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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Joacim Bruus-Jensen v. John Adamsen

Case No. D2004-0458

 

1. The Parties

The Complainant is Joacim Bruus-Jensen of Hellerup, Denmark, represented by Brix Jensen Havemann of Kшbenhavn K, Denmark.

The Respondent is John Adamsen of Ascot, Berkshire, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Names and Registrar

The disputed domain names <bruus-jensen.com> and <joacimbruus-jensen.com> are registered with Melbourne IT trading as Internet Names Worldwide.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2004. On June 25, 2004, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain names at issue. On June 28, 2004, Melbourne IT trading as Internet Names Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 6, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was July 26, 2004. At the Respondent’s request, the Center granted an extension of time until August 9, 2004, to file a Response. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 12, 2004.

The Center appointed Derek M. Minus as the sole panelist in this matter on August 18, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

The Complainant, Joacim Bruus-Jensen, is stated to fully own the following investment companies:

JBJ Invest A/S

Registration No. 13109176, described as a public limited company incorporated under the laws of, and with its principal place of business in, Denmark. The company also trades under the following registered names: Collector Group A/S, Collector Gruppen A/S, Collector Holding A/S, Collector Invest A/S, JBJ Ejendomme A/S, JBJ Finans A/S, JBJ Group A/S, JBJ Holding A/S and JBJ Industries A/S.

Ejendomsselskabet H. C. Andersens Boulevard 40 A/S

Registration No. 25484363, described as a public limited company incorporated under the laws of, and with its principal place of business in, Denmark. The company also trades under the registered name, JBJ Invest 2 A/S.

JBJ Invest 4 A/S

Registration No. 27336442, described as a public limited company incorporated under the laws of, and with its principal place of business in, Denmark.

JBJ Invest 5 A/S

Registration No. 27336469, described as a public limited company incorporated under the laws of, and with its principal place of business in, Denmark.

Transcripts from the Danish Commerce and Companies Agency identifying the company name and address, directors and their powers and the date of the last published accounts, were provided for each of the four companies. For each company, Joacim Lars Bruus-Jensen was listed as a director.

The Complainant uses the initials from his name, Joacim Lars Bruus-Jensen in the names of his companies. The Complainant registered the domain names <jbjgroup.dk> and <jbjinvest.dk> also featuring the same initials, for use by his companies on April 23, 2001. Transcripts from the Danish Whois database supplied by DK Hostmaster A/S were provided, which identified that the Complainant uses the e-mail address <joacim@bruus-jensen.dk> for his business contact.

The Respondent registered the disputed domain names <bruus-jensen.com> and <joacimbruus-jensen.com> on February 13, 2004. The Respondent has established an Internet site at both domain name address, displaying the same message as follows:

“This website is a tribute to the business (and private) man Joacim Bruus-Jensen who, despite being an extraordinary person, might be unknown to many.

We intend to change that! During the next weeks we will be oploading (sic) extensive material to enable people to get to know him from sides he is far too modest to display himself.

Of course, the business behaviour and outstanding ethics is a crucial focus of the website. But it would be a shame to stop there as he comprises much more that just that. Also on the personal level, attributes are found that are worthy of thorough interest: Upbringing, family relations and even more private parts of life will we (sic) be able to offer a tasteful insight of - at a proper distance, naturally!

Our sincere apologies to the impatient; but there is such a vast amount of documentation to choose from, and we do want the website to cover the full and true story of Joacim Bruus-Jensen, before we publish it.

We hope that you will visit us soon. We promise not to disappoint you! 

Should you wish to contribute to this website with personal experiences or encounters with Joacim Bruus-Jensen, please email or visit us through the following:

Our email address

Joacim@bruus-jensen.com

Our website address

www.bruus-jensen.com or

www.joacimbruus-jensen.com”

 

5. Parties’ Contentions

A. Complainant

The following background material was provided by the Complainant, which he claimed was the motivation for the Respondent’s registration of the contested domain names and establishment of the Internet site.

The Complainant stated that the Respondent had, for a number of years until the summer of 2003, rendered legal assistance to several of the Complainant’s companies through the Respondent’s then law firm, Zenith Advokater A/S. The Complainant and the Respondent have also had a business association for a number of years.

The Complainant, through his company, JBJ Invest A/S, and the Respondent are joint shareholders in the Danish public limited company, Giantcode A/S. The shareholders in Giantcode have had several disagreements, especially in connection with the increase in the share capital of that company, which took place in the autumn of 2002. It was alleged that in connection with the increase of the share capital, the Respondent took out a loan with the Danish bank, Amagerbanken and that the Complainant’s company and joint venture partner, JBJ Invest A/S, stood surety for this loan. It was further alleged, that the Respondent failed to fulfil the loan obligations and that JBJ Invest A/S was required to settle that part of the loan for which it stood surety. JBJ Invest A/S has unsuccessfully tried to collect the amount which it paid on the Respondent’s behalf and has filed a petition for bankruptcy against the Respondent.

The Complainant stated that he is presently taking action against the Respondent as a result of the Respondent’s registration of the domain name. The Complainant initiated a court case against the Respondent with the City Court of Gentofte in Denmark on March 3, 2004, and filed a complaint against the Respondent to the Danish Disciplinary Board of the Danish Bar and Law Society on March 8, 2004.

The Complainant’s Trademark

The Complainant contends that the domain names at issue are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant says that he uses the initials of his name in business as a “trade feature” and also uses the email address featuring his name <joacim@bruus-jensen.dk>. The Complainant has registered his initials with the Danish Commerce and Companies Agency as part of the name or subsidiary name of all his companies.

The Complainant uses his name in the course of his business and has developed valuable goodwill, as well as enforceable common law trademark rights, in his name Joacim Bruus-Jensen. The existence of such common law rights has already been established in other cases conducted under the Rules as sufficient to establish a right to own a personal name as a domain name. Reference was made to WIPO Case No. D2002-1180, Sibyl Avery Jackson v. Jan Teluch and WIPO Case No. D2000-0210, Julia Fiona Roberts v. Russell Boyd.

No rights or legitimate interests

The Respondent is said to have no rights or legitimate interests in the disputed domain names <bruus-jensen.com> and <joacimbruus-jensen.com> which are identical to the surname and the full name of the Complainant.

The Complainant contends that the Respondent’s use of the domain names is a violation of the Danish Act on Personal Names and the statutory order no. 11031. Paragraph 7 of the Danish Act on Personal Names provides that:

“7. Reserved names shall be:

1) names reserved under Section 7 of Act no. 140 of 17 May 1961 on personal names, and

2) surnames permitted by certificate of change of name.

Subpara. 2. The following may also be reserved on written application to the Ministry of Justice:

1) surnames carried by persons resident in Denmark,

2) names comprising or entering into a company, trademark or association name registered in Denmark, and

3) nom de plumes and pseudonyms which are generally known in Denmark and used by a person resident in Denmark.”

Paragraph 16 of that act provided for penalties:

“16. Any person who makes unauthorised use of a name shall be fined. Action shall only be taken when a wronged party so requests, or if required by general considerations.

Subpara. 2. The person who can demonstrate that another person is using his or her name without authorisation, or using a name which is so similar that confusion could easily occur, may obtain a judgment that the other party shall cease its use of the name.”

Information was also provided that pursuant to a statutory order no. 11031 by the Directorate of Family Law of August 10, 1987, the surname Bruus-Jensen is a protected name, and pursuant to paragraph 16 of the Danish Act on Personal Names any use of the name by a party who does not legitimately bear the name is prohibited.

The Respondent has made no demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. The Respondent has posted an Internet site at the domain names at which the Respondent plans to display information about the Complainant’s person and business. There has been no change to the material posted on the Respondent’s Internet sites since mid-February 2004.

Registration and Use in Bad Faith

The Complainant contends that the purpose of the Respondent’s registration of the domain names is to disrupt the business of the Complainant. That the Respondent has registered the domain names primarily for the purpose of posting an Internet site at the domain names, on which the Respondent intends to display information concerning the Complainant’s person, businesses and business methods.

The Complainant alleges that in a response in the case against the Respondent before the Disciplinary Danish Bar and Law Society, the Respondent has stated that the Internet site will in time contain information about:

(a) the result of the Respondent’s current cases against the Complainant and the Complainant’s company, JBJ Invest A/S;

(b) information that substantiates the Respondent’s perception that Joacim Bruus-Jensen is a person, who cynically and in violation of the principles of corporate governance, seeks to consider only his own financial interests; and

(c) to warn young people and owners of companies and advisers against the Complainant and his companies as a potential investor or collaborator.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving, on the balance of probabilities, each of the following three elements:

(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant holds rights; and

(ii) that the Respondent has no rights or legitimate interests in the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith by the Respondent.

A. Identical or Confusingly Similar

In this case, the Complainant does not hold a registered trademark in his name. Nor is there any evidence that the Complainant has ever used his personal name for the purpose of advertising or promoting his business or for the sale of any goods or services. There is, additionally, no evidence that he intends to do so in the future.

It is not the Complainant’s own name or the domain names registered by the Respondent which are included in the names of the registered companies with which the Complainant is associated and of which evidence is given, but only three of the initials of his name. There is nothing unique or significant in the use of those initials in the Complainant’s business names. Nor is there any confusion of identity between the trade usage adopted by the Complainant and the domain names in issue.

The Complainant claims the use of the e-mail address <joacim@bruus-jensen.dk> for his business contact, which is similar to the domain names in issue. But strangely, the Complainant makes no claim that he is the registered owner of the domain name <bruus-jensen.dk> or on what basis he has the right to use that email address. Nor does he challenge the Respondent’s ownership of the domain names on the basis of a conflict with this registered name.

The Complainant also argues that he has acquired valuable goodwill and such enforceable common law rights in his own name as to allow him to own that name as a domain name. There are UDRP decisions which have found that common law trademark rights exist in a person’s name. The decisions of WIPO Case No. D2001-0122, Louis de Bernieres v. Old Barn Studios Limited and WIPO Case No. D2000-0235, Jeanette Winterson v Mark Hogarth established that such a right exists, but only in relation to the operation of the common law, which recognized through the action for passing off, unregistered trademark rights. To succeed the Complainant has to show that common law trademark rights do exist under Danish law and that he has sufficient rights to ground an action equivalent to the common law action of passing off.

Even if there was evidence of the existence of the requisite rights under Danish law, there is no evidence that the Complainant has acquired such rights in his use of his name through any special trade usage. The cases relied on by the Complainant, namely, WIPO Case No. D2002-1180, Sibyl Avery Jackson v. Jan Teluch and WIPO Case No. D2000-0210, Julia Fiona Roberts v. Russell Boyd are easily distinguished. In the first matter the Panel accepted that the evidence established that Sibyl Avery Jackson “uses her name in the creation, promotion and, commercial exploitation of her work and that name identifies the work to customers.” The second matter involved the famous, Oscar winning, American actress, Julia Roberts. The Panel decided that registration of her name as a trademark or service mark was not necessary as the name “‘Julia Roberts’ has sufficient secondary association with [the] Complainant that common law trademark rights do exist under United States trademark law.”

In WIPO Case No. D2001-0540, Israel Harold Asper v. Communication X Inc., a leading decision on the registration of a domain name of a famous person’s name by someone unconnected with that person, it was said by the Panel that:

“There are two dominant concerns inducing the protection of marks. The first is the protection of consumers who associate the name with goods and services of a known source and quality. The second is to preserve the value of goodwill built up over time by the owner of the mark. In the case of those (primarily entertainers and professional athletes) who sell their goodwill to others in the marketing of goods and services not directly associated with the holder, the first rationale, above, is likely to be dominant. This is much less likely to be the case with other personal name marks, particularly those, which have not obtained a secondary meaning. It is the view of this Panel that the name of the Complainant falls within the latter category.”

In Ahmanson Land Company v. Save Open Space and Electronic Imaging Systems, WIPO Case No. D2000-0858 and Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859, the Panels found that trade names or marks that have, through usage, become distinctive of the users’ goods or services in commerce may be protectable as they have acquired a “secondary meaning.” In the former case, it said: “A mark comprising a personal name has acquired secondary meaning if a substantial segment of the public understand the designation, when used in connection with services or a business, not as a personal name, but as referring to a particular source or organization.”

This is not the case here. There is no information available to the Panel that the Complainant has acquired such a secondary meaning in his personal name as a reference to a particular source or organization. This is also clear from the fact that the Complainant chose to register, some two years before the Respondent registered the contested names, the domain names <jbjgroup.dk> and <jbjinvest.dk> for use by his companies. The Complainant’s web sites located at “www.jbjgroup.dk” and “www.jbjinvest.dk” offer only the same animated graphic of the company logo and its address and contact details. No information about the company’s primary business activities or services is provided.

Pursuant to the Danish Act on Personal Names and the statutory order no. 11031, the Complainant asserts that the surname Bruus-Jensen is a protected name. But he does not state that it is his registered name or that he has caused the name to be so protected. Nor is any evidence provided as to how the name came to be registered. It is not suggested that there is any uniqueness in the name such that the Complainant is the only person who could use it and the Act presumably gives the Complainant no greater rights to use that name than any other Danish person who shares the same surname.

As I understand the section of the Danish Act on Personal Names for which a translation has been provided, its intent is to prohibit the unauthorized use of names for which registration has been granted by a person who is not legitimately known by that name or where the use of a similar name would cause confusion. Although the Complainant argues that the action of using a registered surname carried by persons resident in Denmark is confusing and is therefore prohibited, he provides no evidence of any action that has been taken by him to prevent that unauthorized usage.

The Panel finds that the Complainant did not use his personal name as a trading name or as a reference to a service or business and was not sufficiently identified by any mark identical to his personal name to be able to make a claim for the use of his name as a secondary trademark. The Complainant has failed to satisfy the first requirement of proving that the Respondent is the registrant of a domain name that is confusingly similar to a registered or common law trademark of the Complainant.

B. Rights or Legitimate Interests

As the Respondent has not provided any submissions, there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain names.

The Respondent has not used the domain names in connection with any bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. Nor has he, either as an individual or a business been commonly known by the domain names, within the meaning of paragraph 4(c)(ii).

Whether he is making a legitimate non-commercial or fair use of the domain names, without intent for commercial gain, is another matter. According to the Complainant, the Respondent has registered the domain names primarily for the purpose of posting information about Complainant’s “person, businesses and business methods”. That information may or may not be accurate, as no actual material has so far been posted and may or may not be a legitimate and useful exercise. I have no evidence or authority to canvass the merits of the parties underlying dispute. That assessment may come later, when the actions which have been instituted by the Complainant are finalised. The Panel makes no findings under this element.

C. Registered and Used in Bad Faith

The Policy provides in paragraph 4(b) that certain circumstances, “in particular but without limitation,” will be evidence of bad faith registration and use of a domain name.

According to the submission of the Complainant, the Respondent makes it clear in the message posted on the internet sites located at the domain names <www.bruus-jensen.com> and <www.joacimbruus-jensen> that the Respondent is not purporting to be the Complainant, but is writing about him and his business. The Respondent is not utilizing the Complainant’s reputation to attract Internet users to the registrant’s website, for commercial gain. His motives are clearly stated to be otherwise. There is therefore, little likelihood of confusion with the “Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or the location of a product or service on its website or location” as provided in paragraph 4(b)(iv).

However, as I have already found for the Respondent on a matter required to be proven by the Complainant, I find it unnecessary to further consider whether in accordance with the criteria set out under paragraphs 4(b)(iii) and (iv) of the Policy that the Respondent registered, and is using the domain name in bad faith.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.

 


 

Derek M. Minus
Sole Panelist

Dated: September 29, 2004

 

Источник информации: https://internet-law.ru/intlaw/udrp/2004/d2004-0458.html

 

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