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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Opera Software ASA v. Mike Morgan

Case No. D2006-0752

 

1. The Parties

The Complainant is Opera Software ASA, Norway, represented by Wikborg, Rein & Co., Norway.

The Respondent is Mike Morgan, Topsail, Newfoundland, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <operamini.com> is registered with eNom.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2006.

On June 16, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On June 17, 2006, eNom transmitted by email to the Center its verification response.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 26, 2006. The Center verified that the Complaint and the Amendment thereto satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 June 27, 2006.

In accordance with the Rules, paragraph 5(a), the due date for Response was July 17, 2006. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on July 19, 2006.

The Center appointed James Bridgeman as the sole panelist in this matter on July 31, 2006. 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.

On September 12, 2006, having considered the file, the Panel issued an Order for Directions No. 1, inter alia requesting the Complainant to furnish further information as to what rights, if any, in the nature of common law rights or unregistered trademark rights in the trademark OPERA MINI under Norwegian law, or the laws of any other jurisdiction, the Complainant claimed to have established on the date on which the domain name in issue was registered. In the interest of proper procedures, said Order for Directions No. 1 further provided that the Respondent was permitted to make submissions thereon on or before October 30, 2006.

On September 21, 2006 the Complainant filed submissions within the time set in said Order for Directions No. 1. The Respondent has not filed any submissions.

 

4. Factual Background

The Complainant carries on business as a telecommunications service provider and is the owner of the trademark OPERA. The Complainant has secured registrations for the trademark in numerous jurisdictions throughout the world.

The Complainant is also the owner of numerous registered trademarks that incorporate the word “Opera” together with a suffix or prefix viz. OPERA COMICS, MYOPERA, OPERAHALL, OPERADOME and OPERAMINI. The Complainant has filed a list of its trademark registrations on which it relies as an annex to the Complaint.

Each of the registered trademarks upon which the Complainant relies is registered in at least one of classes 9, 35, 38 and 42. Within these classes, the trademarks are registered for goods such as computer software for network searching and communication, wide area network browser software and services such as cellular telephone services, telecommunication services, commercial information agency services, computer assisted transmission of messages and similar computer and communications goods and services.

The Complainant launched a new mobile web browser product named “Opera Mini” in Norway on August 10, 2005. On the same day the domain name in issue was registered. The news of the product launch was publicized world-wide on that date and there was a number of articles published in the trade press and on the Internet.

Subsequently, the Complainant applied to register the trademark OPERAMINI on December 22, 2005.

The Respondent used an identity protection service. This Complaint was originally filed against WHOIS Privacy Protection Service Inc. The amended Complaint was filed against the Respondent.

 

5. Parties’ Contentions

A. Complainant

The Complainant is a software company that distributes its products world-wide. It developed the Opera Web browser which it describes as a high quality product for a wide range of platforms, operating systems and embedded Internet products. The Opera Web browser is a well-known browser, and various versions of the Opera Web browser has been downloaded approximately 100 million times on various platforms. The Complainant has also developed Opera Mini, a version of the Opera Web browser that can be used on most mobile phones including approximately 700 million low-end and mid-tier mobile phones.

The Complainant’s Opera Mini browser product was initially launched on the Norwegian market on August 10, 2005 and was subsequently launched on the wider world market on January 24, 2006. It has been downloaded over 3 million times since its launch.

The Complainant submits that domain name in dispute is confusingly similar to the recognized and well-known distinctive trademark OPERA in which the Complainant has rights throughout the world and that has been extensively used by the Complainant over a long period of time. The domain name in issue incorporates the Complainant’s trademark OPERA in its entirety and in addition it is the exact name of one of the Complainant’s products viz. Opera Mini.

The Complainant submits that the only difference between the domain name in issue and the Complainant’s OPERA trademark is the addition of the suffix “mini”. As the administrative panel in America Online, Inc., v. Yetech Communications, Inc (WIPO Case No. D2001-0555) pointed out: “[p]recedent clearly supports the principle that the adaptation of a recognized trademark in a Domain Name by variation in spelling or by deletion, addition or insertion of letters, words or acronyms does not escape a finding of confusing similarity.”

The administrative panel in Statoil ASA v. Magne Espelund, WIPO Case No. D2003-0097 stated that “[p]revious cases under the UDRP have shown that the addition of a generic term to a famous mark is not sufficient to give the domain names an individual meaning and prevent the overall impression that the domain names have some sort of connection with the Complainant.”

In the light of the fact that the Complainant’s well known product Opera Mini is the same combination of the word “opera” and the generic term “mini”, the suffix is not merely a generic suffix but strengthens the impression that the domain name belongs to or is affiliated with the Complainant. Hence the addition of the suffix “mini” can in no way prevent a strong likelihood of confusion between the domain name at issue and the Complainant’s trademarks.

The website established by the Respondent at the <operamini.com> address has included links for browsers for mobile phones and similar products which directly compete with the Complainant’s Opera and Opera Mini products and this increases the likelihood of confusion.

The Respondent has no connection or affiliation with the Complainant and has not received any licence or consent to use its mark in a domain name or in any other manner. The Complainant is not aware of any evidence of the Respondent’s use of the domain name in connection with a bona fide offering of goods or services, or that the Respondent has acquired any trademark rights to the domain name, or that the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain, misleadingly to divert consumers or to tarnish the trademark at issue.

The Complainant assumes that the Respondent does not use the domain name as part of its legal name, corporate name, or any commonly known identifier. However, as the Respondent uses a Privacy Protection Service and has not responded to the Complainants email, letter and fax, it was initially impossible to know the identity of the Respondent.

In the Complainant’s submission, the Respondent’s use of the domain name is nothing more than a means of using a famous trademark, as well as free-riding on the Complainant’s popular product Opera Mini, to divert traffic to its website. The website at the “www.operamini.com” address has varied in appearance, but has often included links to products and in particular mobile browser products that are similar to the Complainant’s products. The Complainant has filed evidence of such use as an annex to the Complaint and states that it is clear that the Respondent is diverting consumers intending to access the Complainant’s website or intending to download the Complainant’s Opera Mini product, for the Respondent’s own commercial gain.

The Complainant submits that the domain name was registered and is being used in bad faith. The Complainant’s OPERA MINI product was launched on the Norwegian market on August 10, 2005. The product launch received considerable news coverage world-wide. The websites that published articles about the OPERA MINI product launch on August 10, 2005, include USA Today, PC Magazine and Reuters India. The Complainant has submitted copies of this coverage in an annex to the Complaint.

The Respondent registered the domain name in issue on the same day as the Complainant’s product launch. The timing of the registration clearly indicates a bad faith intention on the part of the Respondent.

After the Complainant sent a letter by email by post to Premium Domains on March 29, 2006, demanding transfer of the domain name, Premium Domains informed the Complainant in an email dated April 18, 2006 that the domain name had been sold to the Respondent more than two months earlier, despite the fact that Premium Domains had been registered as owner on the day that the letter was sent. As of March 29, 2006, the domain name was registered to Premium Domains of London, GB.

According to the WHOIS print out relating to the domain name in issue on March 27, 2006, said Premium Domains was registered as the owner and this confirms that Premium Domain’s statement that the domain name had been sold to the Respondent two months earlier was incorrect.

The Complainant submits that it is clear that the Respondent is intentionally attempting to attract Internet users to the Respondent’s website or other on-line locations for commercial gain 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 website at the “www.operamini.com” address has often included links to products that are similar to the Complainant’s products. It is clear that the Respondent is diverting consumers intending to access the Complainant’s website or download to Opera Mini product for the Respondent’s commercial gain.

In response to the Order for Directions No. 1, the Complainant has submitted that under Norwegian law the Complainant had established trademark rights in the unregistered trademark on the date that the product was launched in Norway, being the same date as that on which the Respondent registered the <operamini.com> domain name.

The Complainant launched its Opera Mini product at a news conference in Norway at approximately 8.00 a.m., local time, on August 10, 2005, and the Complainant did not register the Internet domain name until 10.35 pm Eastern Time, USA. Allowing for time zone differences, the Internet domain name was not registered until almost 24 hours after the product launch in Norway.

The Complainant submits that not only did it establish trademark rights in the unregistered trademark in Norway but also in other jurisdictions and has provided expert opinion supporting this claim from the United States of America, the United Kingdom and Japan.

Finally the Complainant has submitted that as a result of the widespread publicity afforded to the launch of the Opera Mini product on August 10, 2005, an association was immediately established between the Complainant’s OPERA trademarks and its newly launched Opera Mini product.

B. Respondent

The Respondent did not file any Response or reply to the Complainant’s additional submissions.

 

6. Discussion and Findings

To satisfy the test in paragraph 4(a) of the UDRP, the Complainants must establish that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and

(ii) the Respondents have no rights or legitimate interests in respect of the said domain name; and

(iii) the domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is the owner of a number of widely used trademarks including OPERA (international classes 35, 38) OPERA COMICS (international classes 38, 41), MYOPERA (international classes, 9, 35, 38, 42), OPERAHALL (international classes 35, 38, 42) and OPERADOME (international classes 35, 38, 42.

The Complainant applied to register the trademark OPERAMINI on December 22, 2005.

A report prepared by a Norwegian Trademark Agent and submitted by the Complainant states:

“…OPERA MINI is what it says it is: a smaller version of the well known OPERA browser. The word MINI is a descriptive/generic term, meaning smaller and it is not able to sufficiently distinguish OPERA MINI from the registered trademark OPERA or other registered and unregistered variants of the OPERA trademark. According to Norwegian law, OPERA MINI is confusingly similar to the registered, recognized, well known, and distinctive trademark OPERA within its field, and as a result, Clause 4 of the Trademark Ac grants Complainant (and no one else) the right to use OPERA MINI for its goods in the course of trade.

“As a result, by the very nature of its established rights, both registered and unregistered, in the trademark OPERA, the Norwegian Trademark Act granted the Complainant the right to the trademark OPERA MINI on the day the product was launched and the day operamini.com was registered, even though the Complainant had not registered OPERA MINI”

The English translation of the Norwegian Trademarks Act that was provided by the Complainant, states at S. 2 “[t]he exclusive right to a trademark may also be acquired without registration when the trademark is established by use. A trademark is considered to be established by use when it is well known within the circle of trade concerned in this country as a distinctive sign for somebody’s goods.”

It follows that the Complainant has rights in the OPERA MINI trademark also.

The question of whether the domain name is identical or confusingly similar to the Complainant’s trademark is for the Panel to decide.

It is clear that there is a similarity between the OPERA trademark and the domain name in dispute. However this Panel is not convinced that the domain name in issue is confusingly similar to the Complainant’s OPERA, OPERA COMICS, MYOPERA, OPERAHALL or OPERADOME trademarks. This is not a case where one is dealing with the addition of a generic term to a famous mark as in Statoil ASA v. Magne Espelund, (WIPO Case No. D2003-0097) cited in the Complaint.

In the view of this Panel, both of the words “opera” and “mini” are descriptive and while the word “opera” has become distinctive of the Respondent’s products, in the absence of any actual evidence of confusion in the market place the descriptive element of the word “mini” is sufficient to distinguish “operamini” from the trademark OPERA.

In the context of an Internet domain name registration, the Complainant has not satisfied this Panel that a user of the Internet would automatically associate the domain name <operamini.com> with the Complainant’s OPERA, OPERA COMICS, MYOPERA or OPERADOME marks.

The domain name is however identical to the Complainant’s OPERA MINI trademark and the Complainant has therefore satisfied the first element in the test set out in paragraph 4 of the Policy.

B. Rights or Legitimate Interests

The Complainant has alleged that the Respondent has no rights or legitimate interest in the domain name.

Despite the fact that he has been given the opportunity, on two occasions, to respond and make submissions, he has failed to file a Response or give any explanation as to why the domain name has been chosen or to refute the Complainant’s allegations in any way.

In the circumstances the onus shifts to the Respondent to state his rights or legitimate interest in the domain name and he has failed so to do.

For reasons given below, on the evidence, it is apparent that the Respondent chose the domain name <operamini.com> to take unfair advantage of the Complainant’s reputation and goodwill in the OPERA MINI product. The Complainant has therefore established on the balance of probabilities that the Respondent has no rights or legitimate interest in the domain name.

The Complainant has therefore satisfied the second element of the test in paragraph 4 of the Policy.

C. Registered and Used in Bad Faith

As to the question of bad faith, the Complainant’s OPERA MINI product was launched on the Norwegian market on 10 August 2005. There was an amount of interest in the product within the industry and the launch received coverage on a number of prominent websites on the same date. Later that day, the domain name was registered.

In the absence of a Response or explanation as to why the domain name <operamini.com> was chosen, and registered, on the very day of the Complainant’s product launch, it is more than probable that the domain name was registered in order to take advantage of the goodwill associated with the Complainant’s OPERA MINI trademark, and the publicity associated with its launch.

While on the day that the domain name was registered, the Complainant’s OPERA MINI product was only available to the Norwegian market, there was world-wide publicity afforded to the product launch. Due to the nature of the product, and the importance of the launch, the Complainant established an almost immediate goodwill and reputation in the OPERA MINI mark when the product was initially launched on the Norwegian market on August 10, 2005.

According to the English language translation of S. 2 of the Norwegian Trademarks Act, as provided to the Panel by the Complainant, Norwegian law provides that in addition to rights acquired by registration, “[t]he exclusive right to a trademark may also be acquired without registration when the trademark is established by use. A trademark is considered to be established by use when it is well known within the circle of trade concerned in this country as a distinctive sign for someone’s goods.”

There was a major product launch of this product in Norway early on the morning of August 10, 2005. On the balance of probabilities it would appear that the registrant became aware of the Complainant’s product launch and decided to take unfair advantage of the product launch by registering the domain name.

By the time the Respondent registered the domain name, the Complainants unregistered trademark rights in OPERA MINI had been (albeit very quickly) established by use as it had become “well known within the circle of trade concerned in [Norway] as a distinctive sign for someone’s goods.”

Since then the domain name has been used as the address of a website that contains links to products that are in direct competition to the Complainant’s OPERA MINI mobile browser product. On the evidence therefore, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website and of certain products on his website.

On the evidence therefore, this Panel is satisfied that the domain name in issue was registered and is being used in bad faith.

In the circumstances, outlined and in the absence of any Response or explanation from the Respondent, this Panel determines on the balance of probabilities that the Complainant has established all elements of the test set out at paragraph 4 of the Policy is entitled to succeed in its application.

 

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 <operamini.com> be transferred to the Complainant.

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James Bridgeman
Sole Panelist

Dated: October 30, 2006