WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Danfoss A/S v. Coldwell Banker Burnet et al.

Case No. DBIZ2001-00020

1.1 The Complainant is Danfoss A/S whose principal place of business is Nordborgvej 81, DK-6430 Nordborg, Denmark

1.2 The Respondents are:

(a) Coldwell Banker Burnet;

(b) Jay Tan;

(c )Newextensions Registration Corp; and

(d) Dollar Domain Name Inc ("Respondents"),

who have their principal place of business at 270-4611 Viking Way, Richmond, BC, V6V 2K9, Canada

The domain names upon which this Complaint is based are:

(a) <adap-kool.biz>;
(b) <danfoss.biz>;
(c) <magflo.biz>;
(d) <maneurop.biz>;
(e) <nessie.biz>;
(f) <oreg.biz>;
(g) <socla.biz>; and
(h) <vlt.biz>

(collectively "Disputed Domain Names").

The registrar of the Disputed Domain Names as at the date of the Complaint is Internet Domain Registrars d.b.a. Registrars.com.

3.1 The Complaint was submitted for decision in accordance with the Start-up Trademark Opposition Policy for .BIZ ("STOP"), adopted by NeuLevel, Inc. and approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on May 11, 2001, in accordance with the Rules for Start-up Trademark Opposition Policy for .BIZ ("the STOP Rules"), adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ ("the WIPO Supplemental STOP Rules").

3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") via email on December 11, 2001 and in hard copy on December 14, 2001. The fees prescribed under the STOP Rules and the WIPO Supplemental STOP Rules and the STOP Schedule of Fees have been paid by the Complainant. The Complainant stated that a copy of the Complaint together with the cover sheet had been sent or transmitted to the Respondents via email on December 11, 2001, in accordance with Paragraph 2(a) of the WIPO Supplemental STOP Rules.

3.3 On December 13, 2001, the Center sent the Complainant via email an Acknowledgement of Receipt of Complaint.

3.4 The Center sent the Notification of STOP Complaint and Commencement of Administrative Proceeding (including the domain name registrant, administrative contact, technical contact, zone contact and billing contact, as required by Paragraph 2(a) of the STOP Rules) on December 27, 2001, to the Respondents by post/courier (with enclosures), by facsimile(without attachments) and by email (without attachments), and to the Complainant’s representative by email. The Center sent a copy of the Complaint (without attachments) on December 27, 2001, to the Internet Corporation for Assigned Names and Numbers (ICANN) and the registrar, Internet Domain Registrars d.b.a. Registrars.com.

3.5 The Respondents have failed to file a Response in the time allowed and have not filed a Response to date as far as the Panel is aware.

3.6 A Notification of Respondent Default was sent by the Center to the Respondents and the Complainant’s representative by email on January 30, 2002. This notified the Respondents that they have failed to comply with the relevant deadline for the submission of their Response in the domain name dispute.

3.7 The Panel submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center by email on February 22, 2002.

3.8 A Notification of Appointment of Administrative Panel and Projected Decision Date was forwarded to the Respondents and to the Complainant’s representative by email on March 4, 2002, in accordance with Paragraph 6(c) of the STOP Rules.

3.9 The Center sent a Transmission of Case File to the Panel by email on March 4, 2002. The documentation was received in hard copy by the Panel on March 7, 2002, in Sydney, Australia.

3.10 In accordance with Paragraph 4(a) of the STOP Rules, the Center has verified that the Complaint satisfies the formal requirements of STOP, the STOP Rules and the WIPO Supplemental STOP Rules. The Panel has reviewed the Complaint and is satisfied with the Center’s assessment that the Complaint satisfies the formal requirements of STOP, the STOP Rules and the WIPO Supplemental STOP Rules.

3.11 All other procedural requirements appear to have been satisfied.

The following is asserted as fact by the Complainant and remains uncontested.

The Complainant is Danfoss A/S, a company organised under the laws of the Kingdom of Denmark having a principal place of business at Nordborgvej 81, DK-6430 Nordborg, Denmark.

The following information is asserted as fact in the Complaint and remains uncontested.

The Complainant states that it is the owner of registrations for the following trademarks:

(a) ADAP-KOOL registered in Denmark in 1989 number VR 01.670 1989 for all goods in international classes 9 and 11. The mark is registered in at least 20 other countries;

(b) DANFOSS registered in Denmark in 1949 number VR 00.520 1940 in classes 9, 11 and 12. The mark is registered in slightly less than 100 countries around the world generally in classes 6, 7, 9, 11 and 12;

(c) MAGFLO registered in the United Kingdom in 1971 number B978387 for liquid flowmeters in class 9, similarly registered in at least 15 other countries;

(d) NESSIE registered in Denmark in 1994 number VR 05.214 1994 in classes 7 and 12, similarly registered in at least 18 other countries; and

(e) VLT registered in Denmark in 1983 number VR 04.119 1983 in class 9, similarly in at least 31 other countries.

The Complainant states that Danfoss Maneurop A/S, a member of the Danfoss group as verified by J.Bo Jorgensen, Attorney at Law (Annexure Fb to the Complaint), is the owner of the registration for the following trademark:

MANEUROP registered in France in 1965 number 704851 for goods in classes 7 and 11, similarly registered in at least 17 other countries.

The Complainant states that Oreg S.A., a member of the Danfoss group as verified by J. Bo Jorgensen, Attorney at Law (Annexure Gb to the Complaint), is the owner of the registration for the following trademark:

OREG registered in France in 1988 number 1535548 in classes 6, 7, 11, 19 and 20 and similarly in at least 16 other countries.

The Complainant states that Socla SAS, a member of the Danfoss group as verified by J. Bo Jorgensen, Attorney at Law (Annexure Hb to the Complaint), is the owner of the registration for the following trademark:

SOCLA registered in France in 1991 number 56357195 in classes 6, 7, 9, 11, 27 and 20, similarly registered in at least 25 other countries.

The following information in relation to the Complainant’s use of each trademark is asserted as fact in the Complaint and remains uncontested.

(a) ADAP-KOOL is used for electrical and electronic apparatus, control units and instruments for monitoring, control and protection of refrigeration plants and equipment and computer programs and computer software for use with the aforesaid goods.

(b) DANFOSS is used for a diverse range of industrial goods including motors; pumps; compressors; valves; actuators; converters; controls for machines, motors and engines; parts, fittings, components for the aforesaid goods; thermostats; controls for heating, refrigerating, cooling, ventilating, air-conditioning; installations for lighting, heating and refrigeration.

(c) MAGFLO is used for magnetic flowmeters, electromagnetic flowmeters and magnetic flowmeters and parts thereof.

(d) MANEUROP is used for compressors; refrigerant compressors; hermetic compressors; hermetic motor compressors for refrigerating installations; scroll compressors and condensing units.

(e) NESSIE is used for motors; pumps; valves; valve blocks for steering units; pressure reducers; pressure regulators; flow amplifiers; torque amplifiers; hydraulic and/or electro hydraulic circuits; steering units; transmissions; couplings; gears; torque converters; filters; nozzles; parts, fittings, components and controls for motors and pumps.

(f) OREG is used for valves and parts and fittings for valves in class 7.

(g) SOCLA is used for valves and parts and fittings for valves as well as filters and backflow preventers.

(h) VLT is used for frequency converters and motors and for frequency converters for machines.

As stated above, no Response to the Complaint has been filed. Accordingly, the Panel is unable to clearly ascertain the activities of each of the Respondents.

The following information in relation to the Respondents is asserted as fact in the Complaint and remains uncontested.

The Complainant has joined the Respondents in the Complaint on the following basis.

(a) According to the Whois database the Registry operator, Jay Tan is the administrative contact for Coldwell Banker Burnet.

(b) The email address <support@dollardomainname.com> connects Coldwell Banker Burnet and Jay Tan to the internet domain name <dollardomainname.com> owned by Dollar Domain Name Inc. This connects to the website www.dollardomainname.com which has a hyperlink to www.newextensions.com. This connects to the domain name <newextensions.com> which is owned by Newextensions Registration Corp.

(c) All four Respondents have identical mail addresses. Complainant is unable to make any real distinction between Respondents, and therefore should be entitled to join them in one single Complaint.

The Panel has reviewed these contentions and is satisfied that each of the Respondents are subject to these proceedings and the Complainant is entitled to join them in one single Complaint.

5.1 The Complainant asserts that each of the elements specified in Paragraph 4(a) of STOP have been satisfied.

5.2 In reference to the element in Paragraph 4 (a)(i) of STOP, the Complainant asserts that each of the Disputed Domain Names are identical to a trademark owned by the Complainant or by a company which is a member of the Danfoss group.

In reference to the element in Paragraph 4 (a)(ii) of STOP, the Complainant asserts that the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names. The Complainant asserts that the Respondents should be considered as having no legitimate interests in respect of the Disputed Domain Names because the Respondents appear to operate as domain name registrars Dollardomainname and Newextensions only. The Complainant asserts that there is no connection between the Disputed Domain Names and the Respondents’ legitimate interest in naming their own business.

5.3 In reference to the requirements of Paragraph 4 (a)(iii) of STOP, the Complainant asserts that the Respondents have registered the Disputed Domain Names in bad faith due to the following:

(a) All Respondents are, via the email address <support@dollardomainname.com> tied to the internet domain name <dollardomainname.com>. This domain is tied to the website www.dollardomainname.com which presents itself as the website of a domain name registrar ("Dollardomainname") - this domain name is owned by Dollardomainname Inc, the fourth Respondent in these proceedings.

(b) The website www.dollardomainname.com includes a hyperlink for "New Extensions" linking to the website www.newextensions.com, which presents itself as the website of a domain name registrar ("Newextensions Registration Corp"), the third Respondent in these proceedings.

(c) The Complainant made a pre-registration of each of the Disputed Domain Names with Newextensions Registration Corp.

(d) It appears that Newextensions Registration Corp has been a front for Dollardomainname (Respondent 4 - Dollardomainname Inc) to learn of third parties’ business interests in certain domain names. Having learned of the Complainants interests in the Disputed Domain Names, Dollardomainname Inc is now acting as a domain name squatter and using the name Coldwell Banker Burnet (the first Respondent in these Proceedings) as an alias to hide behind.

(e) It appears very unlikely that Coldwell Banker Burnet could actually have invented all eight of the Disputed Domain Names independently; on the contrary it appears that the Respondents collectively have taken them all from the pre-registration database of www.newextensions.com (Newextensions Registration Corp, the third Respondent in these proceedings).

(f) The Complainant has challenged Newextensions Registration Corp to transfer the Disputed Domain Names to the Complainant, and Newextensions Registration Corp has responded affirmatively to this challenge, indicating the willingness of Newextensions Registration Corp to comply with the request of the Complainant.

(g) In accordance with (f) immediately above, Newextensions Registration Corp is clearly in bad faith [sic], and all other Respondents should be held to be the same because of their close apparent ties to Newextensions Registration Corp.

This section is structured by reference to the elements required by Paragraph 4(a) of STOP. In order to be successful, the Complainant has the burden of proving, on the balance of probabilities, that all three elements are present. As noted above, the Respondents have failed to file a Response to the Complaint within the time limits allowed and, as far as the Panel is aware, have not filed a Response at all. Accordingly, all assertions in the Complaint are uncontested and, under Paragraph 5(e) of the STOP Rules, the Panel is required to decide the dispute based upon the Complaint alone. Notwithstanding this rule, in order to be successful, the Complainant still bears the burden of proving, on the balance of probabilities, that all three elements of Paragraph 4(a) of STOP are present, and this Panel reserves the right to rely upon Paragraph 10 of the STOP Rules to avail itself of such publicly available material as it deems appropriate to corroborate or substantiate any assertions made in the Complaint and Response (if any).

The Disputed Domain Names are:

(a) <adap-kool.biz>;
(b) <danfoss.biz>;
(c) <magflo.biz>;
(d) <maneurop.biz>;
(e) <nessie.biz>;
(f) <oreg.biz>;
(g) <socla.biz>; and
(h) <vlt.biz>.

The Complainant owns the following trademarks (as registered in various jurisdictions):

-ADAP-KOOL;

-DANFOSS;

-MAGFLO;

-NESSIE; and

-VLT.

The Panel is satisfied that the Disputed Domain Names identified above are identical to trademarks in which the Complainant has rights. Accordingly, the Panel finds that the Complainant has proven Paragraph 4(a)(i) of STOP.

The Complainant has however failed to prove Paragraph 4(a)(i) of STOP for the following Disputed Domain Names:

- <maneurop.biz>;
- <oreg.biz>; and
- <socla.biz>.

The Complainant has stated that the trademarks pertaining to each of these domain names is as follows:

- <maneurop.biz> - MANEUROP trademark owned by Danfoss Maneurop A/S, a member of the Danfoss group;

- <oreg.biz> - OREG trademark owned by Oreg S/A, a member of the Danfoss group; and

- <socla.biz> - SOCLA trademark owned by Danfoss Socal, a member of the Danfoss group.

In annexures Fb, Gb and Hb the Complainant has provided a letter from J Bo Jorgensen, Attorney at Law, which states the following:

Paragraph 4(a)(i) of STOP requires that the domain name be identical to a trademark or service mark in which the Complainant has rights. The Complainant admits that it does not own the trademarks Maneurop, Oreg or Socla. The Complainant has not provided evidence that the owners of the trademarks Maneurop, Oreg or Socla have entered into an agreement with the Complainant, such that the Complainant is the licensee of the three trademarks in question. It is not sufficient to merely confirm that these companies are members of the Danfoss group. Although the Panel might infer that use of the marks by entities in the Danfoss Group implies at least licence rights, the Panel is not prepared to draw the inference uninvited and absent specific submissions and supporting evidence to that effect. Based on the material before the Panel, the Panel cannot find that the Complainant is the owner of the trademarks Maneurop, Oreg or Socla or that it has rights in these marks. The Panel finds that Paragraph 4(a)(i) of STOP has not been satisfied in respect of the marks Maneurop, Oreg or Socla. It would be a simple matter for the legal owner of those marks to file a Complaint in respect of them if it so chose.

The Complainant asserts that the Respondent has no legitimate rights or interests in the Disputed Domain Names.

Paragraph 4(c) of STOP lists a number of circumstances which, if proven to exist by the Respondents, can be taken to demonstrate a Respondent’s rights or legitimate interests in the Disputed Domain Names. The Panel has seen no evidence to support an inference that any of these circumstances exist. The mere act of registering a domain name does not grant the registrant a legitimate interest in the domain name.

The Respondent has provided no evidence that it has entered into licensing arrangements with the Complainant to use the marks:

(a) adap-kool.biz;
(b) danfoss.biz;
(c) magflo.biz;
(d) maneurop.biz;
(e) nessie.biz;
(f) oreg.biz;
(g) socla.biz; and
(h) vlt.biz

or derivatives of these words.

Without evidence to the contrary, the Panel cannot presently conceive of any legally sound basis upon which an assertion that the Respondents have a right or legitimate interest in the Disputed Domain Names might be made.

Having regard to the foregoing, and to annexures Cf, Df, Eg, Af, Gf, Hf and Bf to the Complaint (in which the third Respondent, New Extensions Registration Corp, appears to concede that it has no legitimate rights to the Disputed Domain Names by offering to Transfer the Disputed Domain Names to the Complainant), the Panel finds that the Respondent has not demonstrated that Paragraph 4(c) of STOP applies and that the Complainant has discharged its onus in proving on the balance of probabilities that the Respondent has no rights or legitimate interests in the Disputed Domain Names. Accordingly, the Complainant has made out Paragraph 4(a)(ii) of STOP.

The Panel notes that Paragraph 4(c)(iii) of STOP requires the Complainant to demonstrate that the Disputed Domain Names were either registered or used in bad faith. Due to the Disputed Domain Names not being utilised (other than as a block) by the Respondents, the Panel must determine whether the Complainant has demonstrated that the Disputed Domain Names were registered in bad faith.

In order to show bad faith registration by the Respondents, the Complainant appears to be asserting that the Respondents have registered the Disputed Domain Names for the purposes of acting as domain name squatters. This term refers to a person (or people) who buys a domain name corresponding to a famous brand name or trademark, hoping to resell it for a substantial sum when the company wants to open a Web site.

Although the Respondents have provided no evidence that they have acted in good faith in registering the Disputed Domain Names, they are not required to do so - the onus is on the Complainant to adduce evidence of bad faith. However, once a Complainant has adduced evidence capable of being construed as bad faith on the part of a Respondent, the Respondent’s failure to provide any explanation leaves the Panel able to accept the Complainant’s submissions.

The Panel finds that, prior to any notice of this dispute, registration of the Disputed Domain Names by the Respondents was primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Names to the Complainant or to a competitor of the Complainant for valuable consideration in excess of the documented out-of-pocket costs directly related to the Disputed Domain Names, or alternatively, the Respondents have registered the Disputed Domain Names in order to prevent the Complainant from reflecting the mark in a corresponding domain name. This finding is based upon evidence that:

(a)the Complainant’s registration of the marks:

- ADAP-KOOL;
- DANFOSS;
- MAGFLO;
- NESSIE; and
- VLT,

as trademarks predate the registration of the Disputed Domain Names;

(b) it is totally implausible that the Respondents independently and co-incidentally invented all of the Disputed Domain Names. The Complainant alleges that the Respondents, due to the operation of their domain name registration sites, were likely to be aware at the time of registration of the Disputed Domain Names that the Complainant would have intended to expand the intellectual property rights of its registered trademarks by tapping in to the newly launched .BIZ domain names and register the Disputed Domain Names;

(c) the Disputed Domain Names do not currently resolve to any website or other online location thereby creating support for an inference that the Respondents are not interested in using the Disputed Domain Names except to block others from registering it, or to transfer it to the Complainant or a competitor of the Complainant; and

(d) the Respondent offered to transfer the Disputed Domains to the Complainant, but has failed to do this.

The Panel therefore finds that the Complainant has made out Paragraph 4(a)(iii) of STOP.

The Panel has found that all of the requirements of Paragraph 4(a) of STOP have been proven by the Complainant in respect of the following Disputed Domain Names only:

- <adap-kool.biz>;
- <danfoss.biz>;
- <magflo.biz>;
- <nessie.biz>; and
- <vlt.biz>.

Accordingly, and for the purposes of Paragraph 4(i) of STOP, the Panel requires that the Disputed Domain Names:

-<adap-kool.biz>;

-<danfoss.biz>;

-<magflo.biz>;

-<nessie.biz>; and

-<vlt.biz>.

be transferred to the Complainant.

In relation to the following Disputed Domain Names:

- <maneurop.biz>;
- <oreg.biz>; and
- <socla.biz>,

the Panel finds that the Complainant has failed to establish Paragraph 4(a)(i) of STOP. Accordingly, the Panel dismisses the Complaint in respect of these three Disputed Domain Names.