Alm. Brand af 1792 v. Com-municate, Inc.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alm. Brand af v. Com-municate Inc.

Case No. D2002-0801

1. The Parties

The Complainant in this proceeding is Alm. Brand af 1972, Copenhagen Ø,

Denmark.

The Complainant is represented by Knud Wallberg of Sandel, Løje &

Wallberg Frederiksgade 7, P.O. Box 9006, DK-1265 Copenhagen K, Denmark.

The Respondent in this proceeding is Com-municate Inc. Dublin D7, Ireland,

John Clements, authorized representative.

2. The Domain Name and Registrar

The disputed domain name is <almbrand.com> (the "Disputed Domain Name").

The Registrar is Intercosmos Media Group d/b/a directNIC.com, 650 Poydras Street,

Suite 2311, New Orleans, Louisiana 70130, United States of America.

3. Procedural History

This administrative proceeding was brought in accordance with the ICANN Uniform

Domain Name Dispute Resolution Policy (the "Policy") and the ICANN Rules of

Uniform Domain Name Dispute Resolution Policy ("Rules") by a Complaint filed

with the WIPO Arbitration and Mediation Center (the "Center") on August 26, 2002,

by electronic mail, and on August 29, 2002, by hardcopy. On August 27, 2002,

the Center acknowledged receipt of the electronic copy of the Complaint and

requested registrar verification as to the identity of the current registrant

of the Disputed Domain Name, and undertook certain related correspondence with

the Complainant concerning the same. The Center ultimately determined that the

Complaint met all the formal requirements of the Policy, and its Rules and the

WIPO Supplemental Rules, and on September 2, 2002, the Center notified

the Complaint and Commencement of Administrative Proceeding. On September 9, 2002,

the "Notification of Complaint and Complaint" was returned from Respondent's

postal address, but on September 18, 2002, Respondent submitted its

Reply by electronic mail, which the Center confirmed receipt on September 19, 2002.

On September 27, 2002, the undersigned was appointed as a sole panelist in

accordance with paragraphs 6 and 7 of the Rules.

In the view of the Panelist, the proper procedures under the Rules and the

Policy were followed, and the following decision is rendered based on the record

submitted.

4. Factual Background

Complainant is the parent company of the "Alm.Brand Group" a financial group

based in Denmark, and active in the fields of reinsusurance and insurance. It

has from 1997 on registered European marks for "Alm.Brand" both as word marks

and figurative marks in class 36 (insurance, financial and monetary affairs).

Complainant has also registered the domain names <almbrand.dk>, <almbrand.net>

and <almbrand.org> as well as many other domain names containing the word

"Almbrand".

Respondent, Com-municate Inc., appears to be a company with offices in Dublin,

Ireland involved in the registration and/or operation of websites. Respondent

registered the Disputed Domain Name <almbrand.com>. The site established

at the Disputed Domain Name contains hard-core pornographic photos and links

to various pornographic sites. In its August 28, 2002, e-mail to Complainant[1],

Respondent stated that it had established other porn sites. Respondent in that

e-mail also assured that it was unaware of Complainant, or of a company with

Complainant's name at the time it registered the Disputed Domain Name. Respondent

went on to state that the "Almbrand" name was created as part of a "party game"

by amalgamating the initial of four individuals (AL, MB, RA and ND) into a porn

theme. The result is the phrase:

All Lust Must Be Rough And Nearly

Dirty

The acronym for which is "ALMBRAND". The above phrase figures prominently on

the Disputed Domain Name site.

Further facts, to the extent pertinent, are discussed below.

5. The Parties’ Contentions

A. Complainant

Complainant contends that the Disputed Domain Name is "identical or quasi-identical"

to its registered "Alm.brand", marks, as both the "com" suffix and the internal

period (".") should be disregarded in context of a second level domain

name. Complainant adds that the reason it did not originally register the Disputed

Domain Name was that it had been prior registered by a Danish cyber-squatter

and that it is likely that the original registrant did not renew the registration

and it was "re-registered" by Respondent.

Complainant avers that the Respondent's phrase "All Lust Must Be Rough And

Nearly Dirty" is an unnatural constellation of words "constructed" with the

intention of providing some facial justification for the choice of the Disputed

Domain Name. As a consequence Respondent is alleged to have no legitimate interest

in the Disputed Domain Name, and Complainant asserts that the use of such name

for a porn site tarnishes Complainant's reputation and marks.

On the basis of the above Complainant maintains that the Disputed Domain Name

was both registered and used in bad faith.

B. Respondent

Respondent essentially alleges that it registered the Disputed Domain Name

innocently; that prior to the Complaint it was unaware of a company with the

name Alm.Brand, as the Complainant company is essentially unknown in Ireland,

and that it has no knowledge of the Disputed Domain Name having previously been

registered by a Danish cyber-squatter. Respondent further states that it has

not registered or used the Disputed Domain Name in bad faith and, in particular,

has not engaged in any of the illustrative bad faith activities listed at paragraph

4 (b) of the Policy.

Respondent acknowledges that it does not hold a trademark in connection with

the Disputed Domain Name, but maintains that the "almbrand" name used by it

is an acronym, and that while the phrase from which the acronym is derived may

not make immediate sense "it has meaning to the Respondent".

6. Discussion and Findings

The Policy, in its paragraph 4 (a), provides that the Complainant must prove

each of the following:

i. The Respondent’s Domain Name is identical or confusingly similar to a trade

or service mark in which Complainant has rights, and

ii. The Respondent has no rights or legitimate interests in respect of the

Domain Name; and

iii. The Domain Name has been registered and used in bad faith

i. Identical or Confusingly Similar

The Disputed Domain Name is substantially identical to the Complainant's marks

and company name, but for the period between "Alm" and "Brand". Respondent proffers

a confused argument to the effect that "Alm" is itself a contraction, and that

Complainant could more logically make use of a dash ("Alm-brand") in its domain

name as the period cannot be inserted at that place in the domain name. These

arguments are irrelevant; the Disputed Domain Name is, at a minimum, confusingly

similar to the marks in which Complainant has rights.

ii. Respondent's Rights or Legitimate Interests in the Domain Name

Complainant maintains that the phrase from which Respondent has purportedly

developed the acronym in the Disputed Domain Name is an unnatural constellation

of words, created to give some facial explanation for the use of the "Almbrand"

name. Complainant further cites WIPO Case

D2000-0471, Reuters v. Teletrust, as authority for the Panel to disregard

such artificially constructed acronyms.

Respondent acknowledges that it has no trademark rights to the "Almbrand" name,

stating that it did not consider it necessary to register for such. Respondent

does not cite any clear basis on which it might have rights in the Disputed

Domain Name, and the name can hardly be said to have a necessary or logical

connection with Respondent's pornography business. A purported party game acronym

does not give Respondent any rights in a trademarked name.

The Panel thus determines that Respondent does not have any rights or legitimate

interest in the Disputed Domain Name.

iii. Registration and Use in Bad Faith

Complainant has the burden of demonstrating Respondent's bad faith in registering

and using the Disputed Domain Name, and it is on this burden that this decision

turns. A finding of bad faith requires some determination as to Respondent's

knowledge and intent. Many ICANN cases involve circumstances, or contain circumstantial

evidence, which permits bad faith readily to be determined, not a few cases

contain direct evidence of bad faith use or registration of a domain name. But

this is not the case here.

The Complainant's assertions of bad faith here are partially circumstantial,

but mainly based on conclusory statements and deductions. Complainant asserts

that the Disputed Domain Name was initially registered by a Danish cyber-squatter

and that "[w]hat most likely happened" is that the registration lapsed, and

was picked up by Respondent. But Complainant cannot submit any evidence for

these assertions. Complainant argues that Respondent, had it been in good faith,

could have made a trademark search of the Disputed Domain Name. Complainant

also points to Respondent's apparent false phone and fax numbers in its WHOIS

details as indicia of a bad faith desire by Respondent to conceal its identity.

Complainant annexes many press articles and other materials mentioning Complainant

as evidence that Respondent must have known of Complainant when it registered

the Disputed Domain Name (this material is not entirely convincing as it is

largely from the specialized insurance press which would presumably not be read

by porn site operators). Complainant's essential argument is that the overall

circumstances, notably the purportedly coincidental choice of the name "Almbrand"

for a porn site, make Respondent's bad faith an obvious deduction.

But Respondent counters with assertions and denials on key points. Respondent

asserts that it knew nothing of a prior registration by a Danish cyber-squatter.

Rather Respondent cleaves to its explanation that the Disputed Domain Name was

arrived at by serendipity, through a "party game" to develop a porn theme slogan.

Somewhat more plausibly, Respondent maintains that it had never heard of Complainant

and its trademark prior to the filing of the Complaint, and that Complainant

and its marks are largely unknown in Ireland. Respondent denies any bad faith

behavior, "as the website was set-up before awareness that the Complainant existed".

Thus, Respondent carefully denies potentially key elements of a bad faith finding,

notably that it had knowledge of Complainant's or its name and marks when it

set up the site making use of the Disputed Domain Name. As strong evidence of

Respondent's bad faith is not available, the Complaint seeks in part to "piggyback"

on the Respondent's use of a domain name "quasi-identical" to Complainant's

marks and Respondent's absence of any legitimate rights, in order to state that

it is therefore "evident" that Respondent is in bad faith. But this effort also

shows some misunderstanding as to the level of proof required; "[b]ad faith

is not proven by a showing that Respondent lacks any rights or legitimate

interests in the Domain Name. That is a separate and distinct factor, with its

own proof requirements". WIPO Case No. D2000-0270,

Document Technologies, Inc. v. International Electronic Communications, Inc.

Findings under the first two elements of Paragraph 4 (a) of the Policy may well

be pertinent to a finding of bad faith, but they are not sufficient. See, WIPO

Case No. D2000-0869, Estée Lauder Inc. v. este lauder.com.

The ICANN process is designed to be a fast track, "on the papers", inexpensive

process. This process finds its limitations where, as here, a party's intent

and knowledge as at specific times are in question. See WIPO

Case No. D2002-0511, Quoteseek Corporation v. Internet Marketing Group.

In a full scale legal proceeding the parties and the Panelist would engage in

fact finding to test the conclusory allegations and denials of the Complaint

and Reply; that is not possible here[2].

Respondent expressly denies key factors or findings necessary to a determination

of its bad faith. Some of Respondent's denials are more plausible than others,

but the Panelist does not have a basis to reject them. It may even be that Respondent

has carefully crafted its Reply to test the Complainant's burden, while avoiding

any detail which might be indicative of bad faith, but this Panelist cannot

go behind the pleadings to determine that. The Panelist in the Quoteseek

case, above, put it pithily: "Complainant has the burden of proof; in a pure

swearing match the tie goes to the Respondent." Id.; accord, WIPO

Case No. D2000-1772, Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie.

It follows that in this ICANN proceeding, also, Complainant has failed to meet

its burden of demonstrating that Respondent registered and used the Disputed

Domain Name in bad faith.

7. Decision

The Disputed Domain Name, <almbrand.com> is confusingly similar to trademark(s)

in which Complainant has rights, and Respondent lacks rights or legitimate interest

in the said Name, but the Complainant has been unable to prove that Respondent

registered and is using the same in bad faith. Accordingly, the undersigned

panelist concludes that the Disputed Domain Name, <almbrand.com>, should

not be transferred to the Complainant.

Nicolas C. Ulmer

Sole Panelist

Dated: October 11, 2002

1. That e-mail was in reaction to the Complaint,

and it together with Complainant's reply thereto was forwarded to the Center,

and referred to in Respondent's Answer, it is accepted as evidence in this file.

2. The Panelist here further considered the

exceptional procedure of ordering a further round of briefing, which a Panelist

has discretion to do under the Rules, but determined that it would be highly

unlikely to resolve this fundamental proof issue.