Uhrenholt A/S v. FILLIP NIELSEN
Claim Number: FA1511001646444
Complainant is Uhrenholt A/S (“Complainant”), represented by Ania Pacyk Nielsen of Plesner Law Firm, Denmark. Respondent is FILLIP NIELSEN (“Respondent”), Denmark.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <uhrenholtas.com>, registered with eNom, Inc.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 11, 2015; the Forum received payment on November 11, 2015.
On November 11, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <uhrenholtas.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 November 12, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 2015 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@uhrenholtas.com. Also on November 12, 2015, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 7, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the UHRENHOLT mark in connection with its business as a Danish food company operating in more than 80 countries. Complainant’s rights in the UHRENHOLT mark stem from extensive registrations with various trademark agencies including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,749,979, registered February 16, 2010). Respondent’s disputed <uhrenholtas.com> domain is confusingly similar to the UHRENHOLT mark. The domain includes Complainant’s whole mark and adds the letters “as” which stands for “aktieselskab” and means a stock based corporation in Danish similar to the letters “INC” in English. The domain also adds the generic top-level domain (“gTLD”) “.com” which does not distinguish the disputed domain.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. WHOIS information identifies Respondent as “Fillip Nielsen,” and Complainant has not granted Respondent authorization or any licensing arrangement to use its mark. Further, Respondent’s use of the disputed domain name to send fraudulent emails from the disputed domain while posing as Complainant, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has registered and is using the disputed domain name in bad faith. Respondent’s use of the disputed domain name indicates that Respondent had actual knowledge of the UHRENHOLT mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Uhrenholt A/S of Denmark. Complainant is the owner of domestic and international registrations for the mark UHRENHOLT, which it has used continuously since at least as early as 2008 in connection with its production of a wide variety of food and grocery goods and services.
Respondent is Fillip Nielsen, of Denmark. Respondent’s registrar’s address is indicated as Kirkland, WA, USA. The Panel notes that the disputed domain name was created on or about March 1, 2015.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims that its rights in the UHRENHOLT mark stem from extensive registrations with various trademark agencies including the USPTO (e.g., Reg. No. 3,749,979, registered February 16, 2010). Prior panels have held that registration with the USPTO is sufficient to demonstrate a complainant’s rights in a mark. See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)). The Panel here finds Complainant’s registrations satisfy the requirements of Policy ¶ 4(a)(i).
Complainant argues that Respondent’s disputed <uhrenholtas.com> domain is confusingly similar to the UHRENHOLT mark. The domain includes Complainant’s whole mark and adds the letters “as” representing the word “aktieselskab” which in Danish means a stock based corporation similar to the letters “INC” in English. The domain also adds the generic top-level domain (“gTLD”) “.com.” Previous panels have found that the gTLD “.com” is not relevant to an analysis of confusing similarity. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). Similarly the addition of the term “INC” to a mark in a domain does not differentiate the domain from the mark to which the letters are added. See Venator Group Retail Inc. v. Syed Hussain dba MIC, FA 100706 (Nat. Arb. Forum, Dec. 7, 2001) (establishing that "the addition of "INC" to Complainant's FOOT LOCKER mark does not distinguish the disputed domain name from the Complainant's mark"). The Panel here finds that the disputed domain name is confusingly similar to Complainant’s UHRENHOLT mark.
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Complainant has met this burden.
Complainant claims that Respondent has no rights or legitimate interests in the disputed domain name. In support Complainant contends that Respondent is not commonly known by the disputed domain name based on WHOIS information identifying Respondent as “Fillip Nielsen,” as well as a lack of authorization or licensing arrangement from Complainant. The WHOIS information identifying Respondent as “Fillip Nielsen” does not resemble the disputed domain name. Past panels have found a respondent to be not commonly known by a disputed domain based on WHOIS information, a lack of authorization from a complainant, and no other information in the record to the contrary. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The Panel here finds that Respondent is not commonly known by the disputed domain name.
Complainant further contends that Respondent’s use of the disputed domain name, to send fraudulent emails from the disputed domain while posing as Complainant, shows a lack rights or legitimate interests to the Respondent. Prior panels have found a respondent lacks rights or legitimate interests in a disputed domain name where the respondent impersonated a complainant through fraudulent emails. See In Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA 1550388 (Nat. Arb. Forum May 5, 2014) (finding that the respondent’s use of an email associated with a disputed domain in an attempt to impersonate complainant and defraud suppliers is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). The Panel here finds that Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
The Panel notes that although Complainant has not made arguments under Policy ¶ 4(b), such arguments are not mandatory under the Policy—so long as Complainant shows bad faith use and registration in some manner. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
However, in this case Complainant has failed to plead or offer any evidence in support of its contentions that Respondent registered and used the domain name in bad faith. The Panel will not infer satisfaction of Policy ¶ 4(a)(iii) by Complainant based simply upon Complainant’s contentions alone. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith). The Panel here finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii).
The Complainant has NOT proven this element.
Because the Complainant has NOT established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be DENIED.
Accordingly, it is Ordered that the <uhrenholtas.com> domain name REMAIN WITH Respondent.
Darryl C. Wilson, Panelist
Dated: December 21, 2015
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