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WorldNames, Inc. , NU Domain Ltd v. Marcel & Nora Uithoof [2005] GENDND 1295 (19 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

WorldNames, Inc. , NU Domain Ltd v. Marcel & Nora Uithoof

Case No. D2005-0480

1. The Parties

The Complainants are WorldNames, Inc., NU Domain Ltd, Medfield, Massachussetts, United States of America, represented by Groth & Co KB, Sweden (hereinafter “Complainants”).

The Respondents are Marcel & Nora Uithoof, Dordrecht, Netherlands (hereinafter “Respondents”).

2. The Domain Name and Registrar

The disputed domain name <nudomain.com> is registered with NamesDirect.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2005. On May 3, 2005, the Center transmitted by email to NamesDirect.com a request for registrar verification in connection with the domain name at issue. On May 12, 2005, NamesDirect.com transmitted by email to the Center its verification response confirming that the Respondents are 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 Complainants filed an amendment to the Complaint on May 31, 2005. 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 Respondents of the Complaint, and the proceedings commenced on June 6, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 26, 2005. The Response was filed with the Center on June 26, 2005.

The Center appointed Nasser A. Khasawneh as the sole panelist in this matter on July 5, 2005. 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 Complainants own and operate the .NU ccTLD, and have registered the trademark .NUDOMAIN in the United States of America (date of registration being February 1, 2005). The Complainant/s also registered the trademark .NU DOMAIN as a Community trademark (date of filing being June 15, 1999, and date of registration November 13, 2000).

The Respondents are using the disputed domain name in relation to a site in which they request visitors to help them in purchasing a boat.

5. Parties’ Contentions

A. Complainant

The Complainants contends, inter alia, that:

- The domain name is identical or confusingly similar to the aforementioned trademarks of the Complainants. According to the Complainants, the relevant part of the Domain Name is <nudomain>, which is identical or almost identical to Complainant’s registered trademarks .NUDOMAIN and .NU DOMAIN;

- The Respondents have no rights or legitimate interests in respect of the disputed domain name. The Complainants make the following arguments, inter alia, in support of this contention: The Complainants’ trademark rights clearly predate the Respondents’ domain name registration, the Respondents are only using the site of the disputed domain name to request donations from the public to finance their “dream” to escape from the crowd, and the Respondents are advertising “gambling” and other banners on their site presumably to make money;

- The registration and use of the disputed domain name is in bad faith. The Complainants make the following arguments, inter alia, in support of this contention: The disputed domain name was registered on June 26, 2001, (after the date of registration of the Complainants’ Community Trademark), actual or constructive knowledge in the Complainants’ trademark rights supports a finding of bad faith, the Respondents were the holders of various “.nu” domain registration from June 1999 to June 2002 (thereby confirming the Respondents’ knowledge of the Complainants’ marks at the time of registration of the disputed domain name), the Complainants’ trademark and trade name are well known in the Netherlands and Scandinavian countries, and the Respondent asked for a price quotation when first approached by the Complainant regarding a potential transfer of the disputed domain name.

B. Respondent

The Respondents submit, inter alia, that:

- The disputed domain name was not registered in bad faith, as it was registered for one of the Respondents (Nora Uithoof). The first and last name of Ms. Uithoof carry the initials N and U;

- The disputed domain name was not registered on June 26, 2001, as claimed by the Complainants. The actual registration date, according to the Respondents, is November 21, 1999. The Respondents content that, on that latter date, the Respondent did not have any legal rights as the Community trademark was only registered on November 13, 2000.

6. Discussion and Findings

A. Identical or Confusingly Similar

There is no question that the disputed domain name is identical or confusingly similar to the trademarks registered and used by the Complainants. The Complainants’ registered Community Mark is “.NU DOMAIN” and the trademark registered in the United States is “.NUDOMAIN.” The disputed domain name <nudomain.com> is identical to the Complainants’ registered trademarks. The letters “nudomain” are contained in the precise same order in the Complainants’ trademarks and the disputed domain name. The only difference is that the Complainants’ marks also include a period “.” before the alphabetical letters.

The Respondents had focused their defense on the argument that the disputed domain name was actually registered on November 21, 1999, while the Complainants’ Community Trademark was only registered on November 13, 2000. The Panel carefully considered this line of defense, but found it unconvincing. There are two main reasons for the failure of the Respondents’ arguments:

There are a number of facts proving that the Complainants had acquired trademark rights before the registration of the disputed domain name by the Respondent. First of all, the application date for the Complainants’ mark is June 15, 1999. Article 46 of the Council Regulation (EC) No 40/94 of December 20, 1993, on the Community trade mark reads as follows:

“Community trade marks shall be registered for a period of ten years from the date of filing of the application. Registration may be renewed in accordance with Article 47 for further periods of 10 years.”

In other words, the effective date of registration of the Complainants’ Community mark is June 15, 1999. The above Community Trademark rule is reflected in many national jurisdictions (for example, the United Kingdom), where a trademark is deemed registered as of the filing date of the application. This means that the effective date of registration of the Complainants’ Community Trademark (June 15, 1999) predates the date of registration of the disputed domain name by over 5 months.

Furthermore, the Complainants have established, in the accompanying documents of its Complaint, that it had acquired common law trademark rights in the words “.nudomain” as far back as the fall of 1997, with various press releases announcing the launch of the “.nu” domain name registration service. The Panel conducted a brief online search which also showed that the “.nu” domain name service was indeed announced in the press in 1997;

Even if the Respondent had shown that its registration of the disputed domain name predated the registration date of the Complainants’ marks, the Respondent’s arguments would still not have been successful. In this regard, the Panel is guided by the consensus view in previous UDRP Decisions, as quoted in the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions,” that “registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity. The UDRP makes no specific reference to the date of which the owner of the trade or service mark acquired rights”.

Consequently, the Panel finds that the Complainants have established the first element of the Policy.

B. Rights or Legitimate Interests

The Panel visited the site of the disputed domain name. The Panel found that the content of the site is exactly as depicted in the Complaint. The Respondents are using the site to explain to visitors their “dream” of buying a boat and sailing away from the “crowds”. The following statements are taken directly from the site of the Respondents (when visited by the Panel):

“Our dream is to escape from the crowd and be on our own on the moments we desire. This is reflected by the holiday destinations we choose.”

“So, if you have some "spare money" for which you don't know any destination, please do not hesitate to support us.”

The Respondents are using the site to convince any visitor, any passer by as it where, to make a donation to finance a self-fulfilling objective. There is no consideration whatsoever for the visitor, in return for making a donation. The site is simply appealing to the goodwill of strangers to finance the Respondents’ sailing project.

The Panel considered whether such use by the Respondents meant that they had “rights” or “legitimate interests” in the disputed domain name. First of all, there does not seem to be any offering of value in the content of the Respondents’ site. What is actually on offer? What could consumers who interact with this site get out of it? As mentioned above, there does not seem to be any consideration for the money that visitors are asked to “donate” or give to the site. The site is simply appealing to the generosity of visitors to help finance the Respondents’ dream, a dream that has nothing to do with the interests of any visiting consumer.

It is the Panel’s view that the Respondents are running the site in the hope of attracting a very large number of visitors to their site. The Respondents naturally understand that the large majority of visitors would have no interest whatsoever in financing a holiday-like project for the Respondents. However, the Respondents are hoping that a tiny minority of the visitors may consider paying a very small amount to the Respondents. If you attract a huge number of visitors to the site, it is likely that a tiny minority would consider living their dreams of escape vicariously through the Respondents. With a huge visitor base, anything is possible.

It is also the Panel’s view that the Respondents are trying to secure large traffic to their site through the fame of the Complainants’ marks, by creating a likelihood of confusion with the Complainants’ domain name registration service.

There is nothing in the facts and circumstances that point to the Respondents’ having legitimate rights or interests in the disputed domain name. One is guided in this regard by paragraph 4(c) of the Policy which lists three circumstances, each of which could prove the existence of rights or legitimate interests. None of these circumstances exist in this case. There is nothing to suggest that the Respondents are using the disputed domain name in connection with a bona fide offering of goods or services, that they are commonly known by the disputed domain name or that they are making legitimate noncommercial or fair use of the domain name. In fact, the record establishes, beyond reasonable doubt, that the opposite of each of these circumstances applies in this case.

Consequently, the Panel finds that the Complainants have established the second element of the Policy.

C. Registered and Used in Bad Faith

The Panel agrees with the Complainants that the Respondents must have had knowledge of the “.nu” domain name registration service at the time that the Respondents registered the disputed domain name. The level of press activity around the business of the Complainants suggests that such a conclusion is the most reasonable under the circumstances. The Complainants also contend that the Respondents had registered four .nu domain name registrations between June 1999 and June 2002. However, the Complainant did not submit any supporting documents regarding this claim and, as such, the Panel cannot rely on this allegation in particular.

Both parties acknowledge that there was an email exchange between the Complainants and the Respondents regarding the transfer of the disputed domain name and that, in one such exchange, the Respondents asked the Complainants: “What is it worth to you?” The Panel sees this exchange as indicative of a circumstance showing that the Respondent may have primarily acquired the disputed domain name primarily for the purpose of selling or otherwise transferring the domain name registration to the Complainant – within the meaning of paragraph 4 (b)(i) of the Policy.

Most importantly, the Panel finds that paragraph 4 (b)(iv) applies in particular to the case at hand. This paragraph states that the following circumstance, if found to apply by the Panel, shall be evidence of registration and use in bad faith:

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.”

As mentioned above, the Respondents are using the site of the disputed domain name to attract traffic to their site with the intention of securing money donations to finance their dream of buying and sailing a boat. Upon reviewing all the available facts and statements of both parties, the Panel is convinced that the Respondents are using the disputed domain name in order to make commercial gains, and that they are attempting to secure traffic to their site for that purpose by creating a likelihood of confusion with the Complainants’ trademarks.

Consequently, the Panel finds that the third test of the Policy is met, and the disputed domain name was registered and is being used in bad faith.

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, <nudomain.com>, be transferred to the Complainants.

Nasser A. Khasawneh
Sole Panelist

Dated: July 19, 2005