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P. Taabbel & Co., Hanstholm A/S , Erik Taabbel Fiskeeksport A/S v. Henrik Olsen [2004] GENDND 633 (6 May 2004)

1. The Parties

The Complainant is P. Taabbel & Co., Hanstholm A/S of Hanstholm, Denmark and, Erik Taabbel Fiskeeksport A/S of Skagen, Denmark, represented by Hjulmand & Kaptain, Denmark.

The Respondent is Henrik Olsen, Lejre, of Denmark.

2. The Domain Name and Registrar

The disputed domain name <taabbel.com> is registered with CSL Computer Service Langenbach GmbH dba Joker.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 9, 2004. On March 9, 2004, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the domain name at issue. On March 10, 2004, CSL Computer Service Langenbach GmbH dba Joker.com 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, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 12, 2004. The Center verified that the Complaint together with the amendment to 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 March 17, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was April 6, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 7, 2004.

The Center appointed Knud Wallberg as the sole panelist in this matter on April 23, 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.

In the course of the proceedings the Respondent has argued that any communication to him should be in Danish just as he has stated that he is not bound by the UDRP provisions. The Center has rightly pointed out that the Registration agreement with the Registrar is in German and English, and that Complainant has chosen the option to run the proceedings in English. There is also no doubt that the Respondent is bound by the Policy, the Rules and the Supplemental Rules. A decision will thus be made in the case, and the decision will be in English.

4. Factual Background

The founders of the two complainants were brothers. Coming from the small town, Taabbel, in the southern part of Thy, Western Jutland, the family took the name of Taabbel. The name was acquired at the beginning of the 20^th century. In Denmark only the aforesaid family is entitled to use the name of Taabbel.

The first firm named Taabbel was founded in 1896, in Thisted, Western Jutland. The Company specialised in smoking eels and soon became the largest supplier on the North European market. As it appears from the annexes, the name of Taabbel was synonymous with the Company ever since its foundation. The Company's, which is now a public limited company (Complainant 1), present product assortment, comprises of plaice, pollack, codfish and hake.

Complainant 2, Taabbel Skagen was founded in 1948. On the foundation of the Company the business consisted in hand filleting, packing and wholesale selling of fish, mainly for the Danish market, but in 1955, the second Complainant commenced exporting. The name of Taabbel was used since the start-up of the business, and accordingly a trademark right to the said name was created at that time. Throughout the years the Company has expanded currently, which expansion inter alia resulted in an election by the Danish financial newsmagazine "Børsens Nyhedsmagasin" of the Company in 1992, as a master in expansion as the ninth fastest growing companies in Denmark. The Company specialised in pickled, salted and spicy herrings in a number of variations, and approx. 85 per cent of its total production, based on approx. 35,000 tons of herrings a year, is being exported. The Company is among the largest companies specialising in herrings in Denmark and Europe. Exports mainly go to Europe, but also to Asia, particularly including Japan and China.

5. Parties' Contentions

A. Complainant

As the Complainants are both large-scale companies within their field of business, it is obviously disadvantageous for them not to have any access to apply the domain name <taabbel.com> for commercial purposes, and the fact that several potential trading partners will be or have been trying in vain to look for the Complainant's homepage on the internet under the name "www.taabbel.com" should be taken into account. Further, it is obviously detrimental that the homepage "www.taabbel.com" comes up with a homepage with pornographic material.

The Complainants have in vain tried to obtain a registration of the domain name <taabbel.com>", but in so attempting it turned out that this was impossible, as the name had already been registered. As it will appear from the transcript from Whois Search Result, the Respondent has registered the name <taabbel.com>. A printing transcript from "www.taabbel.com was attached to the Complaint, from which appears that the said address is applied for a homepage containing pornographic material.

The Respondent has further registered other domain names, from which it. appears that the Respondent has registered such other domain names as <launis.dk>, <skagarak.dk> and <jarnes.dk>, which are all large-scale or medium-sized companies in Northern Jutland. The respondent has no connection to the said companies and has no connection either to the name of Taabbel, either in terms of family or business.

The Complaint contains rulings from the Danish Complaints Board for Domain Names concerning the Respondent, whereby the Board decided that the registration by the Respondent was in conflict with current Danish legislation.

The Respondent has further registered the domain name <taabbel.dk>. The Complainants have already filed a complaint in this matter before the Danish Complaints Board for Domain Names. After filing the complaint the Respondent has redirected the Domain Name to a site containing pornographic material proving that harassment is a purpose of the Respondent.

The Complainants have previously corresponded with the Respondent in relation to the unlawful registration of the domain name <taabbel.dk>, and in this connection the Respondent declared towards the Complainants that he intended to sell the domain name, inviting the Complainants to make a counteroffer. The offer for sale and the countless number of registrations made by the Respondent proves the existence of domain name piracy.

The grounds on which the complaint is made:

- The Complainants acquired a trademark right to the name of Taabbel when starting to use the said name, see S. 3, 1, 2 of the Danish Trademark Act;

- The Complainants have a normal interest in the domain name <taabbel.com>, as the name originates from a family name borne by several leading members and shareholders and as the Complainants have a considerable commercial interest in applying the company name and the trademark TAABEL also as a domain name under the Top level domain ".com";

- The Respondent is exercising piracy within the field of domain names;

- The Respondent did not previously have any and still has no loyal interest in the registration of the domain name <taabbel.com>;

- The registration by the Respondent is detrimental to the Complainants' goodwill, as the registration prevents the Complainants from applying their trademark/brand name as a domain name;

- The use and registration by the Respondent of the domain name is in conflict with S 1 and S 5 of the Danish Marketing Act, as the Defendant offers the Complainants to purchase the domain name;

- The Respondent when applying <taabbel.com> is exercising harassment against the Complainants;

- The use by the Respondent of the domain name is in conflict with S 4(1) of the Danish Trademark Act;

- The use and registration by the Respondent is contrary to S 16(2) of the Danish Name Act;

- The use and registration by the Respondent is contrary to public policy;

- The Respondent has registered the domain name without having any personal or commercial attachment or connection to the said name;

- The registration by the Respondent of the domain name was made in bad faith; and

- The Respondent cannot have any and has no loyal interest itself in applying the domain name.

The Respondent:

- has no loyal interest in the name Taabbel neither personally nor professionally;

- has registered a large number of domain names which conflict with the rights of several companies;

- has no loyal interest in any of the aforementioned names;

- bad faith has been established by the Danish Complaints Board for Domain Names on several occasions;

- is exercising harassment when applying <taabbel.com> and <taabbel.dk>, and

- has tried to sell the domain name taabbel.dk to the Complainants.

B. Respondent

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

6. Discussion and Findings

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

In accordance with Paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements are satisfied:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences there from, as it considers appropriate.

A. Identical or Confusingly Similar

The evidence presented by the Complainant demonstrates without doubt that the Complainants have acquired trademark rights in the name TAABBEL through long time use, cf. Sect. 3, 1, 2 of the Danish Trade Marks Act.

The domain name <taabbel.com> is identical to the Complainants mark, and consequently the requirement of Paragraph 4(a)(i) is met.

The Panel notes, that it is not within its powers to decide on whether the registration and use of contested domain name is also in breach of provisions in other legislative acts than the Trade Mark Act.

B. Rights or Legitimate Interests

The Complainant alleges that the Respondent has no rights or legitimate interest in the domain name. The Respondent has not rebutted this allegation and in view of the Panel it is unlikely that any such rights or interest may exist.

Therefore, the requirement of Paragraph 4(a)(ii) is also met.

C. Registered and Used in Bad Faith

The Panel finds that it has been established that Respondent is engaged in a pattern of registering domain names containing trade marks of other companies. Further, the Respondent has offered to sell the contested domain name to the Complainant. The domain name has also been in active use for a web page containing pornographic material.

The Panel therefore finds that the requirements of Paragraph 4(a)(iii) are also met.

7. Decision

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 <taabbel.com> be transferred to the Complainants.

Knud Wallberg
Sole Panelist

Dated: May 6, 2004