A well known criminal lawyer from Norway, Mr Per Danielsen brought a UDRP before NAF over the domain name advokat-danielsen.com. The website has the following summary in a local language and further information on the website:
As a former client of lawyer Per Danielsen, I would like to share my expensive experience.
If you do not have time to read everything, then the short message is that I would STRONGLY WARN against the use of the fraudsters Per Danielsen, Håkon Danielsen and the law firm Danielsen & Co. AS.
If there is one thing I am not proud of, it is the day we chose to focus on Per Danielsen. But in my defense we were entrepreneurs with little legal experience, and with lawyers, judges and such.
And we thought Danielsen’s marketing on his own website: That he had experience with libel cases. Nothing should turn out to be from the truth. About. 20 pages of process papers were to cost us close to NOK 700,000, – and that in a case that we lost !
The Complaint is a registered company but does not hold any Trademark rights in the firm name. While the Respondent claimed to have right to freedom of speech and expression under the Universal Declaration of Human Rights article 19 under which he shared his bad experience upon the Domain Name. The Respondent further claimed the lack of Trademark rights with the Complainant and added there are numerous Lawyers in Norway with similar name, so the Complainant does not have exclusive rights in the domain name.
The Respondent also argued:
If lawyer Danielsen thinks that I have overthrown my rights of free expression, he is free to take me to the Norwegian court. But he has not done so because we both know that what I share with the public is the actual truth. The website at <advokat-danielsen.com> is not a commercial site. It is an information site where I share my experience with Per and Håkon Danielsen. There is absolutely no chance for any visitor to be misled. I don’t make money on any advertising or anything else.
The Panelist analyzed the unregistered or common law rights in the mark in terms of WIPO overview and that means the Complainant is required to prove secondary meaning in the name. Relevant evidence demonstrating such acquired distinctiveness includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.
Further, rights in the personal name in terms of Para 1.5 of WIPO Overview 3.0, which clearly lays down that such rights can be upheld only where the name in question is used in commerce as a distinctive identifier of the complainant’s goods or services.
The Panelist held that having a similar domain name <advokat-danielsen.no>, no use of name in Trade or Commerce, registration of firm name with the Norwegian official register of companies since February 17, 2000, does not give any rights to the Complainant under first clause of the UDRP Policy. Accordingly, the Panel held:
Complainant has failed to establish that it has rights in a trade or service mark. Under these circumstances the Complaint must fail and it is unnecessary and inappropriate for the Panel to consider the remaining elements.
DECISION
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <advokat-danielsen.com> domain name REMAIN WITH Respondent.
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