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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Lapponia Jewelry Oy vs Rautelin Oy

Case No D2000-1728

 

1. The Parties

Complainant is Lapponia Jewelry Oy, P.O. Box 72, 00511 Helsinki, Finland. It is in this case represented by Tuukka Araksinen, Benjon Trademarks, Fredrikinkatu 55 A 6, 00100 Helsinki, Finland.

Respondent is Rautelin Oy, Varastokatu 12 B, 00580 Helsinki, Finland. It is in this case represented by Antti Meriläinen, Attorney-at-law, Varastokatu 12 B, 00580 Helsinki, Finland.

 

2. The Domain Names and Registrar

The domain names at issue are <lapponia.org> and <lapponia.net>. The domain names are registered with Network Solutions, Inc, 505 Huntmar Park Drive, Herndon, VA 20170, United States.

 

3. Procedural History

The World Intellectual Property Organization (WIPO) Arbitration and Mediation Center (the Center) received a Complaint from Complainant on December 12, 2000, in electronic form and on December 14, in hardcopy form.

Having verified, on December 19, 2000, that the Complaint complied with the formal requirements, the Center issued, on December 20, a Notification of Complaint and Commencement of Proceedings, which was notified to Respondent and to Complainant as well as to the Registrar and to ICANN.

On December 15, 2000, the Center issued a Request for Registrar Verification and received a Verification Response on December 18, 2000.

According to that Response, as regards the domain name <lapponia.org>,

Network Solutions is in receipt of the Complaint sent to it by Complainant

Network Solutions is the Registrar of the domain name registration.

The current Registrant of the domain name registration is: "Rautelin Oy (<lapponia4-dom>), Varastokatu 12 B, Helsinki 00580 FI"

Administrative Contact, Technical Contact and Billing Contact is: "Hostmaster, Rautelin (HT3036) hostmaster@RAUTELIN.NET, Rautelin Oy, Varastokatu 12 B, HELSINKI 00850 FI"

Network Solutions 4.0 Service Agreement is in effect, and

the domain name registration is in "Active" status.

As regards the domain name <lapponia.net> the Verification Response contains the same information with the exception that Registrant is indicated as Rautelin Oy (LAPPONIA 3-DOM).

The Center received a Response from Respondent on January 5, 2001, in electronic form and on January 8 in hardcopy form. The Response was notified to Complainant on January 11, 2001.

The Center invited then Mr Henry Olsson to serve as Sole Panelist in the case and received, on January 16, 2001, Mr Olssonґs Statement of Acceptance and Declaration of Impartiality and Independence. The same day, the Center appointed Mr Olsson as Sole Panelist and issued a Notification of Appointment of Administrative Panel and Projected Decision Date which was duly communicated to the Parties. The Projected Decision Date was January 29, 2001.

The Sole Panelist considers that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the WIPO Supplemental Rules.

 

4. Factual Background

Complainant is Lapponia Jewelry Oy which is a company limited by shares. It is incorporated in Helsinki, Finland, and has its principal place of business there.

Respondent is Rautelin Oy which was founded in 1970 and has had business principally in exporting and wholesale business. It has recently expanded its areas of activities, as explained by Respondent in its Response (see below).

 

5. Parties’ Contentions

A. Complainant

First, Complainant states the registration agreement applicable to the domain names that are the subject of the Complaint incorporates the Policy. Consequently, the dispute is properly within the scope of the Policy and the Administrative Panel has jurisdiction to decide on the dispute.

Complainant contends that it has either registered or applied for registration of the trademark LAPPONIA in 37 countries all over the world in international classes 6, 8 and 14. The oldest registrations still in force date back to 1970. The mark is used in connection with jewellery and other luxury goods. Complainant contends that the mark enjoys wide reputation at least in Finland just because it has been extensively promoted for goods which attract vast interest from the public because they are luxury goods. Complainant has to the Complaint annexed a data sheet containing all the registrations and applications for registrations of the trademark and also copies of the registrations effected in Finland, the United States and in the European Union. Furthermore, Complainant has enclosed copies of brochures to demonstrate the nature of the goods made available under the mark.

As regards identity or confusing similarity between the domain name and the mark, Complainant contends that the domain name is identical with Complainant’s mark with the exception of the suffixes ".net" and ".com". Those are to be considered as having no distinctive character.

As regards Respondent’s rights or legitimate interests in respect of the domain names, Complainant contends that Respondent has no such rights or interests. LAPPONIA is not a generic name or a descriptive word for jewellery or goods in classes 6, 8 and 14. Even if LAPPONIA may be registered for other companies as well this does not give Respondent the right to register and sell the domain names at issue. In relation to Respondent Complainant is entitled to the domain names based on Complainant’s trademark rights to the domain name and in relation to other legitimate registrants on the first-come-first served basis. The fact that others may show a legitimate interest in the domain does not demonstrate that Respondent has such rights or interests, as shown in Case D2000-0847.

As then finally concerns registration and use in bad faith Complainant contends that Respondent is offering the domain names for sale at a price of 12 000 Finnish Marks, corresponding to approximately 1 750 USD, per domain name, thus amounting to bad faith on the side of Respondent. According to Complainant, Respondent is running a domain name shop under the website "www.domainkauppa.com," where a number of domain names are for sale such as <apdowjones.net>, <benecol.org> <nokia2u.net< and <sophialoren.net>. To support its contentions in this respect Complainant has submitted a printout of Respondent’s website stating: "we have a large pool of domain names available for purchases." Complainant has also submitted a printout of the first part of the "Domain Name Store" run by Respondent where a number of domains can be seen with their prices and the word "Osta," i.e. "Buy." As a response to Complainant’s request for transfer to it of the domain names, Respondent offered to sell them for 10 000 Finnish Marks, according to a copy of an e-mail submitted by Complainant. These sums are, according to Complainant, in excess of the out-of-pocket costs related to the domain names. Complainant contends that Respondent is not using the domain names for purposes other than for substantial commercial gains, because the only activity at the <lapponia.org> and <lapponia.net> websites is the announcement that the domain names are for sale. Complainant has submitted copies of the websites in question. Complainant submits that this amounts to bad faith registration and use of the domain name according to Paragraph 4.b(i) and (ii) of the Policy.

In accordance with paragraph 4.b.(i) of the Policy and on the basis of what has been stated, Complainant requests that the Administrative Panel issue a decision that the contested domain name be transferred to Complainant.

Finally, in accordance with Paragraph 3.b(xiii) of the Policy, Complainant agrees to submit, only with respect to any challenge that may be made by Respondent to a decision by the Administrative Panel to transfer or cancel the domain name that is the subject of this Complaint, to the jurisdiction of the courts of Helsinki, where Respondent is located, as shown by the address given for the domain name holder in the concerned Registrar’s Whois database at the time of the submission of the Complaint to the WIPO Center.

B. Respondent

As regards Complainantґs statement about the absence of rights or legitimate interests, Complainant stresses that in fact it has such rights or legitimate interests in the domain names at issue. According to Respondent, its main business areas are non-food products, electronics and components and recently also the distribution in the Nordic countries of advanced floor heating technology which is planned to be run under the service mark "Lapponia."

In the view of Respondent, the word "Lapponia" means Lapland which is the area located in the northern parts of Finland, Sweden, Norway and Russia. Thus "Lapponia" is like a common generic name used worldwide, meaning, in Finnish, "LAPPI" i.e. Lapland. To support this statement Respondent has submitted statements relating to the meaning of the word LAPPONIA, one of which explains that the word in question in Latin is formed from the Swedish word "Lappmarken" and the Finnish word "Lappi."

Respondent furthermore states that there are thousands of companies and organisations which have their functions and businesses in the area or theme of Lapland and thus would be able to use the word LAPPONIA as a domain name. In this respect Respondent has submitted a number of copies of domain pages/documents originating from companies or organisations using the word "Lapponia." Respondent has also submitted a copy of a search page "Lapponia" in order to indicate that that word was found 3810 times at a Google-search on that word

Because the word "Lapponia" is a common word used worldwide, Rautelin Oy has, according to Respondent, the right to register the domain names <Lapponia.net> and <Lapponia.org>.

Furthermore, Respondent states that it has registered the domain names at issue because in the autumn of 2000 it started marketing advanced heating technology relating to the floor heating area, which, as mentioned, will be run using the domain name <Lapponia.net>. "Lapponia" and pictures of forests, warm houses etc. are good marketing tools for this kind of technology, as also shown by a marketing research undertaken by Respondent.

Respondent is not selling jewellery or other products or instruments in the area of Complainant’s business. Complainant has registered, a long time ago, the domain names <lapponia.fi> and <lapponia.com> and not the same word together with "net" and "org" It was therefore thought that Complainant did not need the latter domain names which would therefore be free to register by others.

In view of what has been stated, Complainant has, according to Respondent not proved that it has rights to the worldwide use of the word "Lapponia" and has therefore no exclusive right in the domain names registered by Respondent. It should also be noted that Respondent has registered its domain names before the ICANN Board adopted the Uniform Domain Name Resolution Policy on October 24, 1999.

Finally, as regards this element, Respondent submits that Complainant is not an organisation which would be able to use the domain name at root "ORG" according to the ICANN Rules.

As then concerns registration and use in bad faith, Respondent states that it never had any intention to sell or otherwise transfer the domain name registration to Complainant for valuable consideration in excess of the domain name registrant’s out of pocket expenses directly related to the domain name.

Both domain names were offered for sale at a price of 10 000 Finnish Marks, which corresponds, according to Respondent, to about 1 666 USD. This means that each domain name would cost about 833 USD; as this includes 22 % VAT, the net price would be 682 USD which should be seen as out-of-pocket costs (as it also includes all the services for transferring the domain name, including, for instance, translation and Notary Public costs). This has nothing to do with cybersquatting.

In summary, Respondent states:

- that the domain names were not registered or acquired primarily for the purpose of selling, renting or otherwise transferring the domain name registrations to Complainant as the alleged owner of the trademark or service mark, or to a competitor of Complainant, for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the domain name;

- the domain names were not registered to prevent Complainant from reflecting the mark in a corresponding domain name and Respondent has not engaged in a pattern of such conduct;

- Complainant and Respondent are not competitors and the domain names were not registered by Respondent in order to disrupt Complainant’s business;

- the domain names were not registered by Respondent in an intentional attempt to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

In view of what has thus been stated by Respondent, it claims that it should be able to retain the registration and use of the disputed domain names.

 

6. Discussion and Findings

Rule 15 of the Rules prescribes that the Panel shall decide a Complaint on the basis of the statements made and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

Applied to this case, Paragraph 4.a. of the Policy directs that Complainant must prove each of the following:

- that the domain names registered by Respondent are identical or confusingly similar to a trademark or a service mark in which Complainant has rights

- that Respondent has no rights or legitimate interests in the domain names, and

- that the domain names have been registered and are being used in bad faith.

In the following parts of this decision, the Panel discusses each of those elements.

Identity or confusing similarity

In this respect, Complainant has, according to Paragraph 4.a (i) of the Policy, to prove that the domain names at issue are identical or confusingly similar to a trademark or a service mark in which Complainant has rights.

The domain names at issue are <laponia.net> and <laponia.org>.

Complainant has registered the mark "LAPPONIA" in international classes 6, 8 and 14 both in Finland and in a number of other countries. On the basis of this registration Complainant undoubtedly has rights in that trademark in Finland and in the other countries where it has been registered.

The domain names differ from the trademark in that the suffixes "net" and "com" are added. As has been noted in earlier decisions, those suffixes are insignificant additions which do not alter the likelihood for confusion. The Panel therefore considers that in fact the domain names at issue are confusingly similar to Complainant’s trademark LAPPONIA.

Under trademark law identity or confusing similarity is present only if they relate to goods of the same or similar kind, with the addition that confusing similarity may, at least under the trademark laws of the European Union countries, be invoked for the benefit of marks which have a reputation in the country concerned if the use of another similar mark would take unfair advantage of, or would be detrimental to, the distinctive character or reputation of the symbol having the reputation.

As regards this specific aspect, Complainant has stressed that the mark enjoys wide reputation at least in Finland because it has been extensively promoted for luxury goods in that country. Respondent has stressed that its business does not operate in the same sector as Complainant.

The Panel notes that there is a considerable difference between the character of the rights in a trademark and those in a domain name. Trademarks are registered for use in relation to certain categories of goods or services and a change in the scope of protection presupposes a change in the registration, at least as a matter of principle. Domain names can, on the other hand, be registered without any mentioning of the activities of the person effecting the registration, and Domain names may be changed at any time.

In the view of the Panel, the documents available do not make it possible to determine whether the mark LAPPONIA enjoys a protection based on its specific reputation in Finland.

On the basis of these considerations, the Panel comes to the conclusion that the determination of whether identity or confusing similarity exists has to be drawn solely on the basis of an objective comparison of the domain names at issue and the trademark. This comparison results in the finding that there exists a confusing similarity between the domain names at issue and the trademark of Complainant.

Rights or Legitimate Interests

In this respect Complainant has, according to Paragraph 4.a (ii) of the Policy, to prove that Respondent has no rights or legitimate interests in the domain names.

As regards this element of the case, Respondent has argued that it believed that "Lapponia" is a common generic word used worldwide, that it thought that the fact that Complainant did not register other domain names containing "Lapponia" than "Lapponia.fi" and "Lapponia.com" meant that it was not interested in the domain names registered by Respondent. Furthermore, Respondent has also claimed that it registered the domain names because it intended to start, in autumn, 2000, the selling of advanced floor heating technology for which the domain names at issue would be good marketing tools.

Respondent has, however, not substantiated his claim about the use of the domain names as marketing tools, something that could have been easily done. Furthermore, Respondent does not seem to have registered or applied for the registration of the domain name elements as trademarks, nor does its website indicate any activity relating to its alleged sale of heating equipment. Complainant has contended that Respondent offers for sale on his website a number of domain names and has submitted certain evidence to support this contention.

On the basis of the documents and the evidence submitted the Panel comes to the conclusion that Complainant has sufficiently established that in fact Respondent does not have any right or legitimate interest in the domain names at issue.

Registration and Use in Bad Faith

According to Paragraph 4.a (iii) of the Policy, Complainant has to prove that the domain names have been registered and are being used in bad faith.

In order to prove such bad faith Complainant has, primarily, contended that Respondent offers, on his website www.domainkauppa.com a number of domain names with an indication that it has a "large pool of domain names available for purchases" with indication of prices and of the possibility to buy those names. The evidence submitted to this effect by Complainant supports the contentions of Complainant.

As mentioned above, Respondent has claimed, among other matters, that the domain names have been registered on the basis of certain beliefs about Complainant’s intention and for a certain purpose. As also mentioned above, the Panel has come to the conclusion that it can not accept Respondent’s contentions as not supported by any evidence.

On the basis of the evidence thus available the Panel considers as Respondent has in fact registered and uses the domain names in bad faith as indicated in Paragraph 4.b (i) and (ii) of the Policy.

Conclusions

On the basis of the foregoing the Administrative Panel concludes that the domain names <lapponia.net> and <lapponia.org> are confusingly similar to Complainant’s trademark LAPPONIA, that Respondent has no rights or legitimate interests in the domain names, and that Respondent’s domain names have been registered and are being used in bad faith.

As to Respondent’s remark that Complainant is not an entity that can use a domain name with the element ".org", this question is regulated by the registration requirements, and it is not to this Panel to decide upon this question.

 

7. Decision

On the basis of the conclusions and pursuant to Paragraph 4.i of the Policy and Complainant’s request, the Administrative Panel requires that the domain names <lapponia.net> and <lapponia.org> be transferred to Complainant.

 

 

Henry Olsson
Sole Panelist

Dated: January 22, 2001