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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sprunk-Jansen A/S v. Chesterton Holdings

Case No. D2006-1080

1. The Parties

The Complainant is Sprunk-Jansen A/S of Hellerup, Denmark, represented by Accura Advokataktieselskab, Denmark.

The Respondent is Chesterton Holdings of Los Angeles, California, United States of America, represented by Lance A. Martinez, Esq., United States of America.

2. The Domain Name and Registrar

The disputed domain name <spunk-jansen.com> is registered with NAME KING INC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2006. On August 27, 2006, the Center transmitted by email to ! AlohaNIC LLC a request for registrar verification in connection with the domain name at issue. As the domain name was not registered with ! AlohaNIC LLC the Center transmitted by email another request for registrar verification to NAME KING INC. on September 4, 2006. On September 5, 2006, NAME KING INC. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative contact. The Center verified that the Complaint 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 September 12, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 2, 2006. The Response was filed with the Center on October 2, 2006.

The Center appointed Torsten Bettinger as the sole panelist in this matter on October 18, 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.

4. Factual Background

The Complainant is a registered Danish public limited company founded in 2004 by Mr. Erik Sprunk-Jansen. Complainant is doing business in the field of selling natural health and beauty products.

Complainant is the registered owner of the Danish trademark no. VR 2004 03755 SPRUNK-JANSEN WELLBEING and the Community trademark no. 4325197 SPRUNK-JANSEN WELLBEING, both registered in intl. classes 3, 5, 29 and 30, and applied for the registration of the Community trademark no. 5149448 SPRUNK-JANSEN.

Complainant is offering health and beauty products under the domain name <sprunk-jansen.com>, which is registered in the name of Mr. Rolf Sprunk-Jansen, the Founder and Managing director of the Complainant.

The disputed domain name was registered by the Respondent on February 14, 2006.

5. Parties’ Contentions

A. Complainant

Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.

In reference to the element in paragraph 4(a)(i) of the Policy, Complainant argues that the disputed domain name is confusingly similar to Complainant’s distinctive business identifier “SPRUNK-JANSEN”, which enjoys protection as a registered and unregistered trademark, a registered company name, a domain name and a personal surname of the Complainant’s founder.

In reference to the element in paragraph 4(a)(ii) of the Policy, Complainant contends that none of the situations described in paragraph 4(c) of the Policy can be established in this case. In support of this assertion Complainant states that:

- Respondent has never used the SPRUNK-JANSEN mark in its business and is not known by the name SPRUNK-JANSEN;

- Complainant has not authorized Respondent to use Complainant’s business identifiers SPRUNK-JANSEN or its trademark SPRUNK-JANSEN WELLBEING;

- Respondent uses the disputed domain name for a landing page that offers links to websites which compete with Complainant’s offerings of health and beauty products.

In reference to the element in paragraph 4(a)(iii) of the Policy, Complainant asserts that the domain name was registered with the intent to attract, for commercial gain, Internet users to the website of the Respondent by creating a likelihood of confusion with Complainant’s trademark. Complainant argues that

- Respondent has registered a misspelling of the distinctive part of Complainant’s trademark SPRUNK-JANSEN WELLBEING and business designation SPRUNK JANSEN as a domain name and is using it in connection with links to websites offering products which compete with those of Complainant;

- the disputed domain name was registered two months after Complainant has received an award for his business which was reported in the media and that therefore Respondent must have been aware of Complainant’s rights in the domain name.

Complainant makes reference The Nasdaq Stock Market, Inc. v NSDAQ.COM, NASDQ.COM and NASAQ.COM, WIPO Case No. D2001-1492 and Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc., WIPO case No. D2000-0587.

B. Respondent

The Respondent states that it manages a large network of advertising-supported search portals based on popular search terms and owns thousands of domain names. Respondent alleges that the registration process of the domain names used for these portals is completely automated and that the search results provided under the disputed domain names were obtained from Google’s AdWords program.

Respondent contends that Respondent’s representative contacted Complainant’s representative after receipt of the Complaint and offered to transfer the domain name to the Complainant without requesting any payment.

Respondent asserts that it has never heard of Complainant or its trademark when it registered the disputed domain name because Complainant has no trademark rights in the United States, and that it was not obliged to conduct trademark searches in all jurisdictions worldwide before registering a domain name.

Furthermore, Respondent states that the domain name was acquired through an automated system, based on “aggregate search data collected from various sources” and that Respondent does not target existing websites or trademarks when registering domain names.

6. Discussion and Findings

A. Identical or Confusingly Similar

The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trademark infringement (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd, WIPO Case No. D2001-0110; Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843; AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327; BWT Brands, Inc and British American Tobacco (Brands), Inc v. NABR,WIPO Case No.D2001-1480; Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505).

To establish confusing similarity it is therefore not required to establish that the registration and use of the domain name causes confusion as to the source, but whether the name or mark and the alphanumeric string constituting the domain name when directly compared are confusingly similar.

The disputed domain name wholly incorporates the distinctive part SPRUNK-JANSEN of Complainant’s trademark SPRUNK-JANSEN WELLBEING.

The fact that the word WELLBEING is omitted in the domain name does not eliminate confusing similarity between Complainant’s trademark and the domain name as WELLBEING is a descriptive component which indicates the health effect of Complainant’s health related products.

It is also well accepted under the Policy that the mere omission of one letter of a trademark has no effect on the determination of confusing similarity between a trademark and a domain name (See Hachette Filipacchi Presse v. Vanilla Limited/Vanilla Inc/Domain Finance Ltd., WIPO Case No. D2000-0430; Diageo p.l.c. v. John Zuccarini, WIPO Case No. D2000-0541; Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698; Reuters Limited v Global Net 2000, Inc, WIPO Case No. D2000-0441; Playboy Enterprises v. Movie Name Company, WIPO Case No. D2001-1201; ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al., WIPO Case No. D2000-0848; Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc., WIPO Case No. D2000-0587).

Furthermore, it is well established that the specific top level of a domain name such as “.com”, “.org”, “.net” or “.name” may be disregarded when determining whether it is identical or confusingly similar to the trademark in which Complainant has rights (See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429).

The Panel thus finds that the domain name <spunk-jansen.com> is confusingly similar to the trademark in which Complainant has exclusive rights and that Complainant has established the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no right or legitimate interest in the disputed domain name. However, it is consensus view among Panelists that if Complainant makes a prima facie case that the Respondent has no rights or legitimate interests, and Respondent fails to show one of the three circumstances under Paragraph 4(c) of the Policy, then the Respondent may lack a legitimate interest in the domain name.

Complainant asserted that the Respondent has neither a license nor any other permission to use the Complainant‘s trademark SPRUNK-JANSEN WELLBEING or business designation SPRUNK-JANSEN. The Respondent has not denied these assertions. The Panel thus finds that the Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name which wholly incorporates the Complainant‘s mark.

Respondent has not provided evidence of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name.

Respondent is not a an authorized reseller of Complainant‘s products, but is using the disputed domain name to divert Internet users to a website with links to websites which compete with Complainant’s health and beauty products.

This type of use is neither a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy nor a legitimate non-commercial or fair use pursuant to paragraph 4(c)(iii) (See Gerber Products Company v. LaPorte Holdings, WIPO Case No. D2005-1277).

Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) is also satisfied.

C. Registered and Used in Bad Faith

The Panel is also convinced, for the following reasons, that the Respondent has registered and has been using the domain name in bad faith.

Respondent registered a domain name which apart from a deliberate misspelling and the omission of a descriptive term wholly incorporates Complainant’s trademark SPRUNK-JANSEN WELLBEING.

The fact that Respondent registered the disputed domain name through an automated registration program with no attention whatsoever to whether it may be identical to trademarks does not prevent a finding of bad faith.

The Panel agrees with the Respondent that Complainant’s mark may not be particularly well-known in the United States where Respondent is located. In cases where the circumstances do not suggest prior knowledge of the mark, Panels generally have declined to apply the principle of constructive notice of a mark to support a finding of bad faith (“constructive notice” which presumes that the existence of a trademark registration provides notice within the jurisdiction of the mark owner’s intent to dispute the infringing use is a recognized principle in some US courts, but in general it does not seem to be appropriate to apply this principle to each UDRP dispute where domain holders do not have the resources to trademark search the entire world before registering a domain name, see Toronto Star Newspaper Ltd. v. Elad Cohen, WIPO Case No. DTV2000-0006 - <tstv.tv>; Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 - <jackspade.com>; Alberto-Culver Company v. Pritpal Singh Channa, WIPO Case No. D2002-0757 - <staticguard.com>, <staticguards.com>; Sterling Inc. v. Sterling Jewelers, Inc and Domain Traffic, WIPO Case No. D2002-0772 - <jaredjewelry.com>; The Sportsman’s Guide, Inc. v. Modern Limited, Cayman Islands, WIPO Case No. D2003-0305 - <sportsmenguide.com>).

However, even if Respondent did not actually know of Complainant’s mark, it cannot avoid a finding of bad faith by registering large numbers of domain names through the use of automated programs.

On the contrary, showing willful blindness by using automated registration programs with no mechanism in place to weed out trademarks may in certain circumstances constitute an indication of bad faith (See Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. 2005-1304).

Furthermore, the fact that Respondent uses the disputed domain name for a landing page with links to a website offering products that compete with those of Complainant here inevitably leads to the conclusion that Respondent’s registration of the domain name was an opportunistic act by an alert entrepreneur with the view to earning click-through revenue by diverting traffic intended for Complainant’s site and thus capitalizing on Complainant’s trademark.

Such practice qualifies as bad faith under paragraph 4(b)(iv) in that the Respondent’s use of the domain name attempts to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website.

Complainant has therefore also satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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 <spunk-jansen.com> be transferred to the Complainant.

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Torsten Bettinger
Sole Panelist

Date: November 17, 2006