WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jakri ApS v. Sanela Jankovic / Jesper Wennick
Case No. D2013-0511
1. The Parties
The Complainant is Jakri ApS of Vildbjerg, Denmark, represented by Delacour Dania Law Firm, Denmark.
The Respondent is Sanela Jankovic of Copenhagen, Denmark / Jesper Wennick of Copenhagen, Denmark, represented pro se.
2. The Domain Name and Registrar
The disputed domain name <indura.com> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 14, 2013. On March 14, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 15, 2013, the Registrar 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 20, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was April 9, 2013. On March 20, 2013, the Center received a request to extend the deadline to submit the Response by Jesper Wennick, who also stated that he was the real owner of the disputed domain name. By email of March 20, 2013, the Center granted an extension of time until April 14, 2013. The Response was filed with the Center on April 10, 2013. On April 19, 2013, the Center received a supplemental submission from the Complainant.
The Center appointed Brigitte Joppich, Knud Wallberg and David E. Sorkin as panelists in this matter on May 8, 2013. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
4. Factual Background
The Complainant is part of the Indura group of companies, which was founded on August 24, 1988. On December 22, 1997 Indura A/S was established as a wholly owned subsidiary of the Complainant. The Complainant holds the intellectual property rights of the Indura group and applied for two Community trademarks on January 7, 2013, i.e. INDURA (application no. 011338118) and INDURA & design (application no. 011338191).
At the time of the filing of the Complaint, the disputed domain name was registered in the name of the Respondent Sanela Jankovic, who is still registered as domain owner in the WhoIs database. The Respondent Jesper Wennick acquired the disputed domain name on February 26, 2013 in a public Internet auction at the auction site <namejet.com>. Having purchased the disputed domain name, the Respondent Jesper Wennick tried to transfer such domain name to his registrar but failed as the releasing registrar cancelled the request for transfer due to the filing of the Complaint.
5. Parties’ Contentions
A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case.
With regard to the Respondent Sanela Jankovic, the Complainant argues as follows:
(1) The Complainant states that the Indura group has used the trademark INDURA in Denmark and beyond since its establishment in August 1988 in the course of trade with fittings, flanges, and other related products. Furthermore, it states that the Indura group registered the domain name <indura.dk> on February 28, 1997 and has used such domain name in connection with its official website. It contends that it owns unregistered trademark rights in INDURA with respect to fittings and flanges under Section 3(1)(2) of the Danish Trademark Act.
The Complainant states that the disputed domain name is identical to its unregistered trademark INDURA.
(2) The Respondent has no rights or legitimate interests in the disputed domain name as there is no evidence of the Respondent using, or preparing to use, the disputed domain name other than for a parking website, as the Respondent has never offered for sale any goods or services under the name “Indura”, as the Respondent has not been commonly known by the name “indura” in the course of trade or otherwise, and as the Respondent does not have any legitimate noncommercial or fair use interest in the disputed domain name.
(3) The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant argues that it is apparent that the Respondent registered the disputed domain name for the sole purpose of selling it to the Complainant or a competitor at an inflated price as it offers the disputed domain name for sale for an amount of EUR 25,000.00. Furthermore, the Complainant states that the Respondent’s contact email address is associated with 2,753 domain names, which suggests that the Respondent is involved in domain name speculation.
Upon receipt of the Response, the Complainant further argued with regard to the Respondent Jesper Wennick, disputing his contentions and reiterating that all communications by Jesper Wennick were irrelevant to these proceedings, for which reason they should be ignored. The Complainant further states that the content at the disputed domain remained unchanged, that the disputed domain name is still offered for sale at EUR 25,000.00, and that Jesper Wennick did not provide any evidence to support the claim that the transfer of the disputed domain name could not have been initiated at an earlier date or that he was unable to change the associated website.
With regard to the three elements specified in paragraph 4(a) of the Policy, the Complainant argues in its supplemental submission as follows:
(1) The term “indura” is not a generic word and not descriptive of the Complainant’s products, and the Complainant owns unregistered common law rights in such term.
(2) The Respondent has no rights or legitimate interests in the disputed domain name as he has not provided any evidence of preparations to use the disputed domain name and as “indura” is not descriptive or indicative of hard rock music.
(3) The Respondent registered and has used the disputed domain name in bad faith. With regard to bad faith registration, the Complainant argues that the Respondent himself stated that he searched for the term “indura” in the Danish trademark database before acquiring the disputed domain name and that it is highly unlikely that that the Respondent would search the Danish trademark database to ensure that he did not infringe upon third party rights without making a standard Internet search nor a search in the Community trademark database, which both would have revealed the Complainant’s activities. Therefore, the Respondent was most likely aware of the Complainant when purchasing the disputed domain name. With regard to bad faith use, the Complainant argues that it is most likely that the Respondent registered the disputed domain name in order to resell it at an inflated price and that the Respondent has already been ordered to transfer another domain name in a proceeding under the UDRP.
B. Respondent
The Response was filed by Jesper Wennick.
He states that he is well known in the Danish music industry, owned different record labels and has achieved sales of more than 1 million albums. He further states that it has been part of his business to purchase domain names for the “right concept” and that, in rare cases, he also filed corresponding trademark registrations.
With regard to the three elements specified in paragraph 4(a) of the Policy, the Respondent states the following:
(1) The Respondent states that the Complainant has no rights in “indura” under the Policy, that the term “indura” was not coined by the Complainant, and that the Complainant does not have exclusive rights in it, not even in Denmark. The Respondent further states that the term “indura” has been used concurrently for a long time by various parties, that there are five European trademark registrations for INDURA in the name of third parties, and that the term “indura” is descriptive of the Respondent’s planned use in connection with a hard rock music portal (derived from “to indurate”, i.e. to make hard).
(2) The Respondent states that he acquired the disputed domain name in order to develop a portal for hard rock music, and that he filed a Danish trademark application for INDURA.COM on March 18, 2013 and a Community trademark application for INDURA.COM on March 21, 2013. The Respondent further states that the truncated term “indura” may be used indicative of hard rock music, as the term is phonetically indistinguishable from “indurate” meaning “hard” or “make hard”. For these reasons, the Respondent claims that the purchase of the disputed domain name as a descriptive, non-exclusive and non-distinctive one word domain name for the purpose of developing a portal for hard rock music is not illegitimate and that he has both intellectual property rights and a legitimate interest in the disputed domain name.
(3) The Respondent states that the Complainant presented no evidence to support that the Respondent knew or had a duty to know the Complainant when the disputed domain name was purchased. The Respondent argues that there is neither any substantial national or international advertising by the Complainant nor any widespread consumer recognition of the Complainant in Denmark or abroad. The Respondent further contends that the Complainant has not shown that the Respondent purchased the disputed domain name for the purpose of selling it to the Complainant or its competitors and that the Respondent never tried to contact the Complainant to sell the disputed domain at an inflated price. He states that he did not purchase or use the disputed domain name in bad faith under paragraph 4(b) of the Policy.
6. Discussion and Findings
A. Preliminary Issues
The first point to be dealt with is the identity of the Respondent. The disputed domain name is still registered in the name of the Respondent Sanela Jankovic. However, the Respondent Jesper Wennick provided evidence that he acquired the disputed domain name prior to the filing of the Complaint in the present proceeding and that the transfer of the disputed domain name failed because the Complaint had been lodged in the meantime. As the information in the WhoIs database is not constitutive of the ownership of the disputed domain name, the Panel will treat Jesper Wennick as beneficial holder of the disputed domain name and will refer to Jesper Wennick as the Respondent for the purpose of this proceeding.
The second point to be dealt with is the admissibility of the Complainant’s supplemental submission in reply to the Response. The Rules do not allow the parties to file supplemental submissions on their own volition, and paragraph 12 of the Rules provides that a panel may in its sole discretion request further statements or documents from either of the parties. Thus, no party has the right to insist upon the admission of additional arguments or evidence. Grounds justifying new submissions are generally those regarding the existence of new pertinent facts that did not arise until after the complaint was filed. The Complainant deals with Jesper Wennick’s allegations that he is the beneficial owner of the disputed domain name which the Complainant could not anticipate when filing the Complaint. Under these circumstances, the Panel elects to accept the Complainant’s supplemental submission and has relied on it in reaching this Decision.
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
B. Identical or Confusingly Similar
The Complainant does not own any registered trademark rights in INDURA but has so far only applied for the registration of two Community trademarks including such term. It has been consistently held by panels in other UDRP proceedings that a trademark application is not sufficient evidence of rights in a mark, without other evidence of unregistered (i.e., common law) rights (cf. Mk-Net-Work v. IVE Technologies,
WIPO Case No. D2004-0302; PRGRS, Inc. v. Pamela Pak,
WIPO Case No. D2002-0077; Mayekawa Mfg. Co., Ltd. v. Modern Limited - Cayman Web Development,
WIPO Case No. D2005-0745).
The Complainant relies on unregistered trademark rights in Denmark in INDURA based on the use of such term since its establishment in August 1988 in the course of trade with fittings, flanges, and other related products.
According to Section 3(1)(2) of the Danish Trademarks Act, a trademark right can be established through use of the mark in Denmark for the specific goods and services for which the mark has been used. The Annexes to the Complaint, on which the Complainant relies, primarily reveal use of “indura” as an integral part of a logo that contains the full company name Indura A/S. In some of the textual parts of the said material, Indura A/S is however referred to as Indura and on the enclosed copies of invoices, Indura appears as a dominant part of the logo. In the view of the Panel, the evidence contained in the case file supports that the name Indura as such has been used as a trade name for Indura A/S.
It is well-established that common law trademark rights may be sufficient for the purposes of establishing rights under paragraph 4(a)(i) of the Policy (cf. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.7; UITGERVERIJ CRUX v. W. FREDERIC ISLER,
WIPO Case No. D2000-0575; Skattedirektoratet v. Eivind Nag,
WIPO Case No. D2000-1314; Amsec Enterprises, L.C. v. Sharon McCall,
WIPO Case No. D2001-0083; Australian Trade Commission v. Matthew Reader,
WIPO Case No. D2002-0786; Imperial College v. Christophe Dessimoz,
WIPO Case No. D2004-0322). However, it is noteworthy that the requirements to establish common law trademark rights under the UDRP may differ from those necessary under national law. To establish common law trademark rights under the Policy, a complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. A conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice. In fact, specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required.
In the Panel’s view, the evidence provided by the Complainant is not sufficient to establish that the Complainant enjoys common law trademark rights under the UDRP in the term “indura”. In support of its claim of unregistered trademark rights, the Complainant has filed inter alia prints from the website at <indura.dk>, marketing material, invoices, and business cards. No claim of a secondary meaning of the company name Indura has been made by the Complainant and absolutely no evidence in support of such claim has been presented to the Panel. Moreover, the Complainant in this case is Jakri ApS (and not Indura A/S), and the Complainant Jakri ApS did not claim or provide any evidence that it is owner or licensee of unregistered rights in INDURA (the fact that Indura A/S is a wholly owned subsidiary of the Complainant is not sufficient in this regard).
The Panel therefore cannot but find that on the record of these Policy proceedings the Complainant only established that the name Indura has been used as a trade name for Indura A/S and not that the Complainant Jakri ApS can rely on a secondary meaning in Indura. The Complainant thus failed to satisfy the first element of the Policy.
C. Rights or Legitimate Interests
In the light of the Panel’s finding below (cf. 6.D.) it is not necessary for the Panel to come to a decision in this regard.
D. Registered and Used in Bad Faith
Considering the finding under 6.B above, the Panel need not come to a decision on the question of registration and use in bad faith either. However, the Panel wishes to point out the following:
It appears that the Respondent acquired the disputed domain name in a public auction before knowledge of the present dispute. Furthermore, the Respondent provided evidence that the term “indura” is used by several third parties in connection with their respective products. On the other hand, the Complainant failed to provide evidence with regard to its publicity in Denmark and with regard to the extent of its business activities over the last years. Under these circumstances, the Panel is not convinced that the Respondent must have been aware of the Complainant at the time of the acquisition of the disputed domain name and that the disputed domain name was registered in bad faith.
The fact that the content of the website at the disputed domain name remained unchanged after its acquisition by the Respondent (still including a sales offer) is per se not sufficient for a finding of bad faith registration and use in the Panel’s view either. From the Panel’s own experience, domain names acquired on the secondary market (as in the present case via an auction at NameJet) are sometimes blocked against changes with regard to the information available in the WhoIs database and the nameserver settings for a couple of days after the acquisition due to the fact that the implementation of the purchase and the allocation of the domain name to the buyer’s account with its registrar may take some time. Therefore, the fact that the disputed domain name was still offered for sale after the acquisition by the Respondent must not automatically be imputed to the Respondent.
Accordingly, the Panel concludes that the third requirement of the Policy has not been established either. The Complaint must therefore fail in this regard as well.
7. Decision
For the foregoing reasons, the Complaint is denied.
Brigitte Joppich
Presiding Panelist
Knud Wallberg
Panelist
David E. Sorkin
Panelist
Date: May 26, 2013
