Paragraph 4(a) of the Policy provides that to obtain the transfer of the Domain Name, the Complainant must prove the following three elements:
(i) the Domain Name is identical or confusingly similar to a trade mark 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 15(a) of the Rules provides that the Panel shall decide a 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. Furthermore, paragraphs 10(b) and 10(d) of the Rules provide that the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality, and weight of the evidence.
Paragraphs 10(a) and 10(c) of the Rules also provide that the Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules and shall ensure that the administrative proceeding takes place with due expedition.
In addition, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.
The Panel notes that the Respondent did not reply to the Complainant's contentions. The Respondent's failure to respond, however, does not automatically result in a decision in favour of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules.
Taking the aforementioned provisions into consideration, the Panel finds as follows:
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Panel to consider first whether the Complainant has established relevant trade mark rights. The Complainant relies on its company name and domain names. However, a company name and/or domain name registration in and of themselves are generally insufficient to establish relevant trade mark rights for the purpose of the Policy. The Complainant however also appears to rely on its unregistered trade mark rights and so the Panel is therefore required to examine whether the Complainant can lay claim to common law or unregistered trade mark rights in the term STORVIK AQUA - that is, whether such terms have acquired distinctiveness or "secondary meaning" to the extent that it identifies the Complainant's goods or services.
The Complainant has asserted that it has been trading in Norway and internationally under "Storvik Aqua" for a significant number of years in connection with fish farming equipment and has submitted evidence of its business activities and goodwill (also available on its website(s)). Furthermore, a brief search on Google's search engine reveals that most if not all references to "Storvik Aqua" refer to the Complainant.
The Panel is therefore satisfied that the Complainant has established unregistered rights in STORVIK AQUA for the limited purpose of the Policy.
The Panel is also required under paragraph 4(a)(i) of the Policy to examine whether the Domain Name is identical or confusingly similar to the Complainant's trade mark. The Panel notes that the Domain Name incorporates the Complainant's trade mark in its entirety and finds that this is sufficient to establish identity or confusing similarity for purpose of the Policy.
The top-level suffix ".com" is generally disregarded under the confusing similarity test as it is a functional element.
The Panel therefore finds that the Domain Name is identical to the Complainant's trade mark.
The Complainant has therefore satisfied paragraph 4(a)(i) of the Policy.
B. Rights or legitimate interests
Paragraph 4(a)(ii) of the Policy requires a complainant to demonstrate that the respondent has no rights or legitimate interests in the domain name. Paragraph 4(c) of the Policy sets out a list of non-exhaustive circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, including but not limited to:
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
The Complainant has been trading under the name STORVIK AQUA for a considerable period both in Norway and internationally. The Complainant has not authorised the Respondent to make any use of its trade mark. There is no evidence that the Respondent is commonly known by the Domain Name. Furthermore, the Respondent's use of the Domain Name, as described above, cannot be considered neither a bona fide offering of goods or services nor a legitimate non-commercial or fair use of the Domain Name.
The Panel therefore finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the Domain Name and that the Respondent has failed to rebut such a showing.
The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.
C. Registration and use in bad faith
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that may indicate that the Domain Name was registered and used in bad faith, including but not limited to:
"(i) circumstances indicating that [the respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant's trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website or other online 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 [the respondent's] website or location".
The Complainant's trade mark appears to be distinctive of the Complainant's products and does not seem to have any other meaning except in relation to the Complainant. The Panel is of the view that the Respondent was likely aware or should have been aware, as would have been revealed by a brief search on an Internet search engine, of the Complainant's trade mark rights at the time of registration of the Domain Name.
The Respondent appears to be in the business of acquiring and selling domain names. Whilst the practice of acquiring and selling domain names for profit is not in itself illegitimate, it is so when the domain name in question is identical or confusingly similar to a trade mark and there is evidence that it was acquired to take advantage of its trade mark value. Furthermore, prior panels deciding under the Policy have held that "a sophisticated domainer who regularly registers domain names cannot be 'wilfully blind' to whether a particular domain name may violate trademark rights". See Mahindra & Mahindra Limited v. Portfolio Brains LLC, WIPO Case No. D2009-0209. The Panel therefore finds that the Domain Name was registered in bad faith.
The Panel also finds that the Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website, in accordance with paragraph 4(b)(iv) of the Policy.
The fact that the Complainant had inadvertently allowed the Domain Name to lapse does not eliminate the Respondent's bad faith, particularly given the distinctiveness of the Complainant's trade mark. Prior panels under the Policy have also held that "[t]he purpose of the Policy is to discourage cybersquatting, which is the use of domain names to take advantage of trademarks owned by other persons. The fact that the domain name with the same trademark had expired does not mean that the Respondent has any right to use a well-known trademark as its domain name when such use could cause confusion to consumers and damage to the owner of the trademark". See Donna Karan Studio v. Raymond Donn, WIPO Case No. D2001-0587.
The Complainant has therefore satisfied paragraph 4(a)(iii) of the Policy.
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