WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Best Friend Group Oy, Best Friend Denmark A/S v. Eva Nilsson

Case No. D2010-0171

1. The Parties

The Complainant is Best Friend Group Oy of Kuopio, Finland and Best Friend Denmark A/S of Hasselager, Denmark, represented by Groth & Co KB, Sweden.

The Respondent is Eva Nilsson of Helsingborg, Sweden.

2. The Domain Name and Registrar

The disputed domain names <hurttacollection.net> and <hurtta.nu> are registered with Active 24 ASA.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2010. On February 5, 2010, the Center transmitted by email to Active 24 ASA and a request for registrar verification in connection with the disputed domain names. On February 9 and 11, 2010, Active 24 ASA transmitted by email to the Center its verification responses confirming that the Respondent is listed as the registrant and providing the contact details. 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 March 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 23, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 24, 2010.

The Center appointed Knud Wallberg as the sole panelist in this matter on April 9, 2010. 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.

On February 15, 2010 the Center issued a notification to the Complainant and the Respondent concerning the language of the proceedings stating that:

The Complaint has been submitted in English. Pursuant to the Rules, Paragraph 11, in the absence of an agreement between 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 Administrative Panel (once appointed) to determine otherwise.

According to information we have received from the concerned registrar, the language of the registration agreement for the disputed domain names is Swedish for the disputed domain name <hurttacollection.net> and English for the disputed domain name <hurtta.nu>.

At the same time the Center invited the parties to submit their comments on and requests to this issue. After having received the Parties comments, the Center informed the Parties in an e-mail of March 3, 2010, that the Center had decided to accept the Complaint in the English Language and commence the proceeding, accept a Response in either the Swedish or the English language, appoint a Panel familiar with both languages mentioned above, if available, and allow the Panel (when appointed) to make the decision as to the appropriate language of the proceeding.

Language of the Proceedings

Paragraph 11 of the Rules reads:

(a) 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.

(b) The Panel may order that any documents submitted in languages other than the language of the administrative proceeding be accompanied by a translation in whole or in part into the language of the administrative proceeding.

The issue of language has been subject to a number of decisions made by UDRP Panels and as stated in Deutsche Messe AG v. Kim Hyungho,WIPO Case No. D2003-0679: “The spirit of Paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties' level of comfortability with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors”.

In the present case, it is without question that the registration agreements for the disputed domain names were made in Swedish and English. Moreover, it is also apparent from the submitted material, including the annexes to which the Respondent refers in her attempted Response and the fact that the website of the Respondent to which the disputed domain names pointed are also in the English language that the Respondent has no difficulties in understanding the English language.

Therefore, in consideration of the above circumstances and in the interest of fairness to both parties, the Panel hereby decides, under paragraph 11 of the Rules, to (i) accept the Complaint in the English language, (ii) accept any other communication from the parties in Swedish and (iii) to issue the Decision in the English language.

4. Factual Background

The Complainant has since 2008 been the proprietor of the Community Trademark HURTTA for goods and services in class 18, 20, 24 and 25 as well as proprietor of an international trademark registration of the same mark HURTTA for goods and services in class 18, 20, 24 and 25.

The disputed domain names <hurttacollection.net> and <hurtta.nu> were registered on February 6, 2009 and July 10, 2009, respectively.

5. Parties' Contentions

A. Complainant

The domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights

The first disputed domain name <hurtta.nu> incorporates the Complainant's trademark HURTTA in its entirety and therefore it is the opinion of the Complainant that the disputed domain name is identical to the trademark in which the Complainant has rights, save for the ccTLD “.nu”.

The second disputed domain name <hurttacollection.net> also incorporates the Complainant's trademark HURTTA in its entirety. Furthermore, the disputed domain name contains an addition of the generic term “collection”. The term “collection” in combination of a trademark is commonly used to designate a group of items and/or products originating from the same producer and/or having the same trademark and the Complainant states that the confusion may be enhanced by the addition of the generic word “collection”, especially when considering that the Complainant has been using the domain name <hurttacollection.com> as its official website since 2006. The Complainant is of the opinion that the disputed domain name <hurttacollection.net> is confusingly similar to the trademark HURTTA in which the Complainant has rights.

The Respondent has no rights or legitimate interests in respect of the domain names

The Respondent has no rights or legitimate interests in respect of the disputed domain name HURTTA. To the best of the Complainant's knowledge, the Respondent is not an owner of any trademark, service mark, company name, product or service with a name similar to that of the domain name in question. Furthermore, the Respondent is not commonly known by the domain names.

The Complainant has a large number of resellers all over Europe and the Respondent is one of many resellers in Sweden. Thus, the Respondent has a good knowledge of he Complainant's trademark registrations, The Complainant has not directly nor indirectly licensed or otherwise consented to the Respondent' s use of the HURTTA trademarks in connection with the disputed domain names. In fact, the Complainant has opposed the Respondent's registrations and requested that the Respondent transfer the disputed domain names to the Complainant, which the Respondent has consistently denied to do.

Since the Respondent's commercial website, to which the disputed domain names resolve, offers and promotes not only goods produced by the Complainant, but also competing third party products and third party trademarks, the Respondent is not making a bona fide offering of goods and does not have a legitimate interest in the disputed domain names.

The domain names were registered and are being used in bad faith.

The Respondent has engaged in a pattern of registering domain names that are identical and/or confusingly similar to the Complainant's registered trademark HURTTA. Apart from the two disputed domain names <hurtta.nu> and <hurttacollection.net>, the Respondent has also registered the two Swedish domain names <hurtta.se> and <hurttacollection.se>. To the best of the Complainant's knowledge at the time of filing this Complaint, the Respondent has registered at least four domain names containing the Complainant's HURTTA mark.

The Complainant believes that the Respondent's registration of the disputed domain names <hurtta.nu> and <hurttacollection.net> were made in order to prevent the Complainant from reflecting the trademark in corresponding domain names.

Since the Respondent is a customer of the Complainant and has good knowledge of the Complainant's HURTTA trademark, it is evident that the Respondent registered the disputed domain names with the Complainant's trademark in mind. The Complainant further asserts that the Respondent is intentionally avoiding contact with the Complainant in order to keep using the disputed domain names to attract, for commercial gain, Internet users to the Respondent's website for as long as possible.

The Respondent's registration and use of the disputed domain names may be detrimental to the Complainant's trademark as Internet users searching for the Complainant and the Complainant's products may be confused and misled into believing that the Respondent's website belongs to the Complainant or that the Respondent is the exclusive sole reseller of the Complainant's products, Since the Respondent is offering competing third party products on the website to which the disputed domain names resolve, the Respondent is taking unfair advantage of the Complainant's trademark in order to sell competing products to Internet users searching for the Complainant.

Thus, the Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent' s website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of a product on the Respondent's website.

B. Respondent

The Respondent did not file a formal reply to the Complainant's contentions. The Panel has however reviewed the mail filed by the Respondent on February 19, 2010 and the attached annexes thereto. In this mail the Respondent refers to the fact that a number of domain names containing the name “hurtta” are registered by other entities than the Complainant and that a number of domain names containing this name are available for registration.

6. Discussion and Findings

According to paragraph 15(a) of the Rules the panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:

(1) that 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) that the respondent has no rights or legitimate interests in respects of the domain name; and

(3) that the domain name has been registered and used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name <hurtta.nu> contains the Complainant's trademark HURTTA, with the addition of the non-distinctive top-level designation “.nu”. For the purpose of these proceedings the disputed domain name must be considered identical to the Complainants trademark.

The disputed domain name <hurttacollection.net> contains the Complainant's trademark HURTTA, with the addition of the non-distinctive element “collection” and the top-level designation “.net”. For the purpose of these proceedings this disputed domain name must be considered confusingly similar to the Complainants trademark

The prerequisites in the Policy, paragraph 4(a)(i) are therefore fulfilled.

B. Rights or Legitimate Interests

According to the Complaint, the Complainant has not licensed or otherwise permitted Respondent to use its trademark or to apply for any domain name incorporating the mark. Under these circumstances the burden of proof of rights or legitimate interest must lie with the Respondent.

The fact that the Respondent is a reseller of products originating from the Complainant makes it relevant to consider whether this can be legitimate or fair use of the Complainant's mark. In the view of this Panel, it is a recognized principle of European trademark law that an agent or reseller that is engaged in the legitimate sale and distribution of trademarked goods does not per se have any rights to register the said trademark as its trademark, business name or domain name without explicit consent of the trademark owner, cf. the principles of Article 6 septies of the Paris Convention. Even if the Respondent was engaged in legitimate although not specifically authorized sales of Complainants products, and thus might, under certain circumstances, have a legitimate interest in and rights to use the trademark for promoting these goods, this does not, in this Panel's view, establish such rights or legitimate interest for the purpose of these proceedings that may legitimize registration of the disputed domain names. The Panel explicitly notes that the principle of exhaustion under Swedish and European trademark law cannot legitimate the registration and use of the disputed domain names either.

The Panel has reviewed quite a number of UDRP decisions on this issue, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, section 2.3, such as Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, Experian Information Solutions, Inc. v. Credit Research, Inc.,WIPO Case No. D2002-0095, Motorola, Inc. v. NewGate Internet, Inc.,WIPO Case No. D2000-0079, DaimlerChrysler A.G. vs Donald Drummonds,WIPO Case No. D2001-0160, Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No.. D2002-0946, and Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent,WIPO Case No. D2004-0481. The Panel would like to note that even if it was to endorse the view expressed in, e.g., the Oki Data decision, the Oki Data test would not be applicable in the present matter since the Respondent, among other things, does not only offer the trademarked goods but also competing products to those of the Complainant.

The Respondent's registration and use of the disputed domain names indicates its lack of rights or legitimate interests therein, and consequently the prerequisites in the Policy, paragraph 4(a)(ii), cf. 4(c) are also considered fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy further provides registration and use in bad faith. Paragraph 4(b) regulates, by way of example, the kind of evidence that is required.

Complainant's trademark HURTTA is protected in Sweden a fact that is not disputed by the Respondent. It is also clear that the Respondent was fully aware of the Complainant and of the Complainant's mark when she registered the domain names and that the domain names were actively used at the time of the filing of the Complaint.

This is underlined by the fact that the disputed domain name, at the time of the filing of the Complaint, was used for a website for what appears to be the business of the Respondent, ZOOTROPIC, that contained information on the many different goods that the Respondent is selling. The Panel therefore finds that the Respondent by its registration and its use of the disputed domain names, intentionally created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the disputed domain name with the purpose of attracting Internet users to the website for commercial gain.

The fact that the disputed domain names are now used in a different manner, is also an indication of bad faith. It is thus clear that the registration itself prevents the Complainant as the owner of the trademark HURTTA from reflecting the mark in a corresponding domain name under the “.nu” gTLD and that the current use is likely capable of disrupting the business of the Complainant.

The Panel notes in this respect that the disputed domain name <hurttacollection.net>: are in effect identical to the domain name of the corresponding official website of the Complainant at “www.hurttacollection.com“. By registering the identical domain name under the gTLD “.net” and by - undisputed registering other domain names containing the Complainants trademark the Respondent has gone well beyond any potential legitimate good faith use.

The Panel therefore finds that the Respondent by registering and using the domain names intentionally creates a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the domain name in dispute with the purpose of attracting Internet users to the website for commercial gain.

Bearing these facts and the facts mentioned above under paragraphs 6A and 6B in mind, the Panel finds that the disputed domain names have been registered and are being used in bad faith, cf. paragraph 4(a)iii and 4(b) of the Policy.

Consequently, all the prerequisites for cancellation or transfer of the disputed domain names according to paragraph 4(a) of the Policy are fulfilled.

The Complainant has requested transfer of the disputed domain names.

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 names, <hurtta.nu> and <hurttacollection.net> be transferred to the Complainant.

Knud Wallberg
Sole Panelist

Dated: April 16, 2010