Advokatfirmaet Danielsen & Co AS v. Steinar Vigdel Kolnes / Solar Harvest Ltd
Claim Number: FA2012001925950
Complainant is Advokatfirmaet Danielsen & Co AS (“Complainant”), represented by Håkon Mathias Sterling Danielsen, Norway. Respondent is Steinar Vigdel Kolnes / Solar Harvest Ltd (“Respondent”), Ghana.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <advokat-danielsen.com>, registered with TierraNet Inc. d/b/a DomainDiscover.
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 22, 2020. The Forum received payment on December 22, 2020.
On December 22, 2020, TierraNet Inc. d/b/a DomainDiscover confirmed by e-mail to the Forum that the <advokat-danielsen.com> domain name is registered with TierraNet Inc. d/b/a DomainDiscover and that Respondent is the current registrant of the name. TierraNet Inc. d/b/a DomainDiscover has verified that Respondent is bound by the TierraNet Inc. d/b/a DomainDiscover 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 December 23, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 12, 2021 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@advokat-danielsen.com. Also on December 23, 2020, 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.
No formal Response was received. An informal Response was received on December 29, 2020.
On January 18, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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
The complaint is based on the service mark Advokatfirmaet Danielsen & Co which has been registered in the Norwegian official register of companies since 1996. Respondent’s domain name <advokat-danielsen.com> is associated with the original website “www.advokat-danielsen.no” in which the Complainant has had rights since February 17th 2000.
The <advokat-danielsen.com> domain name is confusingly similar to Complainant’s mark. Respondent registered and is using the domain name in order to create a likelihood of confusion with the source of the domain name so as to harass and spread untrue allegations about Complainant. Hence Respondent lacks rights or legitimate interests in the domain name and registered and is using the domain name in bad faith.
B. Respondent
Respondent says Per Danielsen is a well-known criminal lawyer in Norway. It is totally baseless to claim that “The domain name advokat-danielsen.com is associated with the original website advokat-danielsen.no which the Complaint has had rights since February 17th 2000”.
There is no registered trademark for advokat-danielsen nor for Advokatfirmaet
Danielsen AS which can be used to claim ownership of the domain name <advokat-danielsen.com>.
The word “advokat” means “lawyer” in English and is a common word. “Danielsen”
is also a common surname, and there are 5454 persons in Norway, including
several other lawyers, who have this very same surname. Even in Denmark, there is
at least one Advokat Danielsen.
My
right to expression is rooted in the Universal Declaration of Human Rights
article 19, declared by the United Nations: “Everyone has the right to freedom
of opinion and expression; this right includes freedom to hold opinions without
interference and to seek, receive and impart information and ideas through any
media and regardless of frontiers”. Since I am a Norwegian citizen, I
also enjoy Article 10 of the European Convention
on Human Rights and my freedom of speech under the Norwegian constitution §
100.
If lawyer Danielsen thinks that I have overthrown my rights of free expression,
he is free to take me to the Norwegian court. But he has not done so because we
both know that what I share with the public is the actual truth. Since there is
no ruling against me in that respect, no one can remove Solar Harvest AS’s
right to the lawfully acquired domain name <advokat-danielsen.com>.
Any intervention on the domain name will remove my mouthpiece will become a direct
attack on my freedom of expression.
The website at <advokat-danielsen.com> is not a commercial site.
It is an information site where I share my experience with Per and Håkon
Danielsen.
There is absolutely no chance for any visitor to be misled. I don’t make money
on any advertising or anything else. It is just an outlay and cost.
Complainant has failed to establish all the elements entitling it to relief.
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 has shown that the name Advokatfirmaet Danielsen & Co was registered with the Norwegian official register of companies as a sole proprietorship on November 1, 1996, No. 975 992 195, and that the name Advokatfirmaet Danielsen & Co AS was registered as a limited liability company on November 29, 2001, No. 983 952 232.
Registration as an entity on the Norwegian official register of companies does not amount to registration of a trade or service mark and Complainant has provided no evidence of registration of either name as a trade or service mark.
As to whether the name Advokatfirmaet Danielsen & Co has, through use, become a distinctive identifier of goods or services associated with Complainant, the WIPO Jurisprudential Overview 3.0 provides at ¶1.3:
“What does a complainant need to show to successfully assert unregistered or common law trademark rights?
To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys…
Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning…”
¶1.5 provides:
“Can a complainant show UDRP-relevant rights in a personal name?
1.5.2 The UDRP does not explicitly provide standing for personal names which are not registered or otherwise protected as trademarks. In situations however where a personal name is being used as a trademark-like identifier in trade or commerce, the complainant may be able to establish unregistered or common law rights in that name for purposes of standing to file a UDRP case where the name in question is used in commerce as a distinctive identifier of the complainant’s goods or services.
Merely having a famous name (such as a businessperson or cultural leader who has not demonstrated use of their personal name in a trademark/source-identifying sense), or making broad unsupported assertions regarding the use of such name in trade or commerce, would not likely demonstrate unregistered or common law rights for purposes of standing to file a UDRP complaint.”
In addition to the registrations with the Norwegian official register of companies mentioned above, on February 17, 2000 Complainant registered the domain name <advokat-danielsen.no>. It resolves to a website promoting the law services of Advokatfirmaet Danielsen & Co AS and depicting lawyer Per Danielsen. The fact of that domain name registration in 2000 and the nature of its current use are insufficient to establish that the name Advokatfirmaet Danielsen & Co has, through use, become a distinctive identifier which consumers associate with Complainant’s services. Complainant has offered no other evidence which could support of any such finding.
Accordingly, the Panel finds that Complainant has failed to establish that it has rights in a trade or service mark.
Under these circumstances the Complaint must fail and it is unnecessary and inappropriate for the Panel to consider the remaining elements.
DECISION
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <advokat-danielsen.com> domain name REMAIN WITH Respondent.
Alan L. Limbury, Panelist
Dated: January 21, 2021
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