", "byg" or the combined "danbyg" as those terms are articulated by him. Instead, Respondent concedes Complainant's assertion that that website provides links to third-parties websites that offer goods and/or services that either compete directly with or are unrelated to Complainant's offerings. Respondent asserts that he receives no revenue from such activity — the commercial gain being completely absorbed by the third-party website hosting entity — but the Panel remains unconvinced by that claim given the Panel's knowledge of numerous Policy cases where disputed domain name holders in similar circumstances share in so-called "click through" revenues generated by hosted websites. Consequently, said disputed domain name usage is found by the Panel to constitute neither a bona fide offering of goods or services per Policy ¶ 4(c)(i) nor use in a noncommercial or fair use manner per Policy ¶ 4(c)(iii). See Spark Networks PLC v. Wallshein, FA 1032203 (Nat. Arb. Forum Aug. 20, 2007); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the [disputed] domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Disney Enters. Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003).
In short, the Panel determines that Respondent has fallen far short in submitting evidence that might rebut Complainant's prima facie case.
Accordingly, the Panel finds that Complainant has demonstrated that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends, and Respondent concedes, that the disputed domain name resolves to a website that features links to third-party websites offering either goods or services that compete directly with those offered by Complainant or are totally unrelated to those so offered. Respondent explains that it receives no commercial gain from that employment of the name, but, as noted above, the Panel finds that explanation to be dubious. As the disputed domain name has been found above to be identical to Complainant's DANBYG mark, the Panel must conclude that Respondents actions are an attempt to attract internet traffic, and thereby commercial gain, through likely confusion as to the source, sponsorship, affiliation or endorsement of Respondent's website vis-a-vis Complainant's mark. So, in the Panel's view, Respondent's usage constitutes bad faith registration and use of the disputed domain name under the circumstance set forth in Policy ¶ 4(b)(iv). See Mine O'Mine, Inc. v. Satoshi Shimoshita, FA 1383247 (Nat. Arb. Forum May 20, 2011) (ruling that the respondent was probably profiting from the diversion of internet users from the complainant's to the respondent's website in violation of Policy ¶ 4(b)(iv)); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting internet users searching for the complainant to its own website and likely profiting by it).
Respondent alleges that the disputed domain name usage referred to above was dictated by the website hosting company that Respondent engaged to manage the name. However, the Panel agrees with many prior Policy panels who have found that a respondent bears the ultimate responsibility for how a disputed domain name is used and that third-party management — or mismanagement — of the name cannot deflect a finding of bad faith. See Villeroy & Boch AG v. Pingerna, D2007-1912 (WIPO Feb. 14, 2008) ("The Respondent is responsible for the content of any webpage hosted at the disputed domain name. It cannot evade this responsibility by means of its contractual relationship with the Registrar."); see also State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) ("As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately Respondent who is responsible for how its domain name is used.").
Finally, Respondent has countered the Complaint by making a claim that smacks of an argument invoking the doctrine of laches, i.e., Complainant has waited unfairly for more than a decade to reclaim a domain name that it owned in 2003. Not only does a consensus of prior UDRP panels hold that doctrine to be inapplicable to Policy cases, but, in this case, where Respondent has expended virtually no effort or capital in the development or operation of the website to which the disputed domain name resolves, the Panel is hard pressed to understand how Respondent's rights have be prejudiced by any such delay. Therefore, the Panel rejects this line of contention by Respondent as well. See Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) ("The Panel finds that the application of a laches defense is inappropriate under the Policy and that the time frame within which Complainant initiated the present proceedings is of no consequential value."); see also Weld Racing, Inc. Web Dev't Group Ltd., D2005-0357 (WIPO June 6, 2005) ("The Panel finds that such silence and lack of action from the Complainant does not disentitle the Complainant to a remedy under the Policy...").
Per the above, the Panel finds that Complainant has proved that the disputed domain name was registered and is being used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <danbyg.com> domain name be TRANSFERRED from Respondent to Complainant.
Dennis A. Foster, Panelist
Dated: June 2, 2015
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