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WIPO Domain Name Decision: D2000-1836

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Dagbladet Børsen A/S v. Digital Marketing Support ApS and Multi-Level Marketing

Case No. D2000-1836

 

1. The Parties

The Complainant is Dagbladet Børsen A/S, a Danish company, with its principal place of business at Møntergade 19, 1140 Copenhagen K, Denmark.

The Respondents are Digital Marketing Support ApS, a Danish company, with its principal place of business at Bredgade 36 E, 1260 Copenhagen K, Denmark, and Multi-Level Marketing, the legal status of which is not clear. The address of this Respondent as contained in the domain name registration is Bogholder Alle 76 A, 2720 Vanløsem, Denmark.

 

2. The Domain Name and Registrar

The domain names at issue are <borsen.com> and <boersen.com>, which are registered with Network Solutions, Inc. ("the Registrar"), Herndon, Virginia, United States of America.

 

3. Procedural History

A Complaint was submitted electronically to the World Intellectual Property Organization, Arbitration and Mediation Center, on December 28, 2000, and in hardcopy on December 29, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated January 5, 2001.

On January 10, 2001, a Request for Registrar Verification was transmitted to the Registrar requesting it to:

  1. confirm that a copy of the Complaint was sent to the Registrar by the Complainant, as required by the WIPO Supplemental Rules for Uniform Dispute Resolution Policy, Paragraph 4(b);
  2. confirm that the domain names at issue are registered with the Registrar;
  3. confirm that the Respondents are the current registrants of the domain names;
  4. provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the Registrar’s WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact;
  5. confirm that the Uniform Domain Name Dispute Resolution Policy applies to the domain names; and
  6. indicate the current status of the domain names.

On January 11, 2001, the Registrar confirmed that a copy of the Complaint was sent to the Registrar by the Complainant, the domain names <borsen.com> and <boersen.com> were registered with the Registrar and that the Respondents were the current registrants of the names. The Registrar also forwarded the requested WHOIS details, confirmed that the Uniform Domain Name Dispute Resolution Policy was in effect and stated that the domain names were in "Active" status.

Effective January 1, 2000, the Registrar adopted the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"). There is no evidence that the Respondents ever requested that the domain names at issue be deleted from the domain name database. Accordingly, the Respondents are bound by the provisions of Policy.

The Panel has determined that the Complaint is in formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999, (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, in effect as of December 1, 1999, (the "WIPO Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount.

No formal deficiencies having been recorded, on January 12, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondents (with copies to the Complainant, the Registrar and ICANN), setting a deadline of January 31, 2001, by which the Respondents could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondents by e-mail to the e-mail addresses indicated in the Complaint and specified in the Registrar’s WHOIS confirmation. In addition, the Complaint was sent by express courier.

On January 22, 2001, the Respondents submitted their Response to the WIPO Center.

On February 26, 2001, the WIPO Center issued to all the parties a Notification of Appointment of Administrative Panel and Projected Decision Date. This Notification informed the parties that the Administrative Panel would be comprised of Mr. Jonas Gulliksson.

The Panel finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the WIPO Supplemental Rules.

On March 8, 2001, the Panelist issued a Procedural Order in which the Complainant was requested to submit evidence that supported its rights in the trademark Børsen.

Following the Complainant’s response to the Procedural Order each party has submitted an additional statement.

 

4. Factual Background

The Complainant and its Registered Trademarks

The Complainant, and/or affiliated companies, is the proprietor of the trademark BØRSEN as well as trademarks incorporating the element BØRSEN, based on the following Danish trademark registrations:

BØRSEN (word mark) – Reg. No. VR 00.112 1985

International Classes: 16, 35, 41, 42

BØRSEN (word mark) – Reg. No. VR 1990 06547

International Classes: 1, 2, 3, 4, 5, 6, 7, 8, 10, 11, 12, 13, 14, 15, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 36, 37, 39, 40

BØRSEN (word mark) – Reg. No. VR 04.026 1985

International Classes: 9, 38 (all goods and services)

BØRSEN – DET SIKRE PAPIR (word mark) – Reg. No. VR 03.159 1993

International Classes: 16, 38, 41, 42 (all goods and services)

BØRSEN – ET SIKKERT PAPIR (word mark) – Reg. No. VR 04.205 1993

International Classes: 16, 38, 41, 42 (all goods and services)

BØRSEN BUSINESS CUP (word mark) – Reg. No. VR 08.829 1991

International Classes: 41

Børsenejendomme – Reg. No. VR 1978 02763

International Classes: 35, 41, 42 (all services)

Børsenfinans – Reg. No. VR 1978 02770

International Classes: 16, 35, 41, 42 (all goods and services)

BØRSEN INFORMATIK (word mark) – Reg. No. VR 01.981 1985

International Classes: 9, 16, 35, 38, 41, 42

Børsenjob – Reg. No. VR 1978 02780

International Classes: 16, 35, 41, 42 (all goods and services)

Børsenprivat – Reg. No. VR 1978 02779

International Classes: 16, 35, 41, 42 (all goods and services)

Børsentransport – Reg. No. VR 1978 02769

International Classes: 16, 35, 41, 42 (all goods and services)

Børsen – Danmarks elektroniske erhvervsavis – Reg. No. VR 02.688 1996

International Classes: 9, 16, 35, 38, 41, 42 (all goods and services)

Børsen Online (word mark) – Reg. No. VR 05.702 1996

International Classes: 35, 36, 38, 41, 42 (all services)

BØRSENS NYHEDSMAGASIN (word mark) – Reg. No. VR 04.097 1985

International Classes: 16, 41 (all goods and services)

Marketing Børsen – Reg. No. VR 01.764 1984

International Classes: 16, 35, 41, 42 (all goods and services)

månedsBørsen – Reg. No. VR 1978 03506

International Classes: 16, 35, 41, 42 (all goods and services)

BØRSEN Software – Reg. No. VR 04.170 1985

International Classes: 9, 16, 35, 38, 41, 42

BØRSEN INFORMATIONS SERVICE – Reg. No. VR 01.764 1982

International Classes: 16, 35, 41, 42 (all goods and services)

BørsenLinien (word mark) – Reg. No. VR 05.224 1992

International Classes: 35, 38 (all services)

BØRSEN FORUM (word mark) – Reg. No. VR 2000 02597

International Classes: 9, 16, 35, 38, 41, 42

BØRSEN NETSHOP (word mark) – Reg. No. VR 2000 01631

International Classes: 35, 38, 39

Børsen Trader (word mark) – Reg. No. VR 2000 05282

International Class 36

Børsen Investment Mall (word mark) – Reg. No. VR 2000 02675

International Class 36

Finally the Complainant is the holder of the domain names <borsen.dk> and <boersen.dk>.

 

5. Parties’ Contentions

A. Complainant

The Complaint is based on the following grounds:

The Complainant’s trademark rights are based on the registrations and on extensive use of the BØRSEN mark, including the publication of the leading Danish business daily BØRSEN, cf. Annex D to the Complaint. BØRSEN has local offices and foreign correspondents in major Danish cities as well as in Brussels, Frankfurt, London, New York, Oslo, Paris, Stockholm, Tokyo and Zürich.

The BØRSEN trademark is also used in connection with magazines, books, handbooks, and newsletters as well as courses, conferences and club activities. The BØRSEN trademark is used in connection with a range of services provided via the Complainant’s Internet homepage, which can be found at <borsen.dk> and <boersen.dk>. Printouts from the Complainant’s homepage are attached as Annex E to the complaint.

It appears from Annex E that the BØRSEN trademark is used in connection with Børsen Executive Club, a forum for top management and government officials, in connection with conferences and seminars, in connection with software, including computer-based training programmes available on the Web and on CD-rom, as well as PC and software training programmes.

The domain names <borsen.com> and <boersen.com> are identical to the Complainant’s trademark, BØRSEN. When the Danish letter Ø cannot be reproduced, the letter is substituted by O or OE, hence the Complainant has registered and is using <borsen.dk> as well as <boersen.dk> as domain names under the .dk top level domain, cf. Annex E to the Complaint.

The Respondents appear to have acquired the domain names <borsen.com> and <boersen.com> in September and October 2000, respectively. The Complainant’s trademark rights, on the other hand, have been established many years ago, cf., e.g. Annex C1 – C3 to the complaint showing that the Complainant’s trademark applications for the word mark BØRSEN were filed in 1982, 1989 and 1984, respectively.

By fax of November 10, 2000 the Respondent (Digital Marketing Support ApS) informed the Complainant that the domain name <borsen.com> is used in connection with stock exchange services in Scandinavia. The mentioned fax is provided as Annex F.

It is claimed that there is identity and similarity of marks: As mentioned above, there is identity between the Complainant’s registered and use-based trademark BØRSEN and the domain names <borsen.com> and <boersen.com>. Further, the domain names are closely similar to the complainant’s trademarks including the element BØRSEN, cf. Annex C4 – C 24 to the Complaint.

It is claimed that there is identity and similarity of goods/services: The Respondent Digital Marketing Support ApS has referred to use in connection with "stock exchange services", cf. Annex F. "Stock exchange services" appear to belong to Class 36, and are covered by the Complainant’s trademark rights. Reference is made to Annex C1 – C 24 to the Complaint, and notably to Annex C14 to the Complaint, Børsen Online, Reg. No. VR 05.702 1996 covering all services in Class 36, Annex C23, Børsen Trader, Reg. No. VR 2000 05282, covering: "Financial affairs, including information concerning prices of shares, currency rates and bond quotations provided via the Internet and portfolio management and surveillance of rates via the Internet" in Class 36, and Annex C24, Børsen Investment Mall, Reg. No. VR 2000 02675, covering: "Financial information via the Internet including information about capital investment, financial management and stock exchange investments" in Class 36.

To the extent that the alleged use of the domain names by the Respondent may not be in respect of services covered by Class 36 it is claimed that there is similarity of goods/services with regard to any stock exchange related activities or information.

Attention is drawn to the fact that the Complainant’s trademark rights cover not only Class 36, but all 42 Classes. Furthermore, the BØRSEN trademark is extremely well known and qualifies for extended protection as a well known mark.

It appears from the above that there is identity and similarity of marks as well as identity and similarity of services, hence the domain names <borsen.com> and <boersen.com> are confusingly similar to trademarks in which the Complainant has prior rights. In addition, the Complainant’s trademark qualifies for extended protection as a well-known mark.

The Respondents do not appear to have any trademark rights to BØRSEN, BORSEN or BOERSEN.

In view of the above, the alleged use of the domain name <borsen.com> in connection with stock exchange services constitutes an infringement of the Complainant’s prior trademark rights.

Consequently, the Respondents have no rights or legitimate interests in the domain names that are the subject of this Complaint.

To access some of the services on the Complainant’s homepage on <borsen.dk>, user-id and password are required. This function is used by a large number of the Complainant’s customers. A screen dump of the Complainant’s logon request is provided as Annex G to the Complaint. When looking up the Respondent’s domain name <borsen.com> on the Internet, a logon request appears, asking for user-id and password, cf. the screen dump provided as Annex H to the Complaint. When entering <www.boersen.com>, a similar logon request appears, cf. Annex I to the Complaint.

As the domain names <borsen.com> and <boersen.com> are identical to the

complainant’s domains <borsen.dk> and <boersen.dk>, except for the suffix indicating the top-level domain, there is a major risk that the Complainant’s customers enter <borsen.com> or <boersen.com> by mistake when trying to access the Complainant’s web-site.

Further, it is likely that the Complainant’s customers may reply to the

Respondents’ logon request by entering the user-id and password belonging to the Complainant’s services. This leads to a disruption of the business of the Complainant.

The Respondents cannot have been unaware of the Complainant’s well-known trademark and activities, hence the domain names have been registered to prevent the Complainant from reflecting its well-known trademark in a domain name under the .com top level domain.

With reference to the logon request as described, it is claimed that the Respondents are intentionally attempting to attract Internet users to their web sites by creating a likelihood of confusion with the Complainant’s mark, with a view to obtaining commercial gain.

The Respondent Digital Marketing Support ApS has registered an extremely large number of domain names under the .dk top level domain, including domains such as <bbc.dk> and <euro-sport.dk> which appear to reflect names or trademarks of other entities. A printout from the administrator of the .dk top level domain, DK Hostmaster A/S, is provided as Annex J to the Complaint.

The Respondents have registered a number of domain names under the .com top-level domain, cf. the printouts provided as Annex K1 – K2 to Complaint.

The very large number of domain names registered by the Respondent Digital Marketing Support ApS indicates engagement in a pattern of activities regarding stockpiling and sale of domain names. Reference is made to Administrative Panel Decision of October 24, 2000 in WIPO Case No. D2000-0634, pages 8-9, where the number of domain names, some 330, was considered to imply registration and use in bad faith.

With reference to the above it is claimed that the domain names <borsen.com> and <boersen.com> have been registered and used in bad faith.

Finally, the Complainant has requested the Administrative Panel to issue a decision by which the contested domain names <borsen.com> and <boersen.com> are transferred to the Complainant.

B. Respondent

In their response, the Respondents have stated the following:

    • Børsen/Börsen is a generic word available to any user of the Scandinavian languages;
    • Børsen/Börsen lacks distinctiveness to be a valid trademark or service mark for a specific entity;
    • Reference to similarity of this generic word to a trademark may not be applicable, or may only be applicable in a specifically well defined context;
    • Complainants rights are limited to activities related to the daily business newspaper "Dagbladet Børsen" Complainant is publishing and distributing to a very limited number of readers in Denmark;
    • Complainant does not have an exclusive right to use the generic word Børsen/Börsen;
    • Complainant does not have the right to prevent other parties from using this generic word; and
    • Complainant does not have the widen multi purpose wild card style trademark, Complainant is trying to imply.

With reference to page 10, 3rd paragraph of the Complaint, and with reference to general practice, it is to be noted that the term "boersen" is only assumed to be equivalent to the generic word "Børsen" when the Danish letter "Ø" cannot be reproduced.

The term "borsen" will be regarded as an illegal and misrepresentation of the Danish generic word "børsen".

As of February 26, 2001, the Scandinavian characters have been made available for use in domain names, making the registration of for example börsen.com and børsen.com possible.

Based on this fact and reality, the domain name that is similar to the Danish/Norwegian generic word "Børsen" is the domain name <børsen.com>, and not the disputed domain name.

The domain name that is similar to the Swedish/German generic word "Börsen" is the domain name <börsen.com>, and not the disputed domain name.

The Respondents therefore maintain that the Complainants trademarks are not identical or confusingly similar to the disputed domain names, and that the Complainant has failed to meet the requirements of paragraph 4(a)(i) of the Policy.

This point of view is clearly illustrated by the following 2 trademarks submitted by the Complainant:

Annex

Trademark

C4

BØRSEN – DET SIKRE PAPIR

C5

BØRSEN – ET SIKRE PAPIR

Although the above two trademarks may appear to be similar or confusingly similar, the Danish trademark office has found that they are in fact not similar or confusingly similar, and therefore could be registered as independent trademarks.

If they had been found confusingly similar to each other, the registration of the first one will preclude the registration of the second one, or vice versa.

The two trademarks illustrate and stress that registered generic word as trademark requires "perfect match" when comparing to other terms with respect to the trademarks validity.

Based on these facts, it is concluded that the Complainant’s trademarks are not identical or confusingly similar to the disputed generic domain names, and that the Complainant has failed to meet the requirements of paragraph 4(a)(i) of the Policy.

The panel is kindly asked to refer to the WIPO Case No. D2000-0100, High-Class Distributions S.r.l. vs. Online Entertainment Services, Annex 2 to the Response, paragraph 6.2.

The Respondents, an ISP with the Scandinavian countries as their main business area, have registered the domain name <borsen.com> on September 23, 1996, and <boersen.com> on October 21, 1996.

The Respondents’ primarily reason for choosing and registering the domain names is that they are simple and explanatory to the stock exchange related services Respondents have been providing and will be providing.

The first service provided with the domain names [End 1996 – 1st and 2nd quarter of 1997] was a DNS routing and web link services for all Stock exchanges/stock market around the globe. The service provided an unlimited user friendly aliases and links for stock exchanges.

After gaining the control of the domain name stock-exchange.com in 1997, <borsen.com> and <stock-exchange.com> were used interchangeably to achieve the goals of the service.

While the service was running, it was possible i.e. to use any of the following URL to reach the Danish stock-Exchange:

<danish.stock-exchange.com>, <danish.borsen.com>, <dansk.stock-exchange.com> <dansk.borsen.com>, <copenhagen.stock-exchange.com>, <copenhagen.borsen.com>, <denmark.stock-exchange.com>, <denmark.borsen.com>, <danmark.stock-exchange.com>, <danmark.borsen.com>, <kobenhavn.stock-exchange.com>, <kobenhavn.borsen.com>, <koebenhavn.stock-exchange.com>, <koebenhavn.borsen.com>, <cph.stock-exchange.com>, <cph.borsen.com>, etc., the above URLs could also be appended with a "WWW" as well.

Beyond the DNS routing to the appropriated URLs, an overview with clickable links was as well provided on the websites.

Annex 3 shows the content of the database used to configure the DNS for the domain names.

It should be noted that the IP numbers shown on annex 3 are the IP numbers used by these stock exchange services in 1996/1997, and that some of these IP may no longer be appropriated.

Realising that the DNS service was time consuming with a lot of overseas phone calls without business gain, the respondents decided to find a more profitable way to use the domain names.

At the time, many ISP have started to provide "domain name broker" services for the growing domain name industry.

Respondents decide to create "NavneBørsen", in English, "Names Stock Exchange" for the Scandinavian market and used the domain names <navne.dk> (for Denmark) and <borsen.com>, <boersen.com> (for Norway, Sweden, Finland, Island, and Germany) to promote the new service (Jun 1997).

NavneBørsen was an instant success.

Within short period of time, the site was receiving thousands of visitors, customers, journalists from all media (radio, TV, newspapers etc.), from across Scandinavia.

Annex 4 is Denmark’s largest newspaper, "Jyllands-Posten"’s comments of June 11, 1997 about NavneBørsen.

Annex 5 shows an example of NavneBørsen’s broker-purchase agreement, signed on June 12, 1997.

Annex 6 – 13 shows that NavneBørsen was covering and doing business in Germany (Annex 6); in Island (Annex 8); In Norway (Annex 9); in Sweden (Annex 12) and in Denmark (Annex 5, 10,11).

NavneBørsen became the Scandinavians most trusted domain name broker, and was used by Banks (Annex 7); large insurance companies (Annex 10, also referenced in WIPO Case No. D2000-0634 which is cited by the complainant); large entertainment companies (Annex 11) and large international airline companies (Annex 13).

NavneBørsen was quoted and asked for expert advice in the High Court case mentioned in WIPO Case No. D2000-0634.

During the last year of NavneBørsen’s existence, the service has received more than one million unique visitors.

In a strategic management decision to reorganize its services and optimize the use of it’s resources, user interface, synergy between sites and competitiveness, the Respondents have shut down (at least from the publics point of view) many of their sites while the reorganization is taking place. NavneBorsen is one of these sites that were closed to the public from July 15, 2000.

During the passed years and especially after the closing of NavneBørsen, several offers (ranging from $US 5.000 to 25.000) to purchase the domain name <borsen.com> were received by the Respondent. These offers were refused.

Annex F presented by the Complainant is Respondents’ letter of refusal to sell the disputed domain names to the Complainant.

The Respondents’ plan is to later reuse the domain names for the original plan, which was to provide stock exchange services.

This was also specified in Annex F as the reason why the Respondents have refused to sell the domain names.

Respondent states that:

    • Respondents’ use of Børsen/Börsen does not infringe the legal rights of any third party, including the Complainant.
    • Respondents [an ISP] and Complainant [a newspaper] are not competitors (so there is little or no likelihood of confusion).
    • Respondents have not been and will not be using to the domain names to misleadingly divert Complainants customers [if such misleadingness is possible between a dot com domain name and a national domain name at the first place].
    • Respondents were certain that it was not possible to register the generic word "børsen" as trademark and that the registration of the disputed domain names does not infringe any legal rights.

Based on the above presented facts, it is concluded that the Respondents have not registered nor used the disputed generic domain names in bad faith, and that

the Complainant has failed to meet the requirements of paragraph 4(a)(iii) of the Policy.

The panel is kindly asked to refer to WIPO Case No. D2000-0320, BSA Vs. Eric R. Hilding, Annex 15 to the Response, paragraph 6b.

Respondents further states that:

    • Respondents have common law rights to the disputed domain names.
    • Respondents have service mark and trademark rights to the disputed domain names.
    • Respondents are well known by millions of Internet users across Germany, Denmark, Sweden, Norway, Finland and Island by the disputed domain names and by the trademark NavneBørsen.
    • Complainant’s local Danish trademark rights do not preclude the Respondents to use the domain names in Germany, Sweden, Norway, Finland, Island and even in Denmark.
    • This administrative procedure is not intended to deal with discussion about who has "prior right" or "prior trademark rights" to a generic word in a specific country.

Based on the above presented facts, it is concluded that the Respondents have rights and legitimate interests in respect of the domain names, and that the Complainant has failed to meet the requirements of paragraph 4(a)(ii) of the Policy.

The panel is kindly asked to refer to WIPO Case No. D2000-0008, Digitronics Inventioneering Corporation Vs. @Six.Net Registered, Annex 14 to the Response paragraphs 5.5 – 6.

Rule 15(e) provides that the panel shall declare that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding if it was brought as an attempt at Reverse Domain Name Hijacking (defined as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name") or was brought primarily to harass the domain name holder.

The Complainant knew:

    • that it has no rights in respect to the domain names;
    • that the Respondents have rights and legitimate interests in respect of the domain names (the Complainant claiming to have "prior rights");
    • that Policy 4(a)(ii) specifically requires that the Respondents must have "no rights or legitimate interests…"; and
    • that this administrative proceeding is not created to promote monopoly, nor it is created to assist in harassing domain name holders, and/or hijacking domain names that are not for sale.

Based on these evidences, the Respondents respectfully request that the panel find the Complainant guilty of abusive use of the administrative procedure and reverse domain name hijacking.

Complainantґs response to the Respondents’ response

In Supplemental Response No.1 the Respondents have argued that the Complainant’s trade marks are not identical or confusingly similar to the disputed domain names. In support thereof, it is argued that "boersen" is only equivalent to "børsen" when the Danish letter "ø" cannot be reproduced, and in addition, because it is now possible use the Danish letter "ø" in domain names under the top level domain ".com", the two words are no longer identical or confusingly similar.

The Complainant disputes this argument and submits that the fact that the Scandinavian characters, including "ø" have now been made available has no legal implications on this case.

The Danish letters "æ", "ø" and "å" are very unique in that they are used only in Denmark and in Norway. Because these letters are unknown in other countries, they are usually "converted" into a combination of letters that people, who have no knowledge of Danish or Norwegian, are able to understand. Thus, "æ" is converted into "ae", "ø" into "oe" or simply "o" and "å" into "aa".

Until recently, it has not been possible to use "æ", "ø" and "å" in domain names. Instead Danish companies with names containing the said characters have converted these characters as described above. Examples are the airline company Mærsk Air, which uses the domain name <maersk-air.dk> and the Complainant’s own domain names <boersen.dk> and <borsen.dk>.

The fact that it is now possible to use these characters will not, however, change this. Danish companies with names containing "æ", "ø" and "å" will continue to use "ae", "oe" and "aa" in their domain names.

Based on the above it is submitted "oe" and "o" should be treated as the letter "ø", in particular in Internet context, where the sound of the word is of less importance than the look. Consequently, the disputed domain names <boersen.com> and <borsen.com> are identical to the Complainant’s trade marks.

In so far as the Panel should reach the conclusion that trade marks and the disputed domain names are not identical, it is submitted that they are confusingly similar. The letter "ø" has always been and is still being converted into either "oe" or "o". Danish company names – and names of persons for that matter – containing "ø" is very often spelled with an "oe" or an "o" instead of the "ø" in order to make the name easier for foreigners to read and write. In this context they are interchangeable and therefore confusingly similar.

Finally, the Complainant should like to comment on the argument presented by the Respondent that the trade marks "BØRSEN – DET SIKRE PAPIR" (submitted as annex C4) and "BØRSEN – ET SIKKERT PAPIR" (submitted as annex C5) are not similar or confusingly similar.

First, for the sake of good order, it should be noted that the trade mark submitted as annex C5 is

BØRSEN – ET SIKKERT PAPIR

and not

BØRSEN – ET SIKRE PAPIR

as noted by the Respondents.

In the Respondents’ Supplemental Response No. 1 the two trade marks submitted as annexes C4 and C5 appear to be much more similar than they really are when reproduced correctly.

Trade mark submitted as annex C4 may be translated as "Børsen – the safe piece of paper, whereas the trade mark submitted as annex C5 may be translated as "Børsen – a safe piece of paper". In the Danish language, unlike English, the adjective – "safe" – changes with the grammatical form. From a linguistic point of view, "et sikre papir" makes no sense as it is grammatically incorrect, which would be clear to a Danish speaking person.

Irrespective of the incorrect reproduction, it is submitted that the fact that both trade marks have been registered in Denmark does not mean that the two are not confusingly similar. The Complainant is the registered proprietor of both marks. When considering the second application – "BØRSEN – DET SIKRE PAPIR" annex C4 – The Danish Patent and Trade Mark Office registered the mark despite a confusing similarity to the earlier trade mark "BØRSEN – ET SIKKERT PAPIR" annex C5, because the proprietor was the same company and legal entity. In other words, the mere filing of the application for a similar mark by the same proprietor was and is considered an implied consent to the registration of a mark that would otherwise be infringing.

Had the applicant of the second mark been a third party, the marks would undoubtedly have been found to be confusingly similar, and the second mark would not have been registered. Please note that according to the law then in force, a mark that was identical or confusingly similar to an earlier mark were automatically denied registration unless the proprietor specifically consented to the registration of the second mark. According to the present law, the proprietor of the earlier mark would have to file an opposition in order to prevent the registration of an identical or confusingly similar mark. It is submitted that also under the new law, the two marks submitted as annexes C4 and C5 would have been found confusingly similar, and the latest mark therefore would not have been registered had they not belonged to the same legal entity.

It is therefore incorrect as noted by the Respondents that these two marks illustrate that a "perfect match" is required in order to establish a trade mark infringement. That the Respondents are incorrect follows also from the Danish Trade Mark Act, where both identity and confusing similarity is mentioned. Furthermore, it should be noted that under the ICANN Uniform Domain Name Dispute Resolution Policy, paragraph 4(a)(i) both identity and confusing similarity is mentioned.

Finally, please note that under Danish trade mark law, it is possible to register even identical marks, provided the proprietor of the first mark consents to the registration of the second mark. The fact that two marks that appear confusingly similar have both been registered may therefore be a result of such consent, and not necessarily that the Danish Patent and Trade Mark Office has not found them confusingly similar.

 

6. Discussion and Findings

According to Paragraph 15(a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

    1. that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
    2. that the Respondent has no legitimate interests in respects of the domain name; and
    3. that the domain name has been registered and is being used in bad faith.

The Complainant has proved that it has an unlimited, unconditional licensed right to use and exploit the trademark BØRSEN and it owns other trademark registrations including the word BØRSEN in Denmark.

The Respondents have alleged that the Complainant’s trademark registrations of the mark BØRSEN do not give them the exclusive right in the word BØRSEN

since this is a generic word which lacks distinctiveness.

The Panelist is of the opinion that the word BØRSEN is suggestive and therefore cannot be considered as descriptive in relation to all the goods and services in the trademark registrations. Further, the Panelist would like to emphasize that none of the trademark registrations contain a disclaimer for the word BØRSEN.

The Respondents have further argued that the Complainant’s trademarks are not identical or confusingly similar to the disputed domain names. In support thereof, it is argued that "boersen" is only equivalent to "børsen" when the Danish letter "ø" cannot be reproduced, and in addition, because it is now possible to use the Danish letter "ø" in domain names under the top level domain ".com", the two words are no longer identical or confusingly similar.

The fact that it is now possible to use the character "ø" in domain names does not, in the Panelist’s opinion, affect the judgement concerning identity or confusingly similarity. The domain names <borsen.com> and <boersen.com> are not identical to the trademark BØRSEN. The domain names must, however, be considered as confusingly similar to the trademark.

Accordingly, the Panelist finds that the domain names at issue are confusingly similar to a trademark or service mark in which the Complainant has rights.

The Respondents have alleged that they have rights and legitimate interest in respect of the domain names. The Respondents have in this connection alleged that they have common law rights to the contested domain names. The Respondents have, however, not demonstrated any evidence in this matter.

The Respondents have further alleged that they have used the domain names before any notice to them of the current dispute. The Respondents have stated that during 1996 and 1997 they used the domains as a DNS routing and web link services for stock markets around the globe. The evidence provided by the Respondents in this matter does, however, not support these assertions.

Lastly, the Respondents have alleged that they have used the domain names in relation to a "Name Stock Exhange" called "NavneBørsen". The domain name <navne.dk> was used for the Danish market and the domain names <borsen.com> and <boersen.com> were used for Norway, Sweden, Finland, Iceland and Germany. The evidence submitted by the Respondents in this connection shows that the service was provided under the domain name <navne.dk> and not under the domain names at issue.

Consequently, the Panelist is of the opinion that the Respondents have not proven that they have any prior rights or legitimate interests in the domain names.

The prerequisites in the Policy, Paragraphs 4(a)(i) and (ii) are therefore fulfilled.

Paragraph 4(a)(iii) of the Policy further provides registration and use in bad faith.

Paragraph 4(b) regulates which kind of evidence that is required, namely

    1. circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
    2. you have required the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
    3. you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
    4. by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

The Respondents have stated that they are affiliated. Therefore, the Panelist will in the following regard them as a joint entity.

From the evidence submitted by the Complainant it is clear that the Respondents have registered a very large number of domain names including domains such as <bbc.dk> and <euro-sport.dk> which appear to reflect names or trademarks of other entities.

Further, it is highly probable that the Respondents registered the domain names with knowledge of the Complainant and its rights, which has not been contested by the Respondents.

In light of these circumstances, the Panel concludes that the domain names were registered and are being used in bad faith.

Consequently, all the prerequisites for cancellation or transfer of the domain names according to Paragraph 4(i) of the Rules are fulfilled.

The Complainant has requested transfer of the domain name.

 

7. Decision

In view of the above circumstances and facts the Panel decides, that the domain names registered by Respondents are confusingly similar to the trademark and service mark in which the Complainant has rights, and that the Respondents have no rights or legitimate interests in respect of the domain names, and that Respondents’ domain names have been registered and are being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain names <borsen.com> and <boersen.com> be transferred to the Complainant.

 


 

Jonas Gulliksson
Sole Panelist

Dated: April 11, 2001

 

Источник информации: https://internet-law.ru/intlaw/udrp/2000/d2000-1836.html

 

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