WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lars Ernst Hansen and Mailtrading GmbH v. HyperActive ApS / Jakob Nordestgaard

Case No. D2014-2233

1. The Parties

The Complainants are Lars Ernst Hansen of Aalborg, SV, Denmark and Mailtrading GmbH of Munich, Germany, represented by Sandel, Løje & Partnere, Denmark.

The Respondent is HyperActive ApS, Jakob Nordestgaard of Braedstrup, Denmark, represented by Sirius Advokater I/S, Denmark.

2. The Domain Name and Registrar

The disputed domain name <xsmoke.com> is registered with CSL Computer Service Langenbach GmbH dba Joker.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2014. On December 19, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 22, 2014, 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 5, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was January 26, 2015. The Response was filed with the Center on January 26, 2015.

The Center appointed Lone Prehn as the sole panelist in this matter on February 5, 2015. 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 Complainants asked for the Panel's permission to file their supplemental submission on January 30, 2015 and the Respondent asked for the Panel’s permission to file a second submission against the Complainant’s assertions in this regard on February 8, 2015. On February 10, 2015, the Panel issued Procedural Order No. 1 allowing both submissions.

4. Factual Background

The Complaint concerns the disputed domain name <xsmoke.com>, which is being used for a corporate website and webshop in the name of the Complainant, MailTrading GmbH. The website shows use of the trademark XSMOKE in connection with the marketing and sale of various smokers’ articles and electronic cigarette products.

The Complainant MailTrading GmbH is a German company established in November 2011 by the second Complainant, the Danish citizen Mr. Lars Ernst Hansen, and the Respondent, Danish citizen Mr. Jakob Nordestgaard.

The Complainant Mr. Hansen is the CEO of the Complainant Company MailTrading GmbH and currently owns 40% of the share capital. Mr. Nordestgaard also currently owns 40% of the share capital of Complainant Company Mailtrading GmbH.

The Complainant, Mr. Hansen, has registered the following XSMOKE trademarks: Community Trademark registration No. 010398279 XSMOKE (word) for i.a. tobacco, smokers’ articles and matches in class 34 with priority from November 8, 2011; and on that basis International Registration No. 1142827 XSMOKE (word) made on November 6, 2012 designating Switzerland, China, Norway, Russia, Turkey and the United States of America (“US”); Community Trademark Registration No. 011909892 XSMOKE-logo, with priority from June 18, 2013 for i.a. tobacco free cigarettes for medical purposes in class 5; tobacco, smokers’ articles, matches; cigarettes, electronic cigarettes; cigarettes containing tobacco substitutes not for medical purposes; tobacco free cigarettes other than for medical purposes in class 34; retail and wholesale services for cigarettes, electronic cigarettes and cigarettes containing tobacco substitutes; and retail and wholesale services for tobacco free cigarettes for medical purposes, retail and wholesale services for tobacco and smokers’ articles in class 35; and on that basis International Registration No. 1169432 XSMOKE-logo made on June 25, 2013 and designating Switzerland, Norway, Russia, Turkey and the US.

The Respondent is the Danish company HyperActive ApS which is wholly-owned by Mr. Nordestgaard. The Respondent HyperActive ApS delivered various IT consultancy services to the Complainant Mailtrading GmbH

The disputed domain name was purchased via SEDO by the Respondent HyperActive ApS on October 22, 2011.

5. Parties’ Contentions

A. Complainant

The Complainants contend that they have shared or common legal interests in the invoked XSMOKE trademark rights as well as the registration and use of the domain name <xsmoke.com> and that the Respondent’s conduct “blocking for rectification” of the domain registrant to reflect Complainants as registrant, and threatening to abuse the disputed domain name registration is causing a common grievance.

The Complainants contend that the Respondent has no rights or legitimate interests in the disputed domain name <xsmoke.com>. All rights in the XSMOKE trademark which are the rights lawfully exploited by the Complainants at the current website at “www.xsmoke.com” belong to the Complainants, and have

belonged to the Complainants all along.

The Respondent was recorded as registrant of the disputed domain name without acceptance or agreement from the Complainants, and even without the Complainants initially knowing about it.

The Complainants provide the following background information and allegations:

In the last months of 2011 when the Complainant were establishing and launching the XSmoke business, the disputed domain name <xsmoke.com> appeared to be registered by an individual residing in the Republic of Korea, but was advertised for sale via SEDO GmbH.

Mr. Nordestgaard, apart from becoming at the time investor and shareholder in Mailtrading GmbH, was also employed as IT consultant for said company via the Respondent HyperActive ApS, which delivered various IT consultancy services to the Complainant Mailtrading GmbH, including the acquisition of the disputed domain name <xsmoke.com>.

The Complainants engaged the Respondent to handle the acquisition of the disputed domain name on behalf of and per instructions from the Complainants for the purposes of the Complainants’ use of the disputed domain name corresponding with the XSMOKE trademark, as the corporate domain name for its corporate website and email addresses, etc. Hence, the registration and use of the disputed domain name <xsmoke.com> was right from the outset closely connected with the Complainant’s trademark XSMOKE as is still the case today and was also initiated and (seemingly/believed to be) controlled by the Complainant.

Following the Respondent’s completion of the acquisition of the disputed domain name for the Complainants, the Respondent, however recorded itself as registrant of the disputed domain name <xsmoke.com>, instead of the Complainants. This was never in accordance with the instructions from an agreement with the Complainants who were and are still the owner of all rights in the XSMOKE name and trademark. Further, the Complainants did not know about it and had no insight in how to discover it at the time, but trusted that the Respondent had acted as agreed and acted also naturally and in the loyal interest of the Complainants.

When the Complainants discovered the erroneous recordal made by the Respondent, the Respondent agreed to rectify as soon as possible the registrant information to correctly reflect the Complainants. At the point in time when the problem concerning the erroneous registrant recordal was discovered, the outstanding task of rectifying the registrant information from the Respondent to the Complainants did in fact seem to be quite uncontroversial. Thus, the Parties were engaged in friendly relations and cooperation and neither of the Parties had the least doubt or made any attempt to dispute that the registrant recordal was a mistake that needed to be rectified, and that the rightful and lawful ownership of the domain rested with the Complainants.

In May 2014 the Complainants discovered that the registrant was still erroneously reflected as the Respondent and not the Complainants, and contacted the Respondent to arrange for the urgent transfer already agreed many months before when the problem was first discovered. The Respondent promised in a telephone conversation with the Complainants’ attorney to rectify the registrant information as soon as possible and also confirmed this in writing to the Complainants.

However, before the Respondent rectified the registrant information, the friendly and uncontroversial climate between the Parties abruptly ceased in connection with a wish from the Respondent to engage in other activities and get out of all of his business relations with the Complainants, and involving the necessity to discuss various economic terms (value of minority share posts, etc.).

By the end of October 2014, the Respondent expressed a refusal to participate in the voluntary transfer of the disputed domain name <xsmoke.com> that had been ongoing for more than a year. Instead, the Respondent attempted to abuse the fact that the Respondent was still recorded as the registrant of the disputed domain name, to pressure the Complainants into accepting specific economic terms favorable to the Respondent under the threats from the Respondent to transfer the domain to a third party for gain of money should the Complainant refuse to pay.

On October 23, 2014 an attorney’s letter was sent to the Respondent requesting it to immediately proceed to participate effectively in the voluntary transfer of the disputed domain name <xsmoke.com> and to deliver/hand out all relevant user-ID’s, logons etc. to secure the Complainant’s unhindered control of the disputed domains name and associated website.

At this time, the Complainants were beginning to have serious doubts as to whether the erroneous registrant recordal had ever been due to some form of innocent oversight or mistake; now it came across instead as a quite deliberate strategy abusing the lacking experience and insight in domain registrations on the part of the Complainants. On October 28, 2014 the Respondent firmly refused to participate in the technical change of registrant information, and put forward some unfounded accusations against the Complainants. Specifically, concerning the disputed domain name <xsmoke.com>, the Respondent asserted that the Respondent was the “rightful owner” and conditioned the outstanding transfer of the disputed domain name on acceptance of economic terms relating to the Respondent’s exit from/sale of shares in MailTrading GmbH.

The Respondent now suddenly also claimed the existence of a “lease agreement” concerning the disputed domain name <xsmoke.com. The alleged lease agreement claim was unfounded, not supported by any evidence other than a freshly issued invoice for “lease”, and conflicted directly with prior communications.

The Complainants made attempts to rectify the registrant status even without the (refused) technical assistance of the Respondent. The request to transfer the disputed domain name <xsmoke.com> from the Respondent to the Complainants and to the Complainant’s technical contact etc. by use of ordinary email transfer procedure was successful, and the Complainants were in consequence thereof on December 6, 2014 recorded in the WhoIs database as the registrant. However, within a few days, the Respondent succeeded via contact to the Respondent’s former domain administrator (GratisDNS/Larsen Data), to pull back the domain name registrant information via “certain ICANN emergency procedures”. The change back procedure was ordered by the Respondent although the Respondent was more than aware of the Complainant’s rights in both the XSMOKE trademarks and the <xsmoke.com> domain name, and even recognized and accepted this many times in writing over the years.

As a result of this change back procedure, the registrant information now reflects again the Respondent, and not the Complainants, making this Complaint necessary.

In conclusion, under the UDRP the Complainants submit:

- That the Complainants own any and all invoked trademark rights in XSMOKE;

- That the Respondent does not own any rights or legitimate interests in the disputed domain name <xsmoke.com>, and expressly noting that the Respondent’s ownership of a minority share portion in and other business relations with the company MailTrading GmbH does not provide any rights or legitimate interests for the Respondent in the disputed domain name <xsmoke.com>, including no rights vis-à-vis the Complainant company MailTrading GmbH, which is the lawful owner of the rights and legitimate interests in the disputed domain name;

- That the disputed domain name in question <>xsmoke.com is identical with the Complainant’s XSMOKE trademark and the disputed domain name is even used for the business of the Complainants, involving the use of the XSMOKE trademark in the bona fide trade of goods;

- That the Respondent is not making any use of the disputed domain name <xsmoke.com> in connection with the Respondent’s bona fide trade of goods. Such use in the bona fide trade of goods is instead made, and was always made, by the Complainant Company MailTrading GmbH;

- That the only independent “use” made of the disputed domain name xsmoke.com by the Respondent is a non-legitimate and abusive use, namely a use to attempt to obtain commercial gain, by abusing the Complainants’ lack of control and fear of the Respondent’s interference with this very important domain name to pressure the Complainants into accepting certain commercial terms favorable to the Respondent;

- That the deliberate registration in the Respondent’s own name following the SEDO acquisition on behalf of, instructed, and paid for by the Complainants to begin with, and the subsequent use of the registrant recording to put undue pressure on the Complainants, and with the potential to disrupt the Complainant’s commercial activities taking place from the website and e-mail addresses at the disputed domain name <xsmoke.com> constitute in itself registration and use in bad faith; and

- That in any case, the very recent “registrant transfer back” conducted by or upon express order of the Respondent where the Respondent within recent days in December 2014—in conflict with the Complainant’s trademark rights and obvious legitimate interests in the disputed domain name <xsmoke.com>, as carefully explained in the Complainant’s letter of October 23, 2014— deliberately and forcefully and against the express rights and interests of the Complainants who were the registrant at the time, took back its unwarranted position as recorded registrant from the Complainants with assistance from the Respondent’s former registrar, constitutes bad faith registration and use.

B. Respondent

The Respondent objects to the notion that the Complainants should be dealt with jointly.

Furthermore, the Respondent puts forward that the Complainants have not indicated whether they view that there are two Respondents, i.e. both HyperActive ApS and Mr. Nordestgaard.

The Respondent refutes that Mr. Nordestgaard should be regarded as a Respondent in this proceeding.

The Respondent provides the following background information and allegations:

In November 2011, the Complainant Mr. Lars Hansen and Mr. Jakob Nordestgaard, two Danish citizens, decided to establish a business in Germany to sell and distribute e-cigarettes. The company was named MailTrading GmbH.

The Complainant MailTrading GmbH was owned 50 per cent by Mr. Hansen’s holding company named L. Hansen Holding ApS, and 50 per cent by Mr. Nordestgaard’s holding company named Nordestgaard Holding ApS.

In 2011 and again in 2013 the Complainant Mr. Hansen registered the trademarks used by the Complainant MailTrading GmbH (XSMOKE – word mark and figurative mark).

On October 11, 2011, Mr. Nordestgaard, via a fully owned limited liability company controlled by Mr. Nordestgaard, namely the Respondent HyperActive ApS, established and registered the disputed domain name. The registration was enacted prior to the establishment of the Complainant MailTrading GmbH.

In September 2013 the two owners decided to allow Mr. Dannie Hansen (son of Lars Hansen) to become an owner of a total of 20 per cent of the share capital of the Complainant MailTrading GmbH. This was enacted via a restructuring of ownership and a share capital increase in the Complainant MailTrading GmbH. Mr. Dannie Hansen subscribed shares resulting in the 20 per cent ownership, whereby both Mr. Lars Hansen’s and Mr. Nordestgaard’s nominal shares of the company were reduced accordingly (i.e. the ownership structure was now a ratio of 40/40/20 per cent of the entire share capital of the Complainant company MailTrading GmbH).

The ownership of the trademarks of the Complainant MailTrading GmbH and the ownership of the disputed domain name used by the Complainant MailTrading GmbH was not disputed until the owners of one the Complainant, MailTrading GmbH fell into disagreement regarding the ownership of the Complainant MailTrading GmbH.

The ownership structure regarding the Complainant MailTrading GmbH, the ownership structure regarding the trademarks (utilized only by the Complainant MailTrading GmbH, but formally belonging to the Complainant Mr. Hansen), and the ownership structure to the Disputed Domain Name is a consequence of agreements between the various parties, an agreement which has been in place and fulfilled – as a matter of fact – since the establishment of MailTrading GmbH.

In re. Policy, para. 4(a)(i) the Respondent submits as follows:

The ownership of the trademark XSMOKE (word mark) and XSMOKE (figurative) rests with the Complainant Mr. Hansen.

The Complainant Mr. Hansen has a 40 per cent ownership interest in the other Complainant MailTrading GmbH, but does not have legitimate rights to substantiate the claims made in the Complaint. Mr. Hansen does not transact business using the trademarks, though the Complainant MailTrading GmbH does transact such business, using both the trademarks owned by Mr. Hansen andthe disputed domain name owned by the Respondent. Hence, it is not evidenced by the submissions made by the Complainants that it owns a right which fulfils the requirements of the Policy, para. 4(a)(i).

The indication on the webpage of the Complainant MailTrading GmbH where it states that “the xsmoke® trademark and associated market identifiers are the exclusive property of MailTraiding GmbH”is incorrect.

Nothing in the Complainants’ arguments shows that the Parties’ (meaning both Complainants, the Respondent, and the two other owners of the MailTrading GmbH, Mr. Dannie Hansen and Mr. Nordestgaard) agreement to let the Complainant Mailtrading GmbH use both the trademarks and the disputed domain name (regardless of formal ownership rights) should not stand.

In re Policy, para. 4(a)(ii), the Respondent submits:

The Respondent’s right to the disputed domain name is based on the agreement between the relevant parties. The Complainant MailTrading GmbH, and the Complainant Mr. Hansen have no legitimate interest in terminating the agreement (as enacted and fulfilled over time by all of the relevant parties).

Under Danish law, an agreement can be entered into in writing, orally, or merely as a consequence of the actions of the parties to the agreement. The Panel should respect the nature of the agreement between the Parties as enacted by them since 2011, an agreement which led the Respondent to register the disputed domain name even prior to the formal establishment of the Complainant MailTrading GmbH. The Respondent has not acted in breach of the agreement between the Parties.

The Respondent’s Exhibit K to the Response is an invoice of April 1, 2012 issued to MailTrading UG (which was the correct name of the Complainant MailTrading GmBH at the time of issue; the Complainant became a GmbH later). The invoice covers rent of the disputed domain name and it is stated on the invoice that the rental period is prolonged automatically for three months if not terminated previously. The invoice shows the ownership of the disputed domain name and the invoice was not disputed at the time of issue.

In re (Policy, para. 4(a)(iii))

The Respondent contests that the disputed domain name has been registered and used in bad faith.

It goes against the perception of the bath faith term that the maintaining of a domain name in the ownership of the same legal entity through some three years can evolve to a bad faith situation when no actions have been carried out by the owner to fulfill the criteria of the Policy, para. 4(b), nor has the owner tried to dispose of or in any other way acted against the interests of MailTrading GmbH, who has rented the domain from Respondent as a consequence of the actual splitting of assets which the first owners of the Complainant MailTrading GmbH have enacted and fulfilled throughout the years.

The Respondent obtained the disputed domain name even before the registration of the Complainant MailTrading GmbH, so the Respondent’s rights are prior to any rights of the Complainant MailTrading GmbH. No business unit has ever existed in regards to the so-called “xsmoke business”. The right legal unit is the MailTrading GmbH.

If the Complainants’ arguments should stand, the Complainants should have enacted a transfer of the trademarks of the same level of interests to the Complainant MailTrading GmbH as the Disputed Domain Name is. This did not happen – not even if it was a prerequisite for the Respondent to enter into discussions to transfer the disputed domain name to the Complainant in order to obtain a more strict structure for the joint company.

The Respondent contests the notion that Mr. Lars Hansen and Mr. Dannie Hansen lack insight into registration procedures and that this has been the base for the original registration of the disputed domain name with the Respondent. The Respondent contends that the Complainants’ actions to try to transfer the disputed domain name to the Complainant MailTrading GmbH in November and December 2014 is a classical act of bad faith. It was enacted against the will of the Respondent, it shows great insight into registration procedures and the requirements of hijacking domain names.

In the Respondent’s view the actions leading to this proceeding was the Respondent’s indication to the Complainant Mr. Hansen that Mr. Nordestgaard was ill, that he suffered from severe conditions and that it was considered stress related and that he had the thought to withdraw from his active involvement in MailTrading GmbH. That information led the other owners to try to obtain the ownership of the disputed domain name from the Respondent – including but not limited to transacting a general meeting for MailTrading GmbH, by so trying to obtain authorization to be able to transact competitive business (against MailTrading GmbH) and to sell off the MailTrading GmbH’s assets.

The actions described in the Complaint pertaining to telephone discussions between the Complainants’ attorney are not accurate in the Respondent’s view. The Respondent received a telephone call from attorney-at-law Tanya Meedom in May 2014. She referred to a conversation between Mr. Nordestgaard and Mr. Hansen whereby they had discussed transferring both the trademarks and the disputed domain name to the Complainant MailTrading GmbH. Mr. Nordestgaard viewed Ms. Meedom as the attorney for Mr. Hansen, since she had helped Mr. Hansen obtain the trademarks. Consequently, Mr. Nordestgaard was of the impression that Ms. Meedom would now initiate both the transfer of the trademarks and the transfer of the disputed domain name (in order to assure that the owners had equal interests in the MailTrading GmbH Company). Even though an attorney-at-law was involved, no agreements to state terms and conditions for the transfer of rights were entered into.

As no transfer of any trademarks took place, Mr. Nordestgaard cannot be held to any promise to transfer the disputed domain name, since this was conditional upon fulfilment of other criteria. The burden of production in this regard rests with the Complainants and they cannot meet such burden of production by indicating that the Respondent has acted in bad faith when this certainly is not the case.

Further, the disputed domain name was cut off from the Respondent’s handling in November/December 2014 when the Complainants indicate that some of the alleged wrongdoings should have taken place.

6. Preliminary Procedural Issue relating to the Parties

Consolidation of Multiple Complainants

A. Consolidation of Multiple Complainants under the Policy and Rules

The Policy and the Rules do not expressly contemplate the consolidation of multiple complainants (or respondents) in a unitary administrative proceeding, and generally speak in singular terms of a “complainant” when referring to proceedings under the Policy. A number of UDRP panels nonetheless have concluded that the use of the singular “complainant” in the Policy and Rules was not meant to preclude multiple legal persons in appropriate circumstances from jointly seeking relief in a single administrative proceeding under the Policy. See Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc./ Official Tickets Ltd, WIPO Case No. D2009-0331; ITT Manufacturing Enterprises, Inc., ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments, Inc., WIPO Case No. D2008-0936. See also National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd, WIPO Case No. DAU2008-0021.

B. Consolidation of Multiple Complainants in Relevant UDRP Decisions

A complainant must establish rights in a trademark or service mark with respect to which a domain name is identical or confusingly similar in order to have standing to invoke the Policy. See paragraph 4(a)(i) of the Policy. UDRP panels most often have accepted consolidated complaints in situations where multiple complainants have demonstrated common legal interests in the trademark rights on which a complaint is based. Such situations typically involve shared or common legal interests based on an agency, licensing, or affiliate relationship between the co-complainants. See, e.g., ITT Manufacturing Enterprises, Inc.,supra; Staples, Inc., Staples The Office Superstore, Inc., and Staples Contract and Commercial, Inc. v. SkyLabs Corporation and DL Enterprises, WIPO Case No. D2004-0220; Eli Lilly and Company, ICOS Corporation, and Lilly ICOS LLC v. RM-RS, LLC, WIPO Case No. D2005-1052.

C. General Principles of Consolidation in Multiple Complainant Cases

UDRP panel decisions in National Dial A Word Registry Pty Ltd, supra, and Fulham Football Club (1987) Limited, supra, have established the overriding principle that the consolidation of multiple complainants in a single complaint should be permitted if the complainants have a truly common grievance against the respondent, and if it is equitable and procedurally efficient to do so.

Under these principles, multiple complainants may have a common grievance against the respondent where they have a common legal interest in relevant right or rights allegedly affected by the respondent's conduct. “Common legal interests have been recognized in situations where: (1) the multiple complainants have a shared interest in a particular trademark, such as may exist between a licensor and a licensee; (2) the multiple complainants form part of a “single entity” where the individual companies are part of a larger corporate group or joint venture; and (3) the multiple complainants are members of an established association or league in which individual members have rights authorized to be enforced by the association. Consolidation in the first of these situations clearly involves a common legal interest in a particular trademark, whereas the consolidation in the second and third situations seems to be predicated either on the multiple complainants' existence within an “overarching legal system” or the presence of an “overarching legal entity” in which the complainants' individual rights have been vested.” MLB Advanced Media, The Phillies, Padres LP v. OreNet, Inc, WIPO Case No. D2009-0985, citing National Dial A Word Registry Pty Ltd, supra.

D. Application of Consolidation Principles in this Case

In this instance, the Panel finds that the Complainants have demonstrated that they have a common grievance against the Respondent sufficient to justify consolidation of their claims in a single proceeding. The Panel further concludes in the circumstances of this case that consolidation would be equitable to all the parties and procedurally efficient.

The XSMOKE trademark is in use for a corporate website and webshop owned and controlled by the Complainant MailTrading GmbH, and involves use of the trademark XSMOKE, registered in the name of the Complainant Mr. Hansen. The latter Complainant holds 40 percent of the shares and is thus a major shareholder in the former Complainant, MailTrading GmbH. In addition, Mr. Hansen is the CEO of the Complainant Mailtrading GmbH.

Given the very close association between Mr. Hansen and the MailTrading GmbH in relation to the registration and use of the trademark XSMOKE, the Panel is of the view that a common legal interest has been demonstrated sufficient to support consolidation consistent with prior relevant UDRP decisions.

The Complainants’ grievance against the Respondent arises from common or shared legal interests in the trademark XSMOKE, they concern the same conduct on the part of the Respondent affecting the Complainants’ rights, and involves common questions of fact and law. Given all of the foregoing, the Panel concludes that consolidation of the Complainants' grievances against the Respondent would be procedurally efficient and fair and equitable to all parties. Consolidation permits multiple complaints lodged against one respondent arising from a common nucleus of facts and involving common legal issues to be heard and resolved in a single administrative proceeding. Doing so promotes the shared interests of the parties in avoiding unnecessary duplication of time, effort and expense, reduces the potential for conflicting or inconsistent results arising from multiple proceedings, and generally furthers the fundamental objectives of the Policy. Consolidation under the circumstances present here, in the Panel's opinion, will not unfairly favor or prejudice any party.

Accordingly, this Panel, having regard to all relevant circumstances, concludes that the consolidation of the Complainant’s multiple grievances against the Respondent is consistent with the Policy and Rules, and comports with prior relevant UDRP decisions in this area. The Panel therefore will proceed to a decision on the merits.

The Respondent – HyperActive ApS and Mr. Nordestgaard

The Respondent HyperActive ApS refutes that Mr. Nordestgaard should be viewed as a Respondent, too.

The Panel notes that the Respondent has at the same time submitted that HyperActive ApS is fully owned and controlled by Mr. Nordestgaard. The Panel finds that there is thus de facto identity between HyperActive ApS and Mr. Nordestgaard.

Pursuant to Danish law, the actions of a single owner can be attributed to the company as if they were one and the same party. In the following, the actions of Mr. Nordestgaard will thus be attributed to the Respondent HyperActive ApS.

7. Discussion and Findings

Paragraph 15(a) of the Rules provides that a panel shall decide a complaint on the basis of statements and documents submitted, and in accordance with the Policy, the Rules, and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) 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

(ii) The respondent has no rights or legitimate interests with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name is the sole remedy provided to the Complainant under the Policy, as set forth in paragraph 4(i).

A. Identical or Confusingly Similar

The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is confusingly similar to the XSMOKE mark, in which the Complainant Mr. Hansen has established rights. The critical inquiry under the first element of the Policy is whether the mark and domain name, when directly compared, are identical or confusingly similar. The disputed domain name <xsmoke.com> incorporates the Complainant Mr. Hansen's XSMOKE mark in its entirety and as such is confusingly similar thereto. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

The Panel notes that in order to satisfy the requirements of paragraph 4(a)(i) in a case where there are multiple complainants, the multiple complainants do not have to be registered as co-owners of the trademark. It suffices that it can be established that the domain name is identical/confusingly similar to a trademark or service mark in which the complainant has rights. The Panel takes the view that the Complainant Mr. Hansen being the registered owner of the trademark XSMOKE has demonstrated such right and that it has been demonstrated, above, that the Complainant MailTrading GmbH, being the user of the trademark XSMOKE, has relevant rights.

B. Rights or Legitimate Interests and C. Registered and Used in Bad Faith

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent's use of, or demonstrable 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; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is 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.

Initially, it can be established that there is no evidence that the Respondent HyperActive ApS uses the disputed domain name (or is preparing to use) the disputed domain name in connection with a bona fide offering of goods or services (insofar as the content is for the Claimant’s benefit), nor that the Respondent is commonly known by the disputed domain name or is making noncommercial or fair use of the Domain Name.

Moreover, it is unlikely that the Respondent could make a bona fide offering of goods or services online using the disputed domain name, because of the likelihood of confusion with the registered XSMOKE mark and the uncontested fact that the Respondent had both actual and constructive notice of that mark before obtaining the disputed domain name.

The Respondent claims that its rights to the disputed domain name <xsmoke.com> is based on an agreement between him (Mr. Nordestgaard) and the Complainant Mr. Hansen, i.e., that the former should own the disputed domain name <xsmoke.com> and the latter the XSMOKE trademark registrations. The Respondent has not presented any written evidence to this effect but refers to an oral agreement between the Parties. In any event, the Complainant’s claims are persuasive, and contradict this account.

The Respondent further claims that its rights to the disputed domain name are prior to any rights of the Complainant MailTrading GmbH since the disputed domain name was registered before the establishment of the Complainant MailTrading GmbH.

The Panel finds that at the point of time when the disputed domain name was purchased via SEDO by the Respondent, the Respondent was fully aware that the whole purpose of acquiring the disputed domain name was to use it in the business which the Respondent was setting up together with the Complainant Mr. Hansen – i.e., the business of the Complainant MailTrading GmbH.

Being one of the major shareholders of the Complainant, MailTrading GmbH, the Respondent was fully aware that control over and use of the disputed domain name was absolutely crucial to the business, MailTrading GmbH, which has a webshop at ”www.xsmoke.com” where it conducts its core business.

Furthermore, the Panel considers Annexes 8-11 and 13 to the Complaint to be conclusive evidence in the sense that they clearly show that the Respondent actually had the intention to transfer the disputed domain name to the Complainant MailTrading GmbH but subsequently refused because the Complainant Mr. Hansen had not transferred the rights to the XSMOKE trademarks and because he had an economical claim on MailTrading GmbH. Judging from the correspondence in Annex 13 to the Complaint, the impression is given that the disputed domain name <xsmoke.com> is more or less being taken hostage by the Respondent.

The Panel finds it immaterial to the question relating to ownership of the disputed domain name <xsmoke.com> whether the Complainant Mr. Hansen is under a similar obligation to transfer the XSMOKE trademarks to the Complainant MailTrading GmbH and whether he has not fulfilled his part of the agreement. This does not release the Respondent from an obligation to transfer the disputed domain name to the Complainant MailTrading GmbH.

The Panel agrees with the Complainant’s view that the disputed domain name is being held by the Respondent to obtain bargaining instruments/advantages and to be able to use the disputed domain name to put pressure on the Complainant to accept claims that the Complainant should pay substantial amounts to the Respondent in connection with Mr. Nordestgaard’s exit as shareholder of the Complainant MailTrading GmbH and the ceased consultancy arrangement between HyperActive ApS and MailTrading GmbH.

Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) and 4(a)(iii) of the Policy.

8. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <xsmoke.com> be transferred to the Complainant, MailTrading GmbH.

Lone Prehn
Sole Panelist
Date: February 16, 2015