Visma ASA v. Domains by Proxy, Inc. / Viswanath Dhyaram
Case No. D2008-1780
1. The Parties
The Complainant is Visma ASA, of Oslo, Norway, represented by Bryn Aarflot AS, of Norway.
The Respondent is Domains by Proxy, Inc. / Viswanath Dhyaram, of Arizona, United States of America / California, United States of America respectively.
2. The Domain Name and Registrar
The disputed domain name <visma.info> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2008. The hardcopy was received on November 24, 2008.
On November 19, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name.
On November 19, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response inter alia disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 26, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.
The Complainant filed an amendment to the Complaint on November 28, 2008.
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” or “UDRP”), 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 4, 2008.
In accordance with the Rules, paragraph 5(a), the due date for Response was December 24, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 29, 2008.
The Center appointed James Bridgeman as the sole panelist in this matter on January 9, 2009. 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 is the proprietor of the following trademark registrations:
Community Trade Mark (“CTM”) No. 002554400 VISMA, registered June 27, 2003 for services on classes 35, 36;
CTM No. 002555183 VISMA & Device, registered October 29, 2003 for services on classes 35, 36;
CTM No. 002263614 VISMA registered December 18, 2002 for services in Class 36;
CTM No. 002263846 VISMA & Device, both registered December 18, 2002 for services in Class 36;
CTM No. 000412908 VISMA & Device, registered November 27, 1998 for goods and services in classes 9, 38, 41 and 42;
CTM No. 000013482 VISMA & Device, registered April 6, 1998 for goods and services in classes 9, 38, 41 and 42;
Norwegian trademark registration number 183257 VISMA, registered July 3, 1997;
Norwegian trademark registration number 188275 VISMA & Device, registered February 5, 1998, both for goods and services in classes 9, 38, 41 and 42;
Norwegian trademark registration number 211574 VISMA and Norwegian trademark registration number 211575 VISMA & Device, both registered November 1, 2001 for services in class 36;
Norwegian trademark registration number 216725 VISMA registered November 28, 2002 for services in class 35;
United States of America (“US”) trademark reg. no. 2747082 VISMA (Device) registered November 5, 2002 for services in class 36;
US trademark registration number 2 713509 VISMA registered May 6, 2003 for services in class 36;
US trademark registration number 2327072 VISMA (Device) registered September 15, 1998 for goods and services in classes 9, 38, 41, 42;
US trademark registration number 2278613 VISMA (Device) registered September 21, 1999 for goods and services in classes 9, 38, 41 and 42;
US trademark registration number 2296309 VISMA registered November 30, 1999 for goods and services in classes 9, 38, 41 and 42.
The Complaint was initially brought against Domains by Proxy, Inc. as the Respondent is using a privacy service. The name of the registrant was disclosed by the Registrar upon receipt of the Center's verification request. The Complainant then on November 28, 2008 filed an amendment to the Complaint by substituting Viswanath Dhyaram as the Respondent.
In the absence of a Response, there is no information available about the Respondent save that provided by the Registrar and the WhoIs. The Respondent uses a privacy shield and the WhoIs states that the registration is private and the registrant organization is Domains by Proxy, Inc. The Respondent's name was disclosed by the registrar in response to the Center's registrar verification request.
The domain name in dispute was registered on November 8, 2006.
5. Parties' Contentions
A. Complainant
The Complainant, with headquarters in Oslo, Norway is a leading supplier of software and services for accounting and administration. The business comprises the three business areas Visma Software, Visma Services, and Visma Financial & Productivity Services.
The Complainant provides software products and Internet-based services related to enterprise resource planning, customer relationship management, human resource management and payroll, among other things. Efficiency improving services include outsourcing of accounts, payroll and finance, as well as administrative services such as billing and debt collection, administrative procurement, staffing and recruitment, and competence development.
The Complainant's group is represented in Norway, Sweden, Denmark, Finland, the Netherlands and Romania. Through its network of resellers and distributors the Complainant is also present in the Russia Federation, the Baltics, Germany, Poland and the United Kingdom of Great Britain and Northern Ireland.
The Complainant's total group revenues for 2007 were NOK 2.7 billion, and the group's earnings before taxes were NOK 155 million. The Complainant employs more than 3,000 people, and has more than 210,000 companies as customers, small and large, public and private.
The Complainant relies on its rights in the abovementioned registered trademarks and has provided transcripts of the registration details from the databases of the CTM-Online, NIPO and USPTO are enclosed as an annex to the Complaint.
The Complainant submits that the domain name <visma.info> is identical to the word element in the Complainant's trademark registrations and must therefore be considered a violation of the Complainant's rights.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the domain name. The Complainant is not familiar with any rights or legitimate interests in respect of the domain name for the Respondent.
The Complainant further submits that the domain name was registered and is being used in bad faith.
The Complainant has furnished a copy of the webpage “www.visma.info” as it appeared on November 13, 2008.
The website is parked at GoDaddy.com and it offers a wide range of Internet links to various websites providing services in competition with the Complainant. There is also a link to one of the Complainant's own websites.
The Complainant submits that this clearly shows that the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent's web site 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 web site or location or of a product or service on the Respondent's web site or location.
The fact that the web page is parked indicates that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the domain name.
The Complainant's above arguments were first made prior to the disclosure of the identity of the Respondent by the Registrar following the Center's verification request. In the amendment to the Complaint, the Complainant stated that the disclosure does not affect the reality of the matter, the arguments remain unchanged. The Complainant merely sought to amend the name of the Respondent.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that it is the registered owner of above-listed substantial portfolio of trademark and service mark registrations being CTM, Norwegian and United States of America trademark and service mark registrations for the VISMA mark in a wide range of classes.
This Panel accepts the Complainant's submissions that the domain name is identical to the Complainant's VISMA trademark and service mark. It is well established under the Policy that the <.info> gTLD extension can be ignored for the purposes of comparison under paragraph 4(a)(i) of the Policy.
The Complainant has therefore established the first element of the test in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant has alleged that the Respondent has no rights or legitimate interest in the domain name. The mark is unusual if not unique. The Complainant has stated that it is not aware of any rights or legitimate interests the Respondent has in the domain name.
Since the Complainant is a large company it is likely that any rights in the VISMA mark by the Respondent or any other third party would have come to its notice.
The Complainant has established that it has rights in the VISMA trademark and that each of the Complainant's above-listed trademark and servicemark registrations were registered prior to the registration of the disputed domain name.
As the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain name, it follows that the burden of proof shifts to the Respondent.
As the Respondent has no delivered a Response or made any submissions the Respondent has failed to discharge the burden and this Panel finds that the Complainant has satisfied the second element of the test in paragraph 4(a) also.
C. Registered and Used in Bad Faith
The domain name was registered on November 8, 2006.
The Complainants rights in the VISMA mark pre-date the registration of the domain name. The earliest registration being Norwegian trademark registration number 183257 VISMA, registered July 3, 1997. The Complainant's earliest registration in the United States of America, where the Respondent resides is US trademark registration number 2327072 VISMA (Device) registered September 15, 1998, more than eight years prior to the registration of the disputed domain name.
It follows that on the balance of probabilities, the Respondent was aware of the Complainant's rights in the VISMA mark when the Respondent registered the identical domain name.
In the circumstance described in the Complaint, this Panel does not accept that the Complainant has proved that the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent's web site 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 web site or location or of a product or service on the Respondent's web site or location.
On the evidence, the Respondent has not established any website at the disputed domain name address but has permitted the domain name to resolve to the registrar's parking page.
“3.2 Can there be use in bad faith when the domain name is not actively used and the domain name holder has taken no active steps to sell the domain name or contact the trademark holder? (Passive holding)
Consensus view: The lack of active use of the domain name does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.
Ladbroke Group Plc v. Sonoma International LDC,
WIPO Case No. D2002-0131 among others, Transfer”
Applying these principles, while there is no evidence that the VISMA mark is well known, the Complainant has a substantial portfolio of trademark and service mark registrations for the mark in the European Union and the United States of America; there has been no Response filed; the Respondent has sought to conceal his identity through use of the privacy service; there is no explanation as to how the Respondent chose this particular domain name.
On the evidence and in the absence of a Response or any other explanation, this Panel finds that on the balance of probabilities, the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the domain name.
Since the Complainant has also established that the domain name has been registered and is being used in bad faith, this Panel holds that the Complainant is entitled to the relief sought having satisfied the third and final element of the test in paragraph 4(a) of the Policy.
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, <visma.info> be transferred to the Complainant.
James Bridgeman Sole Panelist
Dated: January 12, 2008
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