Decisión del Panel Administrativo nº DTV2008-0015 of WIPO Arbitration and Mediation Center, March 04, 2009 (case Yara International ASA v. undefined, Domain Admin, Mrs. Jello LLC)
| Judge | William P. Knight |
| Resolution Date | March 04, 2009 |
| Issuing Organization | WIPO Arbitration and Mediation Center |
| Decision | Transfer |
| Dominio | Tuvalu (.tv) |
1. The Parties
The Complainant is Yara International ASA, Oslo, Norway, represented by Valea AB, Sweden.
The Respondent is undefined, Domain Admin, Mrs. Jello LLC, New Jersey, United States of America, represented by ESQwire.com Law Firm, United States.
2. The Domain Name and Registrar
The disputed domain name [yara.tv] (“the Domain Name”) is registered with eNom, Inc. (“the Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2008. On December 3, 2008, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the Domain Name. On December 3, 2008, eNom, Inc. transmitted by email to the Center its verification response disclosing registrant information for the Domain Name which differed from the Respondent as named in the Complaint, in that the name of the registrant for the Domain Name identified in the WhoIs database for the “.tv” (Tuvalu) country-code top level domain is “undefined” of first name “Domain” and last name “Admin” and it is only in the administrative and contact details that “Mrs Jello LLC” is identified. The Center sent an email communication to the Complainant on December 10, 2008, providing the registrant information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 11, 2008. The Center verified that the Complaint together with the amendment to 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 December 11, 2008. In accordance with the Rules, paragraph 5(d), the due date for Response was extended by agreement between the parties to January 12, 2009. The Response was filed with the Center January 12, 2009.
The Center appointed William P. Knight, Knud Wallberg and David E. Sorkin as panelists in this matter on February 3, 2009. The Panel finds that it was properly constituted. Each member of the Panel has submitted a 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 and its predecessors have been in business since 1905, when it commenced the production of the world’s first nitrogen fertilizer “Norgessalpeter” (or Norwegian saltpeter – calcium nitrate) at a test facility in Notodden, Norway. In March 2004, the Complainant was formed as a subsidiary subsequently listed on the Oslo Stock Exchange. The Complainant is now an international company with production and distribution operations in many countries around the world.
The name “Yara” is a fabricated name derived from Germanic-Scandinavian roots signifying the earth. The Complainant’s name is now a trademark registered or the subject of applications for registration in more than 50 countries, both as a word on its own and as part of a device including a stylized Viking ship, including the Community Trademark Registration Nos. 3631066 and 3666187, United States Trademark Applications Nos. 76574657 and 76587836, filed in 2004 and published for opposition in 2007 and is included in over 200 domain names including “www.yara.com”, mostly held by the Complainant and some held by its related company Yara Industrial AS.
The Respondent registered the Domain Name on May 2, 2006, from which time it has been used to display a simple “parking” web-page designed to attract click-through revenue to adult content and dating websites. The Respondent is in the business of acquiring domain names and the subsequent exploitation of those domain names by means of click-through revenues and, if possible, sale at a profit. The Respondent does not deny that it has a very large number of domain names. In Gigglesworld Corporation v. Mrs Jello, WIPO Case No. D2007-1189 it was said that the Respondent had acquired approximately 30,000 domain names and in A.V.M Software, Inc., d/b/a Paltalk v. Papete.com and Igal Lichtman a/k/a Mrs. Jello LLC a/k/a Exoticdomains.net a/k/a domainsspa.com, WIPO Case No. D2005-0917 it was said that the Respondent has registered over 6,000 domain names using one or more aliases.
It is common ground that the word “Yara” may have other significations in other languages: the Complainant notes it is the name of a figure in Brazilian indigenous mythology, the name of a genus of beetle and the name of a small town in Cuba; the Respondent notes that it is woman’s first name and the name of an organization (“Yara online magazine”).
When the Complainant’s representative sent an email to the Respondent prior to the filing of the Complaint inquiring as to purchase of the Domain Name, the representative not identifying his client, the Respondent replied offering to sell it for USD25,000. The Complainant offered USD800, which the Respondent refused.
The Respondent does not dispute that the Complainant has sufficient trademark rights to bring its Complaint and that the Domain Name is identical or confusingly similar to the Complainant’s trademark.
5. Parties’ Contentions
A. Complainant
The Complainant asserts that, in the period of over 2 years since the Domain Name was registered, at no time has the Respondent used the Domain Name in connection with a bona fide offering of goods or services, that there is no indication that the Respondent is or has been commonly known by the Domain Name, and that the Respondent has not made and is not making any legitimate noncommercial or fair use of the Domain Name, i.e., as illustrated in the examples of rights or legitimate interests in the Domain Name provided in Paragraph 4(c) of the Policy. Rather, the Complainant argues, the Respondent’s actual use of the Domain Name is to provide pay-per-click links to websites unrelated to the Respondent of a sexual nature, without any more substantial connection demonstrating a legitimate interest, is not to be regarded as a bona fide offering of goods or services.
The Complainant states that, as the relevant trademark owner, it has not licensed the Respondent to use the Domain Name.
Whilst the Complainant acknowledges the other uses and meanings which the word “Yara” may have, it argues that the actual use of the Domain Name by the Respondent has nothing to do with any of those meanings, that is, that there is no descriptive relationship or association between the Domain Name and the “grab-bag” of links to sexual content on third party websites for which the Respondent’s website under the Domain Name is used.
The Complainant argues that the Respondent cannot claim to be ignorant of the Complainant and its rights in its trademark. The Complainant says its trademark is well-known around the world in its field. Furthermore, the Complainant says that even the most cursory search on search engines like Yahoo! and Google, the trademark registers of almost 50 countries and the word YARA in conjunction with other TLDs and ccTLDs would have shown the trademark rights of the Complainant in the word YARA. The Complainant further argues that the business of the Respondent as a dealer in domain names, its past conduct in registering other domain names identical to the trademarks and trading names of others and the connection of the Domain Name to pornographic and other sexual content raises “an overwhelming presumption” of registration and use of the Domain Name in bad faith in this case.
Finally, as further evidence of the Respondent’s registration and use of the Domain Name in bad faith, the Complainant argues that the Respondent is in breach of the Registrar’s Registration Agreement by its identification of the registrant of the Domain Name as “undefined, Domain Admin”.
B. Respondent
The Respondent alleges that the word “Yara” is primarily a common woman’s name and that it was for this reason it was chosen by the Respondent. The Respondent points out that it has registered 71 domain names incorporating common first names for women, including [ashlee.tv], [adina.tv], [jenni.tv], [judith.tv], [monica.tv], [kari.tv], [selina.tv], [tova.tv] and [yvonne.tv], with each of which it uses exactly the same web page as may be found under the Domain Name. This is because, the Respondent alleges, it believes that such names are the best names to associate with adult content.
In support of the claim that Yara is a common name, not just a woman’s name, used by many third parties, the Respondent invites the Panel to carry out a search for “Yara”, excluding “yara.com”, “fertilizer”, on Google, and says that this results in 6.4...
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