Elkjøp Nordic As v Boxer, Boxer

WIPO Case No. D2025-0600

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Elkjøp Nordic AS v. Boxer, Boxer

Case No. D2025-0600

1. The Parties

The Complainant is Elkjøp Nordic AS, Norway, represented by Zacco Sweden AB, Sweden.

The Respondent is Boxer, Boxer, United States of America.

2. The Domain Names and Registrar

The disputed domain names <elgigantencompany-dk.com>, <elgigantencompany-se.com>, and

<elgigantensuvip.top> are registered with Dominet (HK) Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2025. On February 17, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 18, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (Alibaba.com Singapore E-commerce Private Ltd.) and contact information in the Complaint. The Center sent an email communication to the Complainant on February 20, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed the amendments to the Complaint respectively on February 21, 2025 and February 24, 2025.

The Center verified that the Complaint together with the amendments 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 25, 2025. In accordance with the Rules, paragraph 5, the due date for Response was March 17, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 19, 2025.

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The Center appointed Anna Carabelli as the sole panelist in this matter on March 26, 2025. 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

As per undisputed evidence submitted with the Complaint, the Complainant is a Norwegian company group founded in 1962 and is part of Currys Group Ltd. (formerly known as DSG Retail Ltd.), a leading multinational consumer electrical and mobile retailer and services company, employing over 25,000 people in six countries.

With around 10,400 employees and 430 stores, the Complainant is one of the largest electronics retailers in the Nordic countries, with retail businesses established in Norway, Sweden, Denmark and Finland, and franchise operations in Greenland, Iceland and the Faroe Islands.

The Complainant was established in Sweden as Elgiganten AB in 1993 and in Denmark as Elgiganten A/S also in 1993, both of which are wholly owned subsidiaries of the Complainant.

The Complainant’s related entities are the owners of numerous registrations for the mark ELGIGANTEN, including the following:

- Danish Trademark Registration No. VR 2005 01853, registered by Elgiganten A/S on May 24, 2005, in
respect of goods and services in classes 7, 8, 9, 11, 21, 35, 36, and 37;
- European Union Trademark Registration No. 005908678, registered by Elgiganten A/S on May 30, 2008, in
respect of goods and services in classes 7, 8, 9, 11, 21, 35, 36, and 37; and
- European Union Trademark Registration No. 011148913, registered by Currys Group Ltd. on March 6,
2013, in respect of goods and services in classes 7, 8, 9, 11, 14, 16, 20, 21, 28, 35, and 37.

The disputed domain names were registered between January 13 and January 30, 2025 (namely, to enter their credentials. These websites mimicked the Complainant’s official website, by using the Complainant’s color scheme, logotype and a footer that says “© Copyright elgiganten 2024”. At the time of this Decision, the disputed domain names resolve to an inactive webpage displaying a notice that the site can’t be reached.
<elgigantensuvip.top> on January 13, 2025, <elgigantencompany-dk.com> and
<elgigantencompany-se.com> on January 30, 2025). As per the undisputed evidence provided with the

On February 11, 2025, the Complainant issued infringement notices to the Respondent, requesting that the disputed domain names be disconnected from Internet and transferred to the Complainant. No response was received.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names.

Notably, the Complainant contends that:

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- Due to its extensive use, advertising, and revenue associated, the Complainant’s ELGIGANTEN

trademark is distinctive and well known worldwide, as recognized in previous UDRP decisions (such
as Elkjøp Nordic A/S v. Svenska Dator AB, WIPO Case No. D2010-1018; Elkjøp Nordic A/S v.
Svenska Datorsystem AB, WIPO Case No. DNU2010-0002; Elkjøp Nordic A/S v. Name Redacted,
WIPO Case No. D2013-1285; Elkjøp Nordic AS v. Privacy Service provided by Withheld for Privacy
EHF / Jessica Williams, WIPO Case No. D2022-1514; Elkjøp Nordic AS v. Mette Frederiksen, WIPO

Case No. D2023-4327; and Elkjøp Nordic AS v. IWS LTD, WIPO Case No. D2024-2030);

-	The disputed domain names are confusingly similar to the Complainant’s trademark, since they
“suvip” at the end of the disputed domain names does not prevent a finding of confusing similarity; - The Respondent has no rights or legitimate interests in the disputed domain names since (i) the	include the Complainant’s mark ELGIGANTEN. The addition of the terms “company-dk”, “company-se”, or domain names, (ii) the Respondent is not commonly known by the disputed domain names, and (iii) the Respondent’s use of the disputed domain names is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. In this connection the Complainant contends that the Respondent is using the disputed domain names for illegal activity (i.e., impersonation/passing off and phishing scheme), to create the false impression that the disputed domain names and related websites are somehow connected to the Complainant and to deceive Internet users to reveal their username and password.
-	The disputed domain names were registered and are being used in bad faith.

Based on the above the Complainant requests the disputed domain names be transferred to the

Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint based on the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which for the purposes of paragraph 4(a)(iii) of the Policy, shall be evidence of registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if found by the Panel, shall be evidence of the Respondent’s rights to or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy above.

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A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing
(or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison
between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel

Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1. As the Complainant’s wholly owned subsidiary is the owner of the
ELGIGANTEN trademark registrations mentioned above in the Factual Background, the Panel considers that
the Complainant has standing to bring this UDRP proceeding. In this regard, reference is made to
section 1.4.1 of WIPO Overview 3.0, according to which a trademark owner’s affiliate such as a subsidiary of
a parent or of a holding company, or an exclusive trademark licensee, is considered to have rights in a
trademark under the UDRP for purposes of standing to file a complaint.

The Panel finds the entirety of the Complainant’s registered trademark ELGIGANTEN is reproduced and recognizable within the disputed domain names. Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The addition of the generic Top-Level Domain, such as “.com” and “.top”, is viewed as a standard registration requirement and as such is typically disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11.1.

Although the addition of other terms, here “company-dk”, “company-se”, or “suvip”, may bear on assessment
of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of
confusing similarity between the disputed domain names and the mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized
that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task
of “proving a negative”, requiring information that is often primarily within the knowledge or control of the
respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or
legitimate interests, the burden of production on this element shifts to the respondent to come forward with
relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of
proof always remains on the complainant). If the respondent fails to come forward with such relevant
evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0,
section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise.

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Additionally, the composition of the disputed domain names (containing the Complainant’s ELGIGANTEN trademark) and the content of the Respondent’s websites (displaying the Complainant’s logotype and a footer that says “© Copyright elgiganten 2024”) create a risk of Internet user confusion. As per the undisputed evidence submitted with the Complaint, the Respondent’s websites did not show any information about the Respondent or disclaimer accurately disclosing the Respondent’s relationship with the Complainant.

Furthermore, Internet users accessing the websites at the disputed domain names were asked to enter their credentials, which suggests that the disputed domain names may have been used as part of a phishing scheme.

Panels have held that the use of a domain name for illegal activity like passing off/impersonation and
phishing, as it is the case here, can never confer rights or legitimate interests on a respondent.

WIPO Overview 3.0, section 2.13.1

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel accepts that the Complainant’s ELGIGANTEN mark is distinctive and well known, as recognized in various prior UDRP decisions. In view of the well-known character of the ELGIGANTEN trademark, it is difficult to believe that the Respondent did not have in mind the Complainant’s trademark when registering the disputed domain names.

Moreover, it results from the Complainant’s documented allegations that the disputed domain names
resolved to three identical websites displaying the Complainant’s logotype and the “© Copyright elgiganten
2024” footer, where Internet users were prompted to enter their credentials.

In the Panel’s view, it is therefore evident that the Respondent was aware of and sought to imitate the Complainant’s mark when it registered the disputed domain names. Prior panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or well-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4

On the balance of probabilities, and in the absence of any evidence to the contrary, the Panel concludes that the Respondent set out to target the Complainant’s mark and to deceive users by adopting confusingly similar domain names, with an intention to divert Internet users to its websites for either commercial and illicit purposes, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its websites. This is evidence of bad faith under paragraph 4(b)(iv) of the Policy. See also WIPO Overview 3.0, section 3.4.

The fact that the disputed domain names do not currently point to an active website and merely resolve to a webpage stating that the website cannot be reached, does not prevent a finding of bad faith under the passive holding doctrine given the totality of the circumstances in the present case. WIPO Overview 3.0, section 3.3.

Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain names constitutes bad faith under the Policy.

The Panel finds that the Complainant has established the third element of the Policy.

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7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <elgigantencompany-dk.com>, <elgigantencompany-se.com>, and <elgigantensuvip.top> be transferred to the Complainant.

/Anna Carabelli/
Anna Carabelli
Sole Panelist
Date: April 9, 2025