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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nilfisk-Advance A/S v. Scott Fairbairn
Case No. D2009-1200
1. The Parties
The Complainant is Nilfisk-Advance A/S of BrГёndby, Denmark, represented internally.
The Respondent is Scott Fairbairn of Gaithersburg, Maryland, United States of America.
2. The Domain Name and Registrar
The disputed domain name <nilfisk.biz> (the "Domain Name") is registered with 1&1 Internet AG.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 10, 2009. On September 11, 2009, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the Domain Name. On September 14, 2009, 1&1 Internet AG transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 September 18, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 8, 2009. In light of a communication by Respondent, the Complainant on September 29, 2009 requested a suspension of the proceedings for thirty days. On the same day the Center suspended the proceedings until October 29, 2009. After a request of the Complainant thereto, the Center on October 28, 2009 re-instituted the proceedings. The new Response due date was November 6, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent`s default on November 9, 2009.
The Center appointed Fleur Hinton as the sole panelist in this matter on November 19, 2009. 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 is a Danish company operating internationally. It has a worldwide business in cleaning machines and equipment including vacuum cleaners, scrubbers, dryers and road sweepers for the domestic, commercial and professional markets. It employs 5,000 people internationally and in the first quarter of 2009 had a turnover of EUR 173,000,000.
Its trademark NILFISK is registered in 56 countries with its earliest American registration dating from 1960. Its trademark NILFISK was first registered in Denmark in 1910. It has a substantial international reputation.
The date of registration of the Domain Name is September 21, 2008. The Complainant has registered "www.nilfisk." in 61 variants and "www.nilfisk" in combination with other elements in 237 variants.
5. Parties` Contentions
The Complainant argues in relation to the first of the 3 grounds which need be established under the UDRP policy that the Domain Name is identical to the Complainant`s trademark NILFISK. When used as the distinguishing component of the Complainant`s portfolio of domain names incorporating NILFISK with variants, the Respondent`s use of the Domain Name is confusingly similar.
In relation to the second ground, that the Respondent has no rights or legitimate interests in respect of the Domain Name, the Complainant contends that when it first became aware of the website attached to "www.nilfisk.biz", it showed "Russian Ladies" as escorts. The Complainant then sent a cease and desist letter, after which the <nilfisk.biz> website was re-directed by the Respondent to the Complainant`s own Danish website. The Complainant argues that both of these factors demonstrate that the Respondent does not carry on business under the Domain Name and has no right to use the Domain Name.
The third ground upon which the Complainant relies is that the Domain Name was and is used in bad faith. In this regard, the Complainant states that the Respondent has no right to register the Domain Name and no right to use it under licence from the Complainant.
In addition, the Respondent has used the Domain Name <nilfisk.biz> to promote a website whose alleged purpose is arranging dates with women living in the Russian Federation so as to generate pay-per-click income. The fact that such use of the Domain Name has now ceased, so that the people visiting the <nilfisk.biz> website are re-directed to the Complainant`s own website does not have the effect of changing the use being made of the Domain Name from bad faith use into good faith use. This is because the Respondent`s use of <nilfisk.biz> is still out of the control of the Complainant, the owner of the trademark NILFISK.
The Respondent did not reply to the Complainant`s contentions.
6. Discussion and Findings
In order to reach a decision it is necessary to consider whether the evidence provided and arguments made by the Complainant satisfy the criteria of paragraph 4(a) of the URDP which requires that the Complainant show:
a) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
b) that the Respondent has no rights or legitimate interests in the domain name; and
c) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is holder of the trademark NILFISK. The Domain Name incorporates the NILFISK trademark in its entirety. The addition of the suffix ".biz" is non-distinctive because it is required for the registration of the domain name.
The Panel finds that the Domain Name is at least confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The burden of proof in respect of each of the 3 criteria of paragraph 4(a) of the URDP is on the Complainant. The Complainant is obliged to establish a prima facie case that the Respondent has no rights or legitimate interests in the Domain Name and the burden then shifts to the Respondent to demonstrate its rights or legitimate interests. Where the Respondent fails to lodge evidence of its rights or legitimate interests, as the Respondent here has failed to do, the Complainant has satisfied paragraph 4(a)(ii) of the UDRP. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1.
The Panel finds that on the record the Respondent has no rights or legitimate interests in the Domain Name and that the Complainant therefore has satisfied the second criterion of paragraph 4(a) of the URDP.
C. Registered and Used in Bad Faith
In order to establish its case under paragraph 4(a)(iii) of the UDRP the Complainant must show that the Respondent registered the Domain Name in bad faith and is using it in bad faith. The UDRP gives examples of the types of activities which may be taken to indicate that a domain name has been registered and is being used in bad faith. One of those circumstances is that the Respondent, by registering the Domain Name, has "intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [its] web site or location or of a product or service on [its] web site or location".
On 26 February 2009 the Respondent had issued against it a decision by a panelist of the National Arbitration Forum (Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Scott Fairbairn, NAF Claim No. 1242940). The complainant in that matter was the well-known Japanese company Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation ("Toshiba"). In that case Toshiba had lodged the complaint based on Mr. Fairbairn`s registration of the domain name <toshibahtv.biz>. The website to which visitors were taken was for the introduction of American men and Russian women and apparently provided links to other similar websites offering introductions.
The panelist in that case found that the domain name had been registered in bad faith on the basis that "Internet users are likely to become confused as to Complainant`s affiliation or sponsorship of the disputed domain name and resolving website. Respondent is seeking to profit from this confusion by hosting pay-per-click links on the resolving website."
In the present case also the Respondent ran a website for arranging dates with Russian women, most likely in order to benefit from pay-by-click advertising. The Complainant sent the Respondent 3 cease and desist letters: the first on February 20, 2009 both by e-mail and registered mail, and reminders by e-mail on March 17, 2009 and June 3, 2009.
The Panel finds that the registration of the Domain Name was obtained in bad faith.
Although no response was received by the Respondent, the material relating to the dating of Russian women was removed and the website under the Domain Name itself directed to the Complainant`s own website "www.nilfisk.dk". The question, therefore, is whether the Respondent`s action in removing the Russian dating material and re-directing the Domain Name to the Complainant`s own Danish website prevents the Complainant from succeeding under 4(a)(iii) of the UDRP. This could only be the case if, although the initial registration was obtained in bad faith, the Respondent, by changing his mode of use, has turned the registration, obtained in bad faith, into use in good faith.
The Panel finds that this registration, obtained in bad faith, cannot now be found to constitute use in good faith on the basis that it is currently pointed towards the Complainant`s Danish website (or indeed any other of the Complainant`s websites). The use by the Respondent of the Complainant`s trademark without its consent is use in bad faith. This would be the case even if the Respondent were never to direct the Domain Name away from the Complainant`s website. The concept that a party other than the owner of a very well-known trademark can control use of a domain name incorporating that trademark is contrary to the principles of the UDRP.
The Panel finds that the Domain Name was registered and is being used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <nilfisk.biz> be transferred to the Complainant.
Dated: December 3, 2009