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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dansk Supermarked A/S v. Websitemaker.ph, Cj (Cruz) Uy

Case No. D2014-1888

1. The Parties

The Complainant is Dansk Supermarked A/S of Højbjerg, Denmark, represented by Bech-Bruun Law Firm, Denmark.

The Respondent is Websitemaker.ph, Cj (Cruz) Uy of Binangonan, Rizal, Philippines.

2. The Domain Name and Registrar

The disputed domain name <billigere-end-bilka.com> (the “Disputed Domain Name”) is registered with Instra Corporation Pty Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2014. On October 28, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 4, 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 December 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 29, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 30, 2014.

The Center appointed Anders Janson as the sole panelist in this matter on January 9, 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.

4. Factual Background

The Complainant is the largest retail company in Denmark. It operates more than 1,400 stores in Denmark, Sweden, Germany, and Poland through the chains føtex, Bilka, Netto, Salling and the web shop at “www.bilka.dk” in Denmark, Sweden, Germany, and Poland. The first Bilka Store was opened in Denmark in 1970.

The Complainant is the owner of BILKA with registrations in several countries, including Denmark, the European Union and Norway. BILKA was registered as a trademark in Norway on June 22, 1995. BILKA was registered in 1996 and 2002 as a word mark in Denmark and was registered on May 5, 2009 as a word mark with the Community Trademark Registration No. 006852743. Furthermore, since 1996 the Complainant is the owner of and maintains a website under the domain name <bilka.dk>.

The Disputed Domain Name <billigere-end-bilka.com> was created on June 7, 2014.

5. Parties’ Contentions

A. Complainant

The Complainant is the owner of the trademark BILKA with registrations in several countries. Furthermore, the Complainant registered the domain name <bilka.dk> in 1996. The trademark BILKA is well-known. The Disputed Domain Name was registered on June 7, 2014 without authorization of the Complainant. The Disputed Domain Name has been used for a web shop. The Complainant is not in any way affiliated with the Respondent. The Complainant sent a letter on October 30, 2014 to the Respondent and thereafter the content of the website appears to have been removed.

The Disputed Domain Name must be considered to be confusingly similar with the Complainant’s trademark BILKA. BILKA is fully incorporated in the Disputed Domain Name. The Disputed Domain Name <billigare-end-bilka.com> means “cheaper-than-bilka.com”, with the dominant part of the Disputed Domain Name being BILKA and the phrase “billigere-end” being used negatively, pejoratively, and descriptively. The mere addition of any non-distinctive or generic term as a prefix or suffix to a trademark in a domain name is not sufficient to avoid confusingly similarity between the domain name and the trademark. Furthermore, there is a risk of confusion and the public may think that there is a connection between the business conducted for the Disputed Domain Name and the Complainant. The fact that the generic Top-Level Domain (“gTLD”) “.com” is incorporated in the suffix of the Disputed Domain Name is of no legal relevance.

The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and the Respondent is not commonly known by the Disputed Domain Name. The Complainant’s registration of its trademark BILKA predates the Respondent’s registration of the Disputed Domain Name by several years. The website under the Disputed Domain Name is a commercial site which is intentionally used for commercial gain and to attract customers by referring to the Complainant’s trademark. The Complainant has not licensed or otherwise authorized the Respondent to use the BILKA trademark. There is no business relationship between the Complainant and the Respondent and the Disputed Domain Name is not used in connection with a bona fide offering of goods.

The Disputed Domain Name has been registered and is being used in bad faith. The Respondent is using the Disputed Domain Name to attract customers to its website. The use of the phrase “billigere-end” does not make any sense unless it is followed by BILKA. The phrase insinuates that the website under the Disputed Domain Name is selling products cheaper than the Bilka stores. The substantial intention with the registration of the Disputed Domain Name is to profit on an illegal exploitation of the reputation related to the Complainant’s trademark. By using the Complainant’s trademark, the Respondent is likely to divert internet traffic to the website under the Disputed Domain Name for its own commercial gain, thereby harming and tarnishing the Complainant’s reputation and the Complainant’s trademark.

According to the reasons listed above, the Complainant requests the Disputed Domain Name <billigere-end-bilka.com> be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. However, the Respondent submitted in an informal e-mail dated January 9, 2015. The Panel has decided to disregard the Respondent’s late submissions according to paragraph 10 and 12 of the Rules. In any event, the Panel notes that the Respondent’s email does not address the Complainant’s contentions.

6. Discussion and Findings

Given the case file and the Respondent’s failure to file a Response, the Panel accepts as true the contentions of the Complainant. The Respondent’s default does not however automatically lead to a transfer of the Disputed Domain Name. On the contrary, the Complainant still must establish that it is entitled to a transfer of the domain name under the Policy.

According to Paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

(i) The Disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;

(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.

A. Identical or Confusingly Similar

The Panel finds that the Complainant does have trademark rights to BILKA with reference to the trademark registrations.

The Disputed Doman Name is <billigere-end-bilka.com> and therefore contains the entire word “bilka”, which is the Complainant’s registered trademark. The fact that the Disputed Domain Name also contains the terms “billiegere-end” meaning “cheaper-than” in Danish does not diminish the risk of confusion. The Panel therefore finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark.

Accordingly, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

In this case, the Complainant has offered convincing explanations and enough evidence of its exclusive right concerning the BILKA trademark. The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name.

Therefore, the burden of production shifts to the Respondent to bring forward appropriate allegations or evidence of its rights or legitimate interests. The Respondent has not replied to the Complainant’s contentions. The failure to file a Response leaves the Panel to decide the case on the basis of the available record and the evidence provided by the Complainant. Upon consideration of the available record, the Panel is satisfied that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a) (ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that the Complainant’s trademark is well-known, and, further, that it is highly unlikely that the Respondent was unaware of the Complainant’s trademark as the website at the Disputed Domain Name was selling products suggesting that it was “cheaper-than” the Complainant’s products. This Panel finds that the Disputed Domain Name was registered in bath faith. With respect to the use, the Respondent has used the Disputed Domain Name to divert visitors to the website for its own commercial benefit. The use of the website as to disrupt the business of the Complainant and the Respondent registered the Disputed Domain Name in order to gain commercial benefit. This constitutes evidence of registration and use of the Disputed Domain Name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. There is no material in the record which displaces this presumption.

The Panel finds that the Complainant has fulfilled the requirements under paragraph 4(a)(iii) of the Policy.

7. 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 <billigere-end-bilka.com> be transferred to the Complainant.

Anders Janson
Sole Panelist
Date: January 19, 2015

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