The Complainant is Coloplast A/S of Humlebaek, Denmark.
The Respondent is Thomas Sugar of New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <coloplast.tel> is registered with Larsen Data ApS.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2009. On July 28, 2009, the Center transmitted by email to Larsen Data ApS a request for registrar verification in connection with the disputed domain name. On July 30, 2009 and August 3, 2009, Larsen Data ApS transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Registrar also confirmed that the language of the registration agreement was Danish. On August 10, 2009 the Center received an email from the Respondent in English regarding some administrative details. The Center then notified the parties that, having regard to the Respondent's email to the Center in English, and the Complainant's argument in the Complaint that, subject to the Panel's discretion, the proceedings should be conducted in English, it anticipated these proceedings being conducted in English unless the parties advised otherwise. No communication to that effect was received from either of the parties.
The Center verified that 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 August 18, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 7, 2009. An email was received by the Center from the Respondent on September 8, 2009.
The Center appointed James A. Barker as the sole panelist in this matter on September 16, 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 a member of the “Coloplast Group”, which provides medical goods and services. The Group has been in business since 1957. It provides goods and services in the fields of ostomy care, urology, continence care, and wound care.
The Coloplast Group markets and sells its products and services globally, mainly to hospitals and related institutions. It has sales and manufacturing subsidiaries in 25 countries, including in the United States of America where the Respondent has his address.
The Complainant is the owner if marks registered in numerous countries for COLOPLAST. Among those countries, it has its mark registered with the United States Patent and Trademark Office. The Complainant is also the owner of over 109 domain name registrations that include its mark, including “www.coloplast.com” which reverts to its main website.
The disputed domain name was registered on March 26, 2009. At the date of this decision, the disputed domain name does not revert to an active website.
5. Parties' Contentions
A. Complainant
The Complainant claims that the disputed domain name is relevantly identical to its registered mark.
The Complainant, secondly, claims that the Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name was registered long after the Complainant obtained relevant trademark rights. While there is currently no commercial use being made of the disputed domain name, the Complainant claims that any use of it is an infringement of its rights. Any consumer addressing the disputed domain name would be confused and believe that it had some association with the Complainant.
Finally, the Complainant claims that the disputed domain name was registered and has been used in bad faith. The Complainant claims that its mark is uniquely associated with it, and as such it is inconceivable that the Respondent did not have the Complainant in mind when he registered the disputed domain name.
B. Respondent
The Respondent did not submit a formal reply to the Complainant's contentions. However, there are a number of communications on the record from the Respondent. The Complainant provided evidence that, on June 16, 2009 the Respondent responded by email to a “cease and desist” letter sent to him from the Complainant. In that email, the Respondent relevantly stated that “as far as I am informed I am not violating international laws, as long as I not making commercial use of the domain.”
On August 24, 2009, the Respondent sent an email to the Complainant (copied to the Center). The Respondent did not respond to the substance of the allegations in the Complaint. Instead, he relevantly stated that “as the business is yet to be launched, the impact of changing the business and thereby domain name is manageable. I therefore offer to hand over the domain should you cover my cost of the domain name itself and some minimal lawyers' fees I have had in relation to this issue”. On August 30, 2009, in response to an email from the Complainant, the Respondent denied that his offer to sell the domain name demonstrated bad faith, because he claimed that the amount he asked for represented his actual costs.
On September 8, 2009, the Respondent emailed the Center to claim that the intended use of the disputed domain name was for a business his wife is setting up for those living in Argentina. The Respondent claimed that the business would enable people living in Argentina to call those abroad by calling a local phone number, which would route the call to an international cellphone or landline using VOIP. The Respondent claims that the reason for choosing “coloplast” was the intention of calling the service “Colonia Plata Servicio Telefonico”. “Colonia Plata meaning The Silver Colony, as Argentineans at times refer to their country.” (Although this email was received one day after the due date for the Response, the Panel considered it in the interests of fairness to the Respondent and because it was submitted so shortly after the due date for the Response.)
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(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 was registered and is being used in bad faith.
These elements are discussed below, immediately after a discussion of a procedural issue concerning the proper language of the proceedings. The Panel also notes that, while the Respondent has apparently offered to transfer the domain name on the conditions referred to above, no agreement between the parties was reached for such a transfer. Accordingly, the Panel has proceeded to a decision on the merits of the Complainant's claim.
A. Language of the Proceedings
Paragraph 11(a) of the Rules relevantly provides that “Unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” (emphasis added) Paragraph 2(d) of the Rules also provides that communications (between the Center and the parties) should be in the language prescribed in paragraph 11.
In this case, the language of the registration agreement is Danish. The Complainant argued that the language of these proceedings should be English, as the Respondent could and had communicated in that language, and because it would cause the Complainant unnecessary expense and delay to translate its Complaint into Danish. The Complainant referred to other cases in which panels have agreed for proceedings to be conducted in a language other than that of the registration agreement, e.g.Goupe Industriel Marcel Dassault, Dassault Aviation v. Mr. Minwoo Park,
WIPO Case No. D2003-0989.
As noted above, prior to the notification of the Complaint, the Center communicated to the parties that it anticipated these proceedings being conducted in English unless the parties advised otherwise. No such communication was received. In the circumstances of this case, the Panel considers that the conduct of the parties can appropriately be taken as an agreement between them to conduct these proceedings in English, for the purpose of paragraphs 2(d) and 11(a) of the Rules. That conduct includes the silence of both parties in response to the notification by the Center regarding the language of the proceedings, and the filing of all communications in English by the Respondent, in response to the filing of the Complaint in English by the Complainant. That conduct appears to have formed a de facto acceptance that these proceedings would be conducted in that language.
It is important in this respect that the Policy and Rules establish a summary proceeding, and regard must be had to administrative convenience. The Rules do not specify what must constitute an “agreement” for the purpose of paragraph 11(a). The Rules do not require any formalities. What is an “agreement” is therefore a question of fact in each case, having regard to the summary nature of the proceedings. In this case, it would have been simple for either party to respond to the Center's email concerning the language of these proceedings. The record indicates that both parties received actual notice of the communications to them. The record also indicates that the Respondent has no trouble in communicating in English, and has his address in an English-speaking jurisdiction and has, as noted already, made his communications to the Complainant and the Center in that language.
B. Identical or Confusingly Similar
The first thing which the Complainant must establish under paragraph 4(a)(i) of the Policy, is that it “has rights” in a mark, and that the disputed domain name is identical or confusingly similar to that mark.
The Complainant provided substantial evidence that it has registered rights in its mark COLOPLAST. It is well-established that, under the Policy, the gTLD extension is irrelevant for the purpose of paragraph 4(a)(i). Putting that extension (“.tel”) aside in this case, it is self-evident that the disputed domain name is relevantly identical to the Complainant's mark.
C. Rights or Legitimate Interests
The second thing which the Complainant must establish is that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant's case, although brief, is sufficient to establish a prima facie case against the Respondent on this ground. The Respondent provided no evidence to support a claim of having such rights or legitimate interests. There is no evidence of the kinds mentioned in paragraph 4(c) of the Policy, which are demonstrative of rights or legitimate interests. The Respondent is not making an active use of the disputed domain name. There is no evidence of the Respondent's intentions or activities that would contradict the bare case made against it by the Complainant.
In his email to the Complainant in June, the Respondent appeared to suggest that he had legitimate interests, on the basis that (he claims) he has not made a “commercial” use of the disputed domain name. The Panel has inferred that the Respondent made this claim because he has not made any active use of the disputed domain name. That claim is misplaced. Firstly, the Policy contains no general rule that a “noncommercial” use is, by itself, legitimate for the purpose of paragraph 4(a)(ii) of the Policy. Paragraph 4(b) of the Policy sets out a number of factors which, if found by the Panel, are evidence of a right or legitimate interest. Relevantly, paragraph 4(c)(iii) of the Policy provides that a right or legitimate interest may be established where “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.” (emphasis added) From paragraph 4(c)(iii), it is evident that a noncommercial use must be “legitimate”. Even if the Respondent made a noncommercial use in this case (although the Respondent later claimed a commercial intention in registering the disputed domain name), the Panel does not consider that this use can be relevantly “legitimate” where the disputed domain name was registered in bad faith (see below).
It is also evident from paragraph 4(c)(iii) that, for a noncommercial use to be legitimate, there must be an absence of an intent for commercial gain. That is to say, an absence of evidence that the Respondent gained commercially from his registration (as in this case) does not establish a noncommercial use under paragraph 4(c)(iii).
In his email of September 8, 2009, the Respondent suggested that his intention in registering the disputed domain name was to use it in connection with a business offering services to residents of Argentina. The disputed domain name, the Respondent says in effect, is an acronym for Colonia Plata Servicio Telefonico. This brief claim was not, however, accompanied by any evidence to support it. Without evidence, it is not a claim that would establish demonstrable preparations to use the disputed domain name for the purpose of 4(c)(i) of the Policy.
In the circumstances of this case, the distinctive nature of the Complainant's mark, and the absence of contrary evidence from the Respondent, the Panel thinks it is unlikely that the Respondent did not have some hope of commercial gain or advantage in the trademark value of the disputed domain name. For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The third thing which the Complainant must establish is that the disputed domain name was registered, and has been used in bad faith. In this connection, it is well-established under the Policy that a “use” need not be active. An inactive ‘holding' of a domain name can itself, in certain circumstances, be a type of bad faith use of a domain name. (Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003.)
It is important that the Complainant's mark appears to be highly distinctive and, as such, uniquely associated with the Complainant. The Complainant provided evidence of a Google search for “coloplast”. The results referred only to the Complainant's products. From this, the Complainant claims that it is inconceivable that the Respondent was not aware of it when he registered the disputed domain name. There is some force in that submission. There is no evidence in this case that the Respondent registered the disputed domain name because it had any other association than with the Complainant or its products. The Panel therefore finds that the disputed domain name was registered in bad faith.
The question then is whether the Respondent has also used the disputed domain name in bad faith. There is no evidence that the Respondent used the disputed domain name in connection with an active website. There is no other evidence of any other active use. There is no evidence of the kinds set out in paragraph 4(b) of the Policy, which are examples (not exhaustive) of bad faith. Despite this, the Panel considers that the holding of the disputed domain name by the Respondent is itself a use in bad faith. In the absence of supporting evidence from the Respondent, the disputed domain name can only plausibly refer to the Complainant and its mark. In the circumstances of this case, such a use is demonstrative of bad faith.
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 <coloplast.tel> be transferred to the Complainant.
James A. Barker Sole Panelist
Dated: September 30, 2009
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