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Bang & Olufsen a/s v. Unasi Inc. [2005] GENDND 1644 (7 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bang & Olufsen a/s v. Unasi Inc.

Case No. D2005-0728

1. The Parties

The Complainant is Bang & Olufsen a/s, of Denmark, represented by Sandel, Lųje & Wallberg, Denmark.

The Respondent is Unasi Inc., Panama.

2. The Domain Names and Registrar

The disputed domain names: <bag-olufsen.com>, <bagolufsen.com>, <bang-olusen.com>, <bangolusen.com> are registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2005. On July 11, 2005, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain names at issue. On July 12, 2005, iHoldings.com Inc. d/b/a DotRegistrar.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. 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 18, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 7, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 15, 2005.

The Center appointed Peter G. Nitter as the sole panelist in this matter on August 24, 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 Complainant, Bang & Olufsen a/s (Bang & Olufsen), is a Danish based manufacturer of audio-visual apparatus and instruments and related equipment, telecommunication equipment and medical apparatus. Bang & Olufsen was founded in 1925, and has been operating since then. The company is listed at the Copenhagen Stock Exchange.

Complainant is the holder of several trademarks registered worldwide including the BANG & OLUFSEN mark. Complainant has registered the BANG & OLUFSEN mark in at least 103 different countries. The mark is also registered in the home country of the Respondent, Panama, since 1979.

Complainant has used the BANG & OLUFSEN mark as well as its other trademarks for decades and the marks have acquired a high reputation.

Complainant uses www.bang-olufsen.com as it main web page. In addition the Complainant is the holder of several other domain names containing the BANG & OLUFSEN mark.

5. Parties’ Contentions

A. Complainant

The mark BANG & OLUFSEN is used in connection with all of the Complainant’s products and services, including home entertainment systems, radios, televisions, loudspeakers, amplifiers, telephones, accessories to the mentioned equipment, software, medical apparatus, retail services and on-line web services.

The disputed domain names are confusingly similar to the BANG & OLUFSEN mark. The domain name system does not allow the use of the “&” sign as part of a domain name. Complainant has therefore registered domain names using variations of the phase “bang-olufsen”.

Complainant’s main web page www.bang-olufsen.com is promoted on all marketing materials published by Complainant and on all of the other web pages belonging to Complainant.

The disputed domain names only differ from the registered trademark of the Complainant by omission of the letter “n” in <bag-olufsen.com> and <bagolufsen.com> and the letter “f” in <bang-olusen.com> and <bangolusen.com>.

The Complainant contends that the disputed domain names must be deemed to be confusingly similar to Complainant’s mark.

Complainant refers to other WIPO cases, including Reuters Limited v. Global Net 2000 Inc., WIPO Case No. D2000-0441, and claims this case to be a clear case of “typo-squatting”.

Complainant has not authorized or in other ways permitted Respondent to use its registered trademark. Respondent is not an authorized dealer of Complainant’s products, nor does Respondent seem to be engaged in the retail business of selling products or services of the same kind as those offered by Complainant.

Respondent is using the domain names as a portal with presentation of, and links to, different products, some of them compete with those of the Complainant. On the mentioned portal website there are also pop-ups. This use cannot be described as a bona fide or fair use.

For the foregoing reasons Respondent has no rights or legitimate interests in the disputed domain names.

Complainant’s mark has been registered in Panama for more than 25 years and has been used there for several years. Complainant has a store in Panama City.

The mark consists of the two family names of the founding fathers Complainant. It is therefore inconceivable that Respondent has registered the domain names without knowledge of Complainant’s rights.

Respondent is using the domain names for Respondent’s own website which trigger banner ads. Complainant uses its main web page www.bang-olufsen.com, which is almost identical to the disputed domain names.

Registering and using the disputed domain names cannot be a coincidence but can only be done with full knowledge of Complainant and its mark.

Complainant claims that the Respondent intentionally attempts to attract for commercial gain Internet users to the Respondent’s 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 the Respondent’s website or location or of a product or service on Respondent’s website or location.

Consequently the Complainant claims that the disputed domain names have been registered and are being used in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain names are <bag-olufsen.com>, <bagolufsen.com>,

<bang-olusen.com>, and <bangolusen.com>.

Complainant is the owner of the trademark BANG & OLUFSEN.

If one disregards the hyphens in the domain names and the “&” in the trademark, the domain names only differ from the trademark by the omission of one letter, respectively “n” and “f”.

The “&” sign (ampersand) cannot be included in a domain name registration. In the domain names <bag-olufsen.com> and <bang-olusen.com> the hyphens are placed where the “&” sign are placed in the trademark. This contributes to similarity between the trademark and the domain names.

Complainant’s mark derives from the surname of Complainant’s founding fathers Bang and Olufsen, who founded Bang & Olufsen in 1925. The trademark Bang & Olufsen is distinctive of the Complainant’s business. Domain names which differ from a trademark by only minor variations have a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive, see Reuters Limited v. Global Net 2000 Inc., WIPO Case No. D2000-0441.

The Panel finds that, despite the mentioned variations, there is a close similarity both aurally and visually between the domain names and Complainant’s mark.

The suffix “.com” does not distinguish the domain names at issue from Complainant’s mark.

The Panel finds that the domain names are confusingly similar to Complainant’s mark.

B. Rights or Legitimate Interests

The Panel has considered Complainant’s allegation that the Respondent does not have any rights or legitimate interests in respect of the domain names at issue. Since Respondent is in default, these allegations have not been contested.

Because it is generally difficult for Complainant to prove the fact that Respondent does not have any rights or legitimate interests in the domain names at issue, (while Respondent at the same time is given ample opportunity to demonstrate any such rights or legitimate interests pursuant to paragraph 4(c) of the Policy), previous decisions under the UDRP have found it sufficient for Complainant to make a prima facie showing of its assertion.

The Panel finds that the circumstances mentioned and evidenced by Complainant are sufficient to establish a prima facie showing that Respondent has no rights or legitimate interests in the domain names at issue. Respondent has not been authorized in any way to use the Complainant’s mark, nor does he engage in the business of selling products or services related to those offered by the Complainant.

The Panel concludes that the Respondent does not have any rights or legitimate interests in respect of the domain names at issue.

C. Registered and Used in Bad Faith

The Panel has considered Complainant’s assertions and evidence with regard to the Respondent’s registration and use of the domain names in bad faith. By not submitting a response, Respondent has failed to invoke any circumstances that could demonstrate that Respondent did not register and use the domain names at issue in bad faith.

Complainant has demonstrated that its longstanding use of the registered BANG & OLUFSEN marks world-wide and in Panama for more than 25 years, in combination with the fact that the mark derives from the surnames of the company’s founding fathers, places the mark in the category of trademarks with a high degree of distinctiveness. As a result of the fame the mark enjoys a wide scope of protection. The Panel finds it likely that Respondent was aware of the existence of the Complainant and its trademark rights at the time the domain names were registered.

The Policy paragraph 4(b) sets forth four non-comprehensive illustrations of situations that may be deemed to reflect “bad faith” registration and use of a domain name. The Panel finds that one of these has been established, i.e. attempting to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship or affiliation of the website.

The domain names trigger a pop-up ad, and all four domain names have been used by Respondent to forward to a kind of web portal with links to different products some of them, are competing with those of Complainant’s. This shows that Respondent knows that Internet users recognize Complainant’s BANG & OLUFSEN mark as identifying Complainant’s business.

The Panel finds that this use of the domain names for commercial gain, namely to sell different products or advertisements, reflects Respondent’s attempt to attract users to its website by improperly associating itself with Complainant’s mark or misleadingly suggesting an affiliation with, or sponsorship by, Complainant.

In this case the Respondent has registered four (4) domain names, all of which are confusingly similar to Complainant’s marks, as they all contain a misspelled version of Complainant’s mark. This is of course not coincidental, and the number of similar registrations is evidence of bad faith under the Policy, paragraph 4(b)(iv). Reference is made to Playboy Enterprises v. Movie Name Company, WIPO Case No. D2001-1201.

Once all these circumstances have been taken into account, the Panel finds that Respondent registered and used the domain names 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 names, <bag-olufsen.com>, <bagolufsen.com>, <bang-olusen.com> and <bangolusen.com> be transferred to the Complainant.

Peter G. Nitter
Sole Panelist

Dated: September 7, 2005