Michael Gersdorff Blendstrup Kristensen v. Name Administration Inc. (BVI)
Case No. D2006-1546
1. The Parties
The Complainant is Michael Gersdorff Blendstrup Kristensen, Copenhagen, Denmark, represented by Sandel, Løje & Wallberg, Copenhagen, Denmark.
The Respondent is Name Administration Inc. (BVI), Grand Cayman, Cayman Islands B.W.I., United Kingdom of Great Britain and Northern Ireland, represented by John B. Berryhill, Media, Pennsylvania, United States of America.
2. The Domain Name and Registrar
The disputed domain name <superfuzz.com> is registered with Domain Name Sales Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2006. On December 7, 2006, the Center transmitted by email to Domain Name Sales Corp. a request for registrar verification in connection with the domain name at issue. On December 7, 2007, Domain Name Sales Corp. 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 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 December 19, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January 8, 2007. The Response was filed with the Center January 9, 2007.
The Center appointed John Swinson, Lone Prehn and David E. Sorkin as panelists in this matter on February 19, 2007. The Panel finds that it was properly constituted. Each member of 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 is a member of a Danish rock group called SUPERFUZZ. The Complainant founded the band SUPERFUZZ in 1995. The band released its first album in 1998 and won a Grammy award in 1999.
The Complainant registered the trademark SUPERFUZZ in Denmark (number VR 1998 02517) in July 1998.
The Complainant registered the disputed domain name in February 1998. But the Complainant failed to pay the registration renewal fee in 2004, and the registration lapsed.
Shortly thereafter, the Respondent registered the disputed domain name in May 2004.
The Respondent has a large collection of domain names and connects each of those domain names with advertising material relevant to the meaning of the words in the domain name. The website at the disputed domain name provides advertising and links to pages about guitar accessories, music and consumer goods.
5. Parties’ Contentions
A. Complainant
The Complainant contends that:
(a) the Respondent registered the disputed domain name in May 2004 shortly after the Complainant let the registration lapse;
(b) the Respondent is not associated with the Complainant;
(c) the disputed domain name is not the legal name of the Respondent and has no other connection with the Respondent;
(d) the Respondent has no trademark or other intellectual property rights in the disputed domain name;
(e) the Respondent has never used the disputed domain name in connection with a bona fide offering of goods and/or services;
(f) the Respondent generates income from a generic search engine/advertising webpage offered under the disputed domain name;
(g) the Respondent registered the disputed domain name with the sole intent of generating advertising revenue for itself by means of redirecting Internet users who would have a reasonable expectation of finding a website maintained by the Complainant;
(h) the Respondent has a pattern of registering numerous domain names incorporating trademarks to which it does not hold rights;
(i) the Respondent attempted to attract for commercial gain, Internet users to the Respondent’s web site, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s web site or location;
(j) the disputed domain name was registered by the Respondent in order to prevent the Complainant from reflecting the mark in a corresponding domain name;
(k) the Respondent’s use cannot be viewed as a legitimate non-commercial or fair use of the disputed domain name.
B. Respondent
The Respondent provided many arguments in response, which include the following:
(a) the disputed domain name contains the name of a common guitar accessory;
(b) “Superfuzz” or “Super Fuzz” is an electrical guitar distortion device of the type known as a “fuzz box”;
(c) the Complainant’s band is named after this common guitar accessory;
(d) the Complainant was not actively using its SUPERFUZZ trademark for the two year period prior to the Respondent registering the disputed domain name;
(e) the Complainant abandoned the disputed domain name in 2004;
(f) the Complainant provided no reason why he did not renew or try to renew the disputed domain name or why he waited over a year to bring the Complaint against the Respondent;
(g) the Respondent may legitimately use the term “superfuzz” and the disputed domain name in connection with guitar accessories, as guitar accessories and related products constitute the genus of which a superfuzz unit is a species;
(h) the Respondent is not passing itself off as a long dormant Danish rock group;
(i) the Complainant’s allegations that the Respondent has registered numerous domain names incorporating trademarks to which it does not hold rights are false.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that it has valid trademark rights in respect of the mark SUPERFUZZ.
Except for the addition of “.com”, the Complainant’s registered trademark SUPERFUZZ is identical to the disputed domain name.
Accordingly, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
In view of the Panel’s finding in relation to bad faith, the Panel does not need to decide this element.
C. Registered and Used in Bad Faith
The Panel finds no bad faith registration or use of the disputed domain name by the Respondent.
The Respondent is using the disputed domain name to provide advertising and links to pages about guitar accessories, music and consumer goods.
The Respondent has submitted extensive evidence that “Super Fuzz” is a common term used to describe an electrical distortion device used in connection with guitars.
The Complainant is a member of a Danish rock band, that appears to have had its moment of fame in the late 1980s and was in hibernation from about 2002 until, it appears, after the Respondent registered the disputed domain name. It is fair to conclude that the Respondent had never heard of the Complainant or the Complainant’s band until receiving the Complaint in these proceedings.
The evidence suggests that the Respondent registered the disputed domain name because it is a common term related to guitars.
The Complainant has not demonstrated that the Respondent was aware of the Complainant or its SUPERFUZZ trademark, and has not provided sufficient evidence to show that its SUPERFUZZ trademark was so well-known that the Respondent would likely have been aware of it.
To show bad faith, the Complainant appears to rely in part upon paragraph 4(b)(iv) of the Policy, namely, that the Respondent has registered the disputed domain name in order to intentionally attract, for commercial gain, Internet users to the Respondent’s web site by creating a likelihood of confusion with the Complainant’s trademark. In order to show this, the Complainant relies upon registration by the Respondent of a large number of domain names, some of which appear to be generic terms and others of which may not be. The Panel believes that in the factual circumstances of this case, the Respondent’s registration of a large number of domain names does not necessarily show bad faith by the Respondent towards the Complainant or its mark. There is no evidence that registration of the disputed domain name by the Respondent was to intentionally attract Internet users looking for the Complainant or his band.
There is no evidence that the Respondent registered the disputed domain name for any of the purposes set out in paragraph 4(b) of the Policy.
The Panel cannot find any other reasonable grounds in the Complaint and its annexed documents for a finding that Respondent registered the disputed domain name in bad faith.
The Panel is unable to draw the required conclusions as to bad faith where the disputed domain name appears to comprise a generic word, where the Complainant has not actively used its trademark for a number of years, including the period of domain name registration and where the Complainant and Respondent are located in different countries.
In concluding this case, the Panel is mindful of the limited evidentiary procedures afforded by the UDRP by comparison to available court options
7. Decision
For the foregoing reasons, the Complaint is denied.
John Swinson Presiding Panelist
Lone Prehn Panelist
David E. Sorkin Panelist
Dated: March 9, 2007
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