WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Elefantriste A/S v. Alhaug AS

Case No. D2010-1779

1. The Parties

The Complainant is Elefantriste A/S of Holstebro, Denmark, represented by Patrade A/S, Denmark.

The Respondent is Alhaug AS of Hosle, Norway, represented by LYNX Advokatfirma DA, Norway.

2. The Domain Name and Registrar

The disputed domain name <elefantrist.com> is registered with Nordreg AB.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2010. On October 22, 2010 with reminders on October 25, 26, and 28, 2010, the Center transmitted by email to Nordreg AB a request for registrar verification in connection with the disputed domain name. On November 3, 2010, Nordreg AB transmitted by email to the Center its verification response, confirming that (1) the Respondent is listed as the registrant and providing the contact details and that (2) the language of the registration agreement used for the disputed domain name registration was Norwegian. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 12, 2010.

On November 8, 2010, the Center issued a Language of Proceeding notification, inviting comment from the parties. The Complainant submitted a request that English be the language of the proceeding on November 12, 2010. The Respondent consented to the Complainant’s request. On November 12, 2010, the Center notified the parties that the administrative proceedings will be conducted in the English language.

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 November 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2010. The Response was filed with the Center on November 30, 2010.

The Center appointed Petter Rindforth as the sole panelist in this matter on December 14, 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.

The Panel shall issue its decision based on the Complaint, the Response, the Policy, the Rules and the Supplemental Rules. The case before the Panel was conducted in the English language.

4. Factual Background

The Complainant is the owner of the following trademark registrations:

Danish national trademark registration No. VR 1936 01267, for the word mark ELEFANT, registered on December 12, 1936, in respect of goods in Intl Classes 6 and 19.

Danish national trademark registration No. VR 1983 02503, for the word mark ELEFANT, registered on August 5, 1983, in respect of goods in Intl Class 6.

Community trademark registration No. 000647636, for the word mark ELEFANT, registered on June 1, 1999, in respect of goods in Intl Classes 6 and 19.

According to both the Complainant and the Respondent, the Respondent registered the disputed domain name in 2007. See the Panel’s further comments under Discussion and Findings below.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s registered trademarks for ELEFANT, and that the first part of the domain name is identical with that trademark.

Further, the Complainant states that it owns the domain names <elefantriste.com>, registered on August 4, 2001, and <elefantriste.dk>, registered on October 2, 1997, as well as that the company name of the Complainant is ElefantRiste A/S, founded on December 13, 1973. Regarding the company name, the Complainant states that the last part of <elefantrist.com> is almost identical to the company name.

The Complainant informs that the word “Elefantriste” is Danish and can be translated to “Elephant grating”, and add that the registered trademarks of the Complainant are always used together with the word “riste” so that it makes the word ElefantRiste (Annex 3 of the Complaint showed printouts of the Complainant’s web site).

According to the Complainant, the Complainant and the Respondent are competitors as both companies’ primary products are “gratings”.

The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain name, as

1) There is no indication or evidence that the Respondent is making a legitimate noncommercial or fair use of the domain name. The Respondent does not use any trade mark “Elefantriste.com” for any goods or services provided by the Respondent; but the Respondent has goods and services on the website that compete with the Complainant’s goods and services.

2) The Respondent has never been known by the domain name or by any name similar to that name, and can, therefore, not uphold any rights to the domain name on this basis.

3) There is no information or evidence from the accessible web pages of the Respondent indicating the Respondent’s use of the domain name in connection with a bona fide offering of goods and services.

Finally, the Complainant argues that <elefantrist.com> was registered and is being used in bad faith. The Complainant points to the fact that its own domain names, as well as the company name, were registered prior to the disputed domain name, and that both the Complainant and the Respondent are competing companies primarily selling different kinds of gratings. The Complainant concludes that <elefantrist.com> was registered or acquired primarily for the purpose of selling these solutions and misusing the Complainant’s trade mark and company name. By using the domain name, the Respondent intentionally attempts to obtain commercial gain and attract Internet users to the Respondent’s website or other online locations 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 location or of a product or service on the Respondent’s website or location.

The Complainant requests, in accordance with paragraph 4(i) of the Policy, that the Administrative Panel issues a decision that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent states that the Respondent’s company was incorporated in 1989, and that the Alhaug family has been in the business of providing gratings since 1967.

According to the Respondent, the Complainant has submitted evidence that it is the owner of two Danish trademark registrations for ELEFANT, the domain names <elefantriste.dk> and <elefantriste.com>, and the company name ElefantRiste A/S, but not argued for a trademark established by use, or argued that the Respondent is using a similar visual expression protected by the Complainant.

The Respondent points out that the Complainant has changed its company name a couple of times, and confirm that it is not clear for the Respondent how long the Complainant has been known in the market as ElefantRiste AS. The Respondent concludes that the changes from RM Gitterriste AS, Elefantriste Holding AS to ElefantRiste AS documents that the Complainant uses a various set of brands for their business and that the Complainant has not been using “Elefantriste” as the company name since the date of incorporation of December 13, 1973.

The Respondent confirms that the Complainant and the Respondent are competitors, and specify the business field as “manufacturing and the sale of welded gratings, in the market known as elefantgratings”. Further, the Respondent refers to an Internet search (Annex 18 of the Response) for “elefantrist” and concludes that the search shows a broad and common use of “elefantrist” by also other companies than the Complainant and the Respondent, for the same product.

The Respondent states that it is using <elefantrist.com> to redirect Internet users to the Respondent’s web site “www.alhaug.no”, and that the purpose of the said redirecting is to attract, for commercial gain, Internet users to the Respondent’s web site. The Respondent confirms that it offers the exact same kind of services as the Complainant (Annex 6 of the Response showing the services/goods of the Respondent).

The Respondent states that “Elefantrist” is not similar or confusingly similar to the Complainant’s trademark ELEFANT. The Respondent further argues, referring to the Complainant’s company name Elefantriste AS, that adding a descriptive common word as “riste” does not in itself gives any preemptive rights to a domain name.

The Respondent refers to a preliminary search report of the words ELEFANT and ELENTRIST, ordered by the Respondent on November 10, 2010, and delivered by Patentstyret (the Norwegian Patent and Trademark Office) on November 17, 2010 (Annex 9 of the Response), stating that Patentstyret had found no grounds for refusal of such trademarks in respect of “grilles of metal” in Intl Class 6 in Norway. The Respondent concludes that it is free to register the trademark “elefantrist” in Norway, and informs that it has now applied for such trademark application.

The Respondent states that it has legitimate right to use the disputed domain name, concluding that the Complainant has no exclusive right to the domain name on the relevant filed of business and as such others can register and use the domain name on a first come — first serve basis. The Respondent refer to that it has used <elefantrist.com> since the registration in 2007, and claim that there are no proof that the domain name has been registered with the intent to divert consumers or to tarnish any trademark. Referring to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.2, consensus view, the Respondent points out that 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 Respondent confirms that it has used the disputed domain name for competitive services by forwarding the domain name from the time it was registered. Thus, the Respondent has used the disputed domain name for a profit of its generic value in a forwarding service — in connection with a bona fide offering of goods or services. The forwarding service is a normal marketing strategy.

Finally, the Respondent denies having registered and using the disputed domain name in bad faith, claiming that it is fair use to use the domain name to attract attention to a website that offers competitive services. The Respondent points out that the domain name is non distinctive, and that there is no evidence in the case persuading 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.

In the Response, the Respondent initially refers to the date of registration of the disputed domain name to 1) June 7, 2007, and later in the Response to 2) July 10, 2007.

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.

Date of registration of the Disputed Domain Name

According to the Registrar’s verification, sent to the Center on November 3, 2010, the disputed domain name was created on June 8, 2000.

The Complainant refers to the registration date as October 7, 2007.

The Respondent has stated two different registration dates: June 7, 2007 and July 10, 2007.

As both the Complainant and the Respondent refers to 2007 as the year of domain name registration, the Panel will treat 2007 as the year the Respondent registered the disputed domain name.

A. Identical or Confusingly Similar

The Complainant has claimed to be the owner of two Danish national trademark registrations, as well as of a Community trademark registration, for the word mark ELEFANT. The Complainant has provided screenshots from the respective official trademark registry web sites, as evidence of the existence of the claimed trademark registrations. The Panel notes that these screenshots are limited, showing only parts of the registered details related to the trademarks. However, although not complete, the details – together with the further written information provided by the Complainant – give the Panel no reason to questioning that the Complainant is the owner of the cited trademark registrations.

The relevant part of the disputed domain name is “elefantrist”. The addition of the generic top-level domain “.com” is insufficient to distinguish the domain name from the Complainant’s marks.

As both the Complainant and the Respondent mention, however with different conclusions, the disputed domain name consist of the Complainant’s trademark ELEFANT, with the addition of the descriptive common word “rist”. Accordingly, the domain name is distinguished only by the addition of the generic term “rist”, which in its Danish version “riste” is registered and used by the Complainant, in combination with the ELEFANT trademark, both in the company name ElefantRiste A/S as well as in the domain names <elefantriste.dk> and <elefantriste.com>. The Panel concludes that the addition of “rist” is not only insufficient to distinguish the disputed domain name from the Complainant’s ELEFANT mark, but in fact rather adds to the confusing similarity. See Google Inc. v. Xtraplus Corp., WIPO Case No. D2001-0125 (finding that the respondent’s domain names were confusingly similar to complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end), see also Experian Info. Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095 (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark).

Accordingly, the Panel finds that the domain name is confusingly similar to the Complainant’s trademark ELEFANT.

B. Rights or Legitimate Interests

The Complainant’s assertion that Respondent lacks rights or legitimate interests in the disputed domain name can suffice to establish a prima facie case under the Policy. Once a prima facie case has been established, the burden shifts to the Respondent to demonstrate that it does have rights or legitimate interests pursuant to paragraph 4(c) of the Policy. See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent.”).

Both the Complainant and the Respondent have informed and confirmed that they are competitors. The Respondent, arguing that “elefantrist” is a generic word, has further confirmed that it is using <elefantrist.com> to redirect Internet users to the Respondent’s web site “www.alhaug.no”, and that the purpose of the said redirecting is to attract, for commercial gain, Internet users to the Respondent’s web site.

The Respondent has referred to the WIPO Overview of WIPO Panel views on selected UDRP Questions and concluded that the Respondent has rights to use <elefantrist.com>.

The Panel disagrees with the Respondent’s conclusion. First of all, the disputed domain name is a clear combination of a competitor’s registered trademark and the generic word “rist”. Secondly, the Panel concludes that the Respondent had knowledge of the Complainant’s trademark rights (although not covering Norway), as well as the Complainant’s marketing and use of the combination of the ELEFANT trademark and the term “riste” at the time of the registration of the disputed domain name. Such use cannot be viewed as bona fide use. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (“We . . . conclude that use which intentionally trades on the fame of another can not constitute a ‘bona fide’ offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.”). See also Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258 (stating that “…the Respondent is not connected with the Complainant, but uses the Complainant’s mark with an intention to derive advantage from user confusion. Such use by the Respondent is not legitimate use and does not confer any rights in favour of the Respondent”).

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name <elefantrist.com>.

C. Registered and Used in Bad Faith

To fulfill the third requirement, the Complainant must prove that the domain name has been registered and is being used in bad faith.

The Respondent does not deny the Complainant’s conclusion that the Respondent had knowledge about the Complainant’s trademark ELEFANT, as well as the Complainant’s use of the combination of trademark and generic term, at the time of the Respondent’s registration of <elefantrist.com>.

If the disputed domain name was registered in the year of 2000, as informed in the Registrar’s verification, or in 2007, as stated by the Complainant and the Respondent, is of less importance as the trademark rights of the Complainant dates back to 1936, 1983 and 1999.

The Respondent, although a Norwegian company, has confirmed that it see the Complainant (a Danish company) as a competitor. The Panel concludes that 1) it is not unusual for Scandinavian companies to act on the same market, even if based in different Scandinavian countries, 2) both the Complainant’s and the Respondent’s web sites have English parts, as well as the respective local languages, indicating at least that both the Complainant and the Respondent are planning for markets outside their respective local countries (annex 3 and 4 of the Complaint).

There is therefore no doubt that the Complainant and the Respondent are competitors, and that the Respondent registered and is using the disputed domain name with full knowledge of the Complainant’s prior rights and long term use, with the specific goal to redirect Internet users from the Complainant to the Respondent. See Robert J. Goodman, Box Brothers Corporation v. Gary Lam,WIPO Case No. D2004-0785 (finding that if the Respondent was aware of the Complainant or the service mark, it is difficult to avoid the conclusion that the Respondent’s intention must have been to capitalize on the Complainant’s goodwill in the service mark).

Accordingly, the Panel concludes that the disputed domain name is registered and used in 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 <elefantrist.com> be transferred to the Complainant.

Petter Rindforth
Sole Panelist
Dated: December 28, 2010