The Complainant is Gratisbyggetilbud ApS, of Hvidovre, Denmark, represented by Budde Schou A/S, Denmark.
The Respondent is Riksnett AS of Sandefjord, Norway represented by Lynx Law Firm, Norway.
2. The Domain Name and Registrar
The disputed domain name <gratisbyggetilbud.com> is registered with Domeneshop AS dba domainnameshop.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2010. On February 12, 2010, the Center transmitted by email to Domeneshop AS dba domainnameshop.com. a request for registrar verification in connection with the disputed domain name. On February 16, Domeneshop AS dba domainnameshop.com transmitted by email to the Center its verification response 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 February 18, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 10, 2010. The Response was filed with the Center on March 10, 2010.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on March 19, 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.
4. Factual Background
The Complainant has submitted evidence that it is the owner of two Danish trademark registrations:
Word mark GRATISBYGGETILBUD for class 35 with registration No. VR2006 03526, filing date November 2, 2005 and registration date November 29, 2006.
Word mark WWW.GRATISBYGGETILBUD.DK for class 35 with registration No. VR 2006 03525, filing date November 19, 2005 and registration date November 29, 2006.
The disputed domain name <gratisbyggetilbud.com> was registered by the Respondent on March 18, 2009.
5. Parties' Contentions
A. Complainant
The Complainant, Gratisbyggetilbud Aps, is a private limited liability company organized under the laws of Denmark. The Complainant was founded on December 15, 2004 under the name ApS KBUS 17 NR.3784 and changed the company name into Gratisbyggetilbud Aps on December 23, 2004.
The Complainant's business involves marketing, including procurement of building projects/contracts and procurement of contract between builders and entrepreneurs/workmen etc. The Complainant acts, via its' websites, as an intermediary between skilled workmen such as plumbers, painters, carpenters, electricians as well as architects and building engineers on the one side and builders and entrepreneurs on the other side.
The Complainant argues that the disputed domain name is identical to the Complainant's registered trademark GRATISBYGGETILBUD and confusingly similar to the trademark “WWW.GRATISBYGGETILBUD.DK”.
The Complainant has been the holder of the Danish domain name <gratisbyggetilbud.dk> since March 12, 2004 and the Norwegian domain name <gratisbyggetilbud.no> since February 25, 2008. The Complainant registered a Norwegian branch on May 19, 2008 named Gratisbyggetilbud Norge.
The disputed domain name <gratisbyggetilbud.com> was originally registered by the Complainant on November 24, 2005. The Complainant failed to renew the domain name when it expired on November 24, 2008. The disputed domain name was registered by the Respondent on March 18, 2009.
The Respondent is using the disputed domain name to redirect internet users to the website “www.riksanbud.no”, which is owned by Strand Consult, a one-man business having identical address, e-mail, telephone and fax number as the Respondent. The owner of Strand Consult is the CEO of the Respondent. The purpose of redirecting the disputed domain name to “www.riksanbud.no” is to attract for commercial gain, internet users to the Respondent's website. The website offers the exact same kind of services as the Complainant.
The Respondent does not own any trademarks and there is no evidence of the Respondent's use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods and services. Neither has the Respondent been commonly known by the disputed domain name. The Respondent is not making legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain. The Respondent is misleading and diverting consumers for commercial purposes or to tarnish the trademark or service mark at issue.
B. Respondent
The Complainant and the Respondent are competitors in the field of providing free construction bids. The Respondent agrees that the disputed domain name <gratisbyggetilbud.com> is identical to the Complainant's trademark GRATISBYGGETILBUD. However, the Respondent argues that the Complainant's right is not an exclusive right to use the trademark for the services provided by the parties. The Respondent does not provide any services protected in class 35 and nor does the Complainant. The Complainant's trademark is limited to advertising and advertising services in class 35. Thus, the Complainant has no exclusive rights to GRATISBYGGETILBUD for other services than advertising and advertising services.
On March 3, 2010, the Respondent contacted the Norwegian Industrial Property Office regarding a preliminary trademark search for GRATISBYGGETILBUD. The Respondent was informed by the Norwegian Industrial Property Office that the phrase consists of common words and lacks the possibility of distinguishing the products and services of one business from those of other businesses.
The Respondent asserts that it has a legitimate right to use the disputed domain name. Anyone can register and use the domain name on a first come first served basis, provided that the use does not fall into the protected category of class 35. The Respondent registered the disputed domain name in March 2009, approximately five months following expiry date.
The Respondent has provided free construction bids since April 2008 and delivered several thousands such bids. The Respondent has used the disputed domain name for competitive services by forwarding it to the website “www.riksanbud.no”. Thus, the Respondent has used the disputed domain name in a forwarding service since March 2009 in connection with a bona fide offering of goods or services. The forwarding service is a marketing strategy.
The phrase “gratisbyggetilbud” means to provide free construction bids / tenders. The disputed domain name consists of a non-distinctive and descriptive phrase commonly used in the field where the parties are competitors. The disputed domain name is descriptive for the business.
There is no proof that the disputed domain name has been registered with the intent to divert consumers or to tarnish the trademark. Since the parties have different visual expressions on the respective websites, there is no danger of actual diversion.
The Complainant's trademark only provides protection for class 35 and neither of the parties provides these services and nor do they compete in this field.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is, according to the submitted evidence, the owner of the registered Danish trademarks WWW.GRATISBYGGETILBUD.DK and GRATISBYGGETILBUD. The Complainant's trademark registrations predate the Respondent's registration of the disputed domain name <gratisbyggetilbud.com>.
The disputed domain name incorporates the trademark GRATISBYGGETILBUD in its entirety.
Having the above in mind, the Panel concludes that the disputed domain name <gratisbyggetilbud.com> is identical to the Complainant's trademark GRATISBYGGETILBUD and that the Complainant has proved the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(a) that it has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute; or
(b) that it is commonly known by the domain name, even if it has not acquired any trademark rights; or
(c) that it intends to make a legitimate, noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent's basis for claiming rights and legitimate interest in the disputed domain name can be summarized as follows:
(a) The phrase “gratisbyggetilbud” has a descriptive meaning which can be translated to “provide free construction bids / tenders”.
(b) The Respondent has provided free construction bids since April 2008.
(c) The Respondent has forwarded the disputed domain name to “www.riksanbud.no” since March 2009 and thus used the disputed domain name in connection with a bona fide offering of goods and services.
The Respondent maintains that it has provided free construction bids since April 2008 and that the phrase “gratisbyggetilbud” has a descriptive meaning and is commonly used in this field of business. According to the Respondent, the phrase describes the core of services provided by the Respondent at the website “www.riksanbud.no”.
The Complainant has a trademark registration for the term “gratisbyggetilbud” in Denmark. However, it has been noted by the panel that the word “gratis” means “free” in both Danish and Norwegian. The word “bygge” means “build” in both languages and the word “tilbud” can be translated to “offer/quotation/estimate” in both Danish and Norwegian. Accordingly, the disputed domain name, which is identical to the Complainant's registered trademark, consists of common descriptive terms, both in the Danish and Norwegian language.
In the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview”), paragraph 2.2, consensus view, it has been stated that if the Complainant makes a prima facie case that the Respondent has no rights or legitimate interests, and the Respondent fails to show one of the three circumstances under Paragraph 4(c) of the Policy, then the Respondent may lack a legitimate interest in the domain name, even if it is a domain name comprised of a generic word(s). Furthermore, if a Respondent is using a generic word to describe his product/business or to profit from the generic value of the word without intending to take advantage of Complainant's rights in that word, then it has a legitimate interest.
The Panel has noted that there is no evidence in the case demonstrating or indicating that the Respondent is commonly known by the disputed domain name. Thus, the Respondent has not demonstrated the criteria in paragraph 4(c)(ii) of the Policy.
From the submitted material it can be established the Respondent has redirected the disputed domain name <gratisbyggetilbud.com> to the website “www.riksanbud.no”, which is registered to the company Strand Consult. The registered owner of Strand Consult is the same person as the CEO of the Respondent. Furthermore, the Complainant has provided evidence that the Respondent and Strand Consult share the same address, telephone, fax and e-mail address indicating that the two companies are related. The website “www.riksanbud.no” to which the disputed domain name is redirected is a commercial website. Consequently, the Panel finds the Respondent's use of the disputed domain name is of a commercial nature and the Respondent has not demonstrated the criteria described in paragraph 4(c)(iii) of the Policy.
The next question that needs to be answered is whether the Respondent has used or made demonstrable preparations to use the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute as described in paragraph 4(c)(i) of the Policy?
The Respondent has actively been redirecting the disputed domain name <gratisbyggetilbud.com>, which consists of common terms descriptive of the Respondent's business, to the Respondent's website “www.riksanbud.no” where the Respondent has been offering free construction bids prior to the dispute. Against the fact that the parties are competitors and the fact that the Complainant owns the Danish trademark GRATISBYGGETILBUD must be weighed the fact the Respondent is seemingly engaged in a business that could quite reasonably be described by the terms in the disputed domain name, as well as the fact that the Complainant's trademark is towards the weaker end of the spectrum. There is also no evidence in the case before the Panel which persudes it that the Respondent has used the disputed domain name in a way other than to describe the Respondent's business and to profit from the generic and descriptive value of the phrase. Furthermore, there is no evidence in the case showing that the Respondent has intentionally intended to take advantage of the Complainant's rights in the phrase.
Had there been evidence in the case that demonstrated that the Respondent had intentionally aimed to take advantage of the Complainant's rights, as distinct from the descriptive meaning of the terms contained in the disputed domain name, the requirement relating to a bona fide offering of goods and services would have been a significant issue. However, the evidence in the case does not persuade the Panel that the Respondent on the balance had such mala fides intent, and (at least on the present record) the Panel does not find the Respondents' claims as to the descriptive nature of the domain name to be inherently implausible.
Having the above in mind, the Panel finds that the Respondent has on balance established a right or legitimate interest by demonstrating that the Respondent has used the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute, as described in paragraph 4(c)(i) of the Policy.
C. Registered and Used in Bad Faith
Given the finding of the panel that the Respondent has established a right or legitimate interest in accordance with paragraph 4(c)(i) of the Policy, the Panel does not need to consider the requirements of paragraph 4(a)(iii) of the Policy.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Johan Sjöbeck Sole Panelist
Dated: March 31, 2010
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