The Complainant is Rota-Dan A/S, Aalborg, Denmark, represented by Johan Schlüter Lawfirm, Denmark.
The Respondent is Orion Web, Eldoret, Kenya.
2. The Domain Name and Registrar
The disputed domain name <rotadan.com> is registered with Intercosmos
Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2005. On November 22, 2005, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On November 22, 2005, Intercosmos Media Group d/b/a directNIC.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 December 2, 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 Respondent of the Complaint, and the proceedings commenced on December 5, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was December 25, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2005.
The Center appointed Arne Ringnes as the Sole Panelist
in this matter on January 16, 2006. 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. Due to extraordinary circumstances, the decision has been delayed.
4. Factual Background
The Complainant, Rota-Dan A/S, was founded in 1985, and is one of the oldest manufacturers of wheels and castors for industrial purposes in the Danish market. Rota-Dan A/S is among the leading companies in this business area.
“Rota – Dan” is not a registered trademark.
Rota-Dan A/S is registered as a company name in Denmark. Since 1996 and until 2004 Rota-Dan A/S has used <rotadan.com> as its primary domain name and in brochures and catalogues. Due to failure in the renewing process, Rota-Dan A/S’ registrar failed to renew the domain name at the end of the year 2004 and Rota-Dan A/S was not informed of the possibility of getting the domain name renewed in the redemption period.
When the domain name became available it was registered by the Respondent. On the Respondent’s website the domain name was offered for sale in the way that the website contained the text “Buy This Domain” and a link to the website “www.kenya-tech.com”. At this website, anyone could make an offer by submitting name, email address and price.
The Complainant contacted Kentech Support on January 19, 2005, in order to get in contact with the Respondent. Kentech Support replied that it does not give out personal info for its clients and further stated that “If you are interested in obtaining the domain then make an offer. When you make an offer on a domain the owner will receive a notification by email and may accept or reject the offer, or respond with a minimum acceptable price at which they are willing to transfer the domain”.
The Complainant made an offer in the amount of 100 United States dollars, which was not accepted by the Respondent. In this connection, Kentech Support stated:
“Feel free to submit another offer substantially higher than the original offer and your offer will be considered.”
The Complainant hereafter offered 500 United States dollars,
but did not receive any reply from the Respondent on this offer.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the domain name <rotadan.com> is clearly identical or confusingly similar to the Complainant’s unregistered trademark “Rota-Dan” and/or the company name “Rota-Dan A/S”.
In this respect, the Complainant alleges that “Rota-Dan” according to Danish trademark law has the status of being an unregistered trademark for such goods and services as it is used for, i.e. castors and wheels for industrial purposes and designing and advising in the industry and product area. The Complainant states that it has for 20 years provided its goods and services to customers all over Denmark and that “Rota-Dan” has been used directly as a trademark on some product lines and also has been used in marketing materials. In addition, the Complainant has registered the company name Rota-Dan A/S, and it is common trademark law and practice that a company can be and is in fact registered with its company title as a word mark. The Complainant further contends that Rota-Dan is a distinctive mark arising from the words “ROTating” and “DANmark”.
With respect to the condition that the Respondent shall have no rights or legitimate interests in respect of the domain name, the Complainant explains that due to a mistake, its registration of the domain name <rotadan.com> was not renewed, and thus fell into the public domain, and that the Respondent registered the domain name on the very day that it became available for registration. The Respondent then put out the domain name for sale and claimed a payment which exceeded the registration costs. This shows that the Respondent did not have any other interest in the domain name than selling it to the public for an amount substantially higher that the registration costs.
With respect to the condition that the domain name was registered and is being
used in bad faith, the Complainant also points out that the Respondent already
has shown a pattern in being in knowledge of Danish companies and their trademarks,
and points to Grundfos A/S v. Orion Web,WIPO
Case No. D2005-0618 <grundfospumps.com>.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The domain name in dispute - <rotadan.com> - is clearly identical or confusingly similar to the Complainant’s alleged trademark “Rota-Dan”. The question in this matter is whether the Complainant has shown that “Rota-Dan” is a protected trademark under the Rules.
“Rota-Dan” is not registered as a trademark. However, the Complainant submits that “Rota-Dan” has been used as a trademark, apparently for a number of years, in marketing materials and by that has obtained trademark protection under Danish law. Secondly, the Complainant alleges that the registration of the company name Rota-Dan A/S establishes a trademark right.
In order to assert unregistered trademark rights,
a complainant must show that the name has become a distinctive identifier associated
with the complainant or its goods and services. Relevant evidence of such “secondary
meaning” includes length and amount of sales under the mark, the nature
and extent of advertising, consumer surveys and media recognition. The fact
that the secondary meaning may only have been acquired in a small geographic
area does not limit a complainant’s rights in a trademark. WIPO
Overview of WIPO Panel Views on Selected UDRP Questions
In this matter, the Complainant has submitted evidence showing that the company name is used in connection with one of its products. Further, the Complainant has stated that the mark has been used as a domain name for the period 1996–2004, and as such also referred to in marketing material. According to the consensus view of WIPO UDRP panels, the test is that the name has become a distinctive identifier associated with the Complainant or its goods and services. In the Panel’s view, the name “Rota-Dan” is sufficiently distinctive to enjoy trademark protection. Further, under Danish trademark law, the use in itself of a sign can establish a trademark right and Danish law does not set as a condition that such a sign should be well-known as an identifier for the trademark holders goods and services offered in the relevant circle of trade. The Panel has no reason to doubt the statements by the Complainant regarding the use of “Rota–Dan” in marketing material and as a domain name, especially as the Respondent has not contested this factual information. Further, the Panel points out that the use of a mark in a domain name is usually regarded as trademark use.
Thus, the Panel finds that Complainant has proved trademark rights to “Rota-Dan”.
The Panel adds for the sake of clarity that under
the Policy, company names by themselves are not regarded as trademarks protected
by the Rules, see 24 Poker AB v. Jim Bim,WIPO
case No. D2005-1097, in which it is stated that it should be demonstrated
that such names also enjoy protection as trademarks.
B. Rights or Legitimate Interests
The Complainant has made a prima facie case that the Respondent does not have any rights or legitimate interests in the domain name in accordance with paragraph 4( c ) of the Policy. According to prior UDRP panels, once such prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Based on the case file, and in the absence of a rebuttal from the Respondent, the Panel finds that the second element of the Policy has been established.
C. Registered and Used in Bad Faith
The Complainant has submitted evidence that the Respondent
has offered the domain name for sale and that Kentech Support on behalf of Respondent
has requested a price which is higher than the registration costs. In addition,
the Respondent has shown a pattern of conduct of preventing a trademark owner
from reflecting the mark in a corresponding domain name, see Grundfos A/S
v. Orion Web, WIPO Case No. D2005–0618.
In view of paragraph 4(b) of the Policy, the Panel
finds that the third element of the Policy has been established.
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 <rotadan.com> be transferred to the Complainant.
Arne Ringnes
Sole Panelist
Date: February 17, 2006
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