Decision for dispute CAC-UDRP-105877

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain names.

The Complainant owns several registered trademarks for the word mark NORRØNA, including:

• International trademark registration with reg.nr. 939515 of March 15, 2007 for goods in classes 18, 25 and 28, designating, inter alia, Australia, People’s Republic of China, European Union, and the United States;

• Hong Kong trademark registration with reg. nr. 301241694 of November 18, 2008 for goods in classes 18, 25 and 28; and

• European Union trademark with reg.nr. 9412206 of May 12, 2011 for goods in classes 9, 16 and 25.

The Complainant alleges that the criteria of paragraph 4(a) of the Policy are met because:

• the disputed domain names are confusingly similar to the Complainant’s NORRØNA trademarks;
• the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
• the disputed domain names have been registered and are being used in bad faith.

No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain names (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

The Panel finds that the disputed domain names are confusingly similar to the Complainant's trademarks NORRØNA which were registered prior to the registration of the disputed domain names. The disputed domain names wholly incorporate the Complainant's trademark NORRØNA - albeit that the letter “Ø”, which is not included in the ASCII table, has been replaced by an “O”. The fact that the terms “outlet” and “outdoor” are added do not eliminate the similarity between Complainant's trademarks and the disputed domain names, and in fact may even enhance the similarity between the Complainant's trademarks and the disputed domain names in view of the Complainant’s distribution of outdoor products.

The Panel finds that the Complainant successfully submitted evidence that the Respondent is not commonly known under the disputed domain names, and was not licensed or authorized by the Complainant to register or use the disputed domain names. The Complainant's allegations were not challenged by the Respondent.

As the term “Norrøna” has no specific meaning in English, which is the language of the websites to which the disputed domain names resolve, and more particularly because the disputed domain names resolve to websites which mimic the official Complainant’s website, the Panel considers it likely that the Respondent must have had the Complainant's NORRØNA trademarks in mind when it registered the disputed domain names, which was therefore registered in bad faith. Further, the Panel is satisfied that the Respondent’s use of the disputed domain names is in bad faith as the disputed domain names resolve to website which copy the Complainant’s official website and prominently display the Complainant’s NORRØNA trademarks on (at least) the home page which offers the Complainant’s products – which are undisputedly possibly counterfeit products – for sale. The Respondent’s behavior constitutes an intentional attempt to attract, for commercial gain, Internet users to the Respondent’s websites, by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of this website.