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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nilfisk-Advance A/S v. Leong Tak Lang
Case No. D2000-1299
1. The Parties
The Complainant is Nilfisk-Advance A/S, Sognevej 25, DK-2605 Brøndby, Denmark, represented by Charlotte Munck, NKT Research A/S, Brøndby, Denmark ("Complainant").
The Respondent is Mr. Leong Tak Lang, 137, Jln Raja Musa Aziz, Ipoh, Perak 30300, Malaysia ("Respondent").
2. The Domain Name and Registrar
The dispute concerns the domain name <nilfisk.net>.
The Registrar is Network Solutions, Inc., Virginia, USA.
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received the Complainant’s Complaint in electronic form on October 2, 2000 and in hard copy on October 6, 2000.
Complainant made the required payment to the Center.
On October 17, 2000, the Center sent the Complainant a Complaint Deficiency Notification, as the Registrar was not properly identified in the Complaint. The Center received an amended Complaint on October 17, 2000 (in electronic form) and October 23 (in hard copy), identifying the Registrar as Network Solutions, Inc.
On October 26, 2000, the Center transmitted via e-mail to the Registrar a request for registrar verification in connection with this case. On October 29, 2000, the Registrar transmitted via e-mail to the Center, the Registrar’s Verification Response, confirming that (1) Network Solutions is the Registrar of the Domain Name, (2) Leong Tak Lang (the Respondent) is the registrant, (3) Leong Lang is the Administrative, Technical, Zone and Billing Contact, (4) the Registrar’s 5.0 Service Agreement is in effect with respect to the Domain Name, and (5) the Domain Name is in "Active" status.
On October 31, 2000, the Center transmitted via e-mail to the Complainant a request for a Second Amendment of Complaint, regarding clarification on the mutual jurisdiction. On November 2, 2000, the Center received in electronic form (and on November 6, 2000 in hardcopy), the said clarification from the Complainant.
The Center verified on November 15, 2000 that the complaint (after the above amendments) was filed in accordance with the requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").
The formal date of the commencement of this administrative proceeding is
November 15, 2000.
On November 15, 2000, the Center transmitted Notification of Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint, to the Respondent via e-mail and via post/courier to the address identified in the Registrar verification response. The Center advised that (1) the Respondent’s Response was due by December 4, 2000, (2) in the event of default the Center would still appoint a Panel to review the facts of the dispute and to decide the case, (3) the Panel may draw such inferences from the Respondent’s default as it considers appropriate, (4) the Complainant had elected for the matter to be decided by a single panelist.
The Respondent did not submit a timely Response. Accordingly, the Center sent to the Respondent a Notification of Respondent Default on December 5, 2000.
On December 8, 2000, in view of the Complainant’s designation of a single panelist the Center invited Mr. P-E Petter Rindforth to serve as a panelist.
Having received Mr. Rindforth’s Statement of Acceptance and Declaration of Impartiality and Independence, the Center, on December 13, 2000, transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Rindforth was formally appointed as the sole Panelist. The Projected Decision Date was December 27, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
The Administrative Panel shall issue its Decision based on the Complaint (including amendments), the Policy, the Rules, and the Supplemental Rules. The case before the Panel was conducted in the English language.
4. Factual Background
The Complainant is the owner of the trademark NILFISK (for vacuum cleaners and other cleaning machines) in more than 47 countries, among them Malaysia – the home country of the Respondent. A list of the trademark registrations and copies of the Registration Certificates have been submitted as Annex 2 of the Complaint. The Malaysian registration has the registration No 84/00245 and is dated January 18, 1984.
Some of the registrations (including No 84/00245) are in the name of the Complainant’s predecessor company Aktieselskabet Fisker & Nielsen, others in the name of the company Nilfisk A/S, and a few are registered under the current company name Nilfisk-Advance A/S.
The Complainant also claims to be the owner of the trademark NILFISK ADVANCE in a great number of countries, as well as the holder of about 60 domain names, all of which include the trademark NILFISK (some are listed in Annex 3 of the Complaint).
As no Response has been filed, there is no information provided about the Respondent’s business activities, except for the fact that the Domain Name "nilfisk.net" was registered on April 19, 2000 in the name of the Respondent.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical to the trademark NILFISK. The designation NILFISK is a unique combination of the surnames of the founders of Nilfisk-Advance A/S, i.e. Mr. Nielsen and Mr. Fisker, and the trademark is almost 100 years old.
There are no relations between the Complainant and the Respondent, nor is the Respondent a licensee of Complainant, or has otherwise obtained an authorization to use or register the Complainant’s name.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Domain Name was obtained only for the purpose of selling it, i.e. in bad faith.
The Respondent has not contested the Complainant’s allegations.
6. Discussion and Findings
According to Paragraph 4 (a) of the Policy, the Complainant must prove each of the following:
(i) that the Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant claims to be the owner of the trademark NILFISK in many countries, and has submitted copies of the Certificates of Registration for these registrations (Annex 2 of the Complaint). Only a few of the registrations are officially recorded in the present name of the Complainant – Nilfisk-Advance A/S. The Complainant states that the other company names shown on the Certificates, A/S Fisker & Nielsen and Nilfisk A/S, are prior versions of the same company name. The Complainant has not provided any further evidence to prove the above, however the Panel concludes – based on information regarding the address of the trademark owner, etc., obtained from the said Certificates, that the three company names relate to the same business/company. The Panel therefore concludes that the Complainant is the owner of the trademark NILFISK in all the countries claimed and that the Domain Name is identical to the said trademark.
The Complainant contends that the Respondent is not an authorized agent or licensee of the Complainant’s trademark, and that he has not otherwise obtained an authorization to use the name. There is no specific information on the background of the Respondent’s registration of the Domain Name. The trademark NILFISK is a unique mark, relating to the names of the two founders of the Complainant. The Panel therefore concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name.
In accordance with the Policy, the Complainant must also prove that the Domain Name has been registered and is being used in bad faith.
Paragraph 4 (b) of the Policy sets out certain circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith. In particular the Complainant expressly relies upon paragraph 4(b)(i) to the effect that there are circumstances indicating that the Respondent has registered or acquired the Domain Name "primarily for the purpose of selling, renting, or otherwise transferring" the Domain Name to the Complainant / trademark owner, "for a valuable consideration in excess of (the Respondent’s) out-of-pocket costs directly related to the domain name".
As there is no Response filed by the Respondent, the Panel has to decide only on the information and arguments issued by the Complainant. The Panel can, however, not find that the Complainant has proved or made it likely that the Domain Name was registered primarily for the purpose of selling it to the Complainant.
In fact, no evidence has been filed that the Domain Name is for sale at any price, or that the Respondent has taken any action at all with regard to the Domain Name, otherwise than by registering it. As decided in the Telstra Corporation Limited v. Nuclear Marschmallows (Case No. D2000-0003) case, however, also inaction may be in the concept of use in bad faith: "…it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith".
The Complainant is a Danish company and the Respondent is (likely) a Malaysian citizen. The Complainant has argued that the trademark NILFISK is "unique", "almost 100 years old" and registered in many countries, among them Malaysia. The Complainant has not, however, claimed that the trademark is well known or even used in Malaysia, nor has the Complainant provided any other circumstances that could lead to the conclusion that the Respondent knew about the trademark before he registered the Domain Name.
The Panel further concludes that there are no obvious circumstances to prove that the Respondent has taken steps to conceal his true identity, or has a pattern of conduct to register others trademarks as domain names, or has registered the Domain Name to prevent the Complainant from reflecting the mark NILFISK in a corresponding domain name, or has registered the Domain Name primarily for the purpose of disrupting the business of a competitor, or has intentionally attempted to attract (for commercial gain), Internet users to a corresponding website by creating a likelihood of confusion with the Complainant’s trademark.
The Panel therefore concludes that the Complainant has failed to prove that the Respondent, by positive actions or inactions, has registered and is using the Domain Name in bad faith.
In light of the foregoing, the Panel concludes (a) that the Domain Name <nilfisk.net> is identical to the Complainant’s registered trademark NILFISK, (b) that the Respondent has no rights or legitimate interest in the Domain Name, and (c) that the Complainant has failed to prove that the Respondent has registered and used the Domain Name in bad faith.
Therefore, pursuant to paragraphs 4 of the Policy and 15 of the Rules, the Panel denies the Complainant’s request to transfer the disputed Domain Name to the Complainant Nilfisk-Advance A/S.
P-E Petter Rindforth
Dated: December 27, 2000