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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Kapiteeli Oy v. John Denver

Case No. D2003-0333

 

1. The Parties

The Complainant is Kapiteeli Oy, a company incorporated under the laws of Finland, having its principal place of business in Helsinki, Finland, represented by Heinonen & Co., Attorneys-at-Law Ltd. of Finland.

The Respondent is John Denver, an individual resident in Ramsey, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Name and Registrar

The domain name at issue is <kapiteeli.net>, which is registered with Register.com, Inc.

 

3. Procedural History

A Complaint was submitted by e-mail to the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on April 30, 2003, and in hardcopy on May 2, 2003. An Acknowledgement of Receipt was sent by the Center to the Complainant, dated April 30, 2003.

On April 30, 2003, the Center transmitted by e-mail to Register.com, Inc. a request for registrar verification in connection with the domain name at issue. On April 30, 2003, Register.com, Inc. transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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").

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, in effect as of December 1, 1999 (the "Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 2, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 23, 2003.

The Center appointed Jonas Gulliksson as the sole panelist in this matter on June 4, 2003. The Panel finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules. 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. The Administrative Panel shall issue its decision based on the Complaint, the Policy, the Rules, and the Supplemental Rules.

 

4. Factual Background

The Complainant and its Registered Trademarks

The Complainant is the owner of the trademark KAPITEELI, which is protected by the Finnish trademark registration No. 216882 containing the trademark "KAPITEELI" (see Annex 5 to the Complaint). The trademark covers the following services:

Class 36: Real estate investment services.

Class 37: Building construction, repair, installation services.

The trademark application was filed on April 7, 1999, and the trademark was registered on February 29, 2000.

The domain name <kapiteeli.net> was registered by the Respondent on August 23, 1999.

 

5. Parties’ Contentions

A. Complainant

(1) The Domain Name is Identical or Confusingly Similar to a Trademark in which Complainant has Rights

The Complainant is the owner of the trademark KAPITEELI, which is protected by the Finnish trademark registration No. 216882 containing the trademark "KAPITEELI" (see Annex 5 to the Complaint). The trademark application was filed on April 7, 1999, and the trademark was registered on February 29, 2000. The trademark has been used since the beginning of the year 1999. Kapiteeli is also the dominant part of the Complainant’s trade name – Oy meaning company limited by shares in Finnish (see Annex 14 to the Complaint). The company name Kapiteeli Oy was registered on February 16, 1999 (see Annex 16 to the Complaint). The Complainant has an intranet service called "Kapiteeli Net" designed for its important regional office premises. Thus, the trademark KAPITEELI is also used as a special symbol for the Complainant’s electronic intranet services on the Internet.

The domain name <kapiteeli.net> is identical with Kapiteeli Oy’s trademark KAPITEELI and trade name Kapiteeli Oy. The domain name <kapiteeli.net> is also identical with Kapiteeli Oy’s well-known intranet "Kapiteeli Net".

(2) Respondent has No Rights or Legitimate Interests in the <kapiteeli.net> Domain Name

John Denver cannot have any rights or legitimate interests in respect of the domain name <kapiteeli.net>, since KAPITEELI is Kapiteeli Oy’s trademark and trade name.

According to the Merriam-Webster’s On-Line English Language Center the word KAPITEELI does not have any meaning in English (see Annex 22 to the Complaint).

John Denver does not have any Finnish trade name, trademark association name, foundation name or similar right to the trademark KAPITEELI, neither has any other party registered the mark KAPITEELI. John Denver has no license to use the mark KAPITEELI and no legitimate interest in it.

There is no evidence of the Respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services. It is not in the Complainant’s knowledge that the Respondent would have been in any way or anywhere ever commonly known by the domain name. The Respondent is not making a legitimate non-commercial or fair use of the domain name.

(3) Respondent Registered and is Using the <kapiteeli.net> Domain in Bad Faith

The domain name <kapiteeli.net> has been registered in order to prevent Kapiteeli Oy from reflecting its trademark and trade name KAPITEELI in a corresponding domain name.

The domain name has been auto-forwarded to the Complainant’s "KAPITEELI NET" intranet service web site at its present address <www.kapiteeli.mogul.fi>. It is impossible to take a printout of the web site<www.kapiteeli.net> as it is automatically auto-forwarded to the web address <www.kapiteeli.mogul.fi>. Enclosed is a printout of the source code, which indicates the auto-forwarding (see Annex 23 to the Complaint).

The auto-forwarding indicates without any doubt that the Respondent is fully aware of the intellectual property rights of the Complainant and is aiming to create likelihood of confusion amongst the internet users. The auto-forwarding indicates that the Respondent has registered the domain name <kapiteeli.net> in order to prevent Kapiteeli Oy from registering the domain name in question.

The auto-forwarding indicates that the Respondent’s aim is to attract internet users falsely to the web site <www.kapiteeli.net> misleading internet users to think that the domain name is owned and the web site is provided by Kapiteeli Oy.

If the domain name should be kept in the Respondent’s name, the intellectual property rights could be infringed and the goodwill of Kapiteeli Oy could be abused in a more serious way in the future. As the internet users entering the web site <www.kapiteeli.net> may not notice that the web site is not maintained by Kapiteeli Oy – as they self-evidently think when they are auto-forwarded to the "Kapiteeli Net" intranet service – the users are mislead to believe that the content of the web site is provided by Kapiteeli Oy, also if the Respondent decides to change the content of the web site in question.

The auto-forwarding indicates that the Respondent is fully aware of the existence of the company Kapiteeli Oy and its intranet service "Kapiteeli Net". The circumstances indicate that the domain name was registered primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Kapiteeli Oy. The auto-forwarding to Kapiteeli Oy’s intranet service is likely to increase Kapiteeli Oy’s interest in obtaining the domain name to itself, which would give the Respondent good basis for claiming a considerable amount of money in exchange for the voluntary transfer.

Conclusion:

The only possible conclusion is that John Denver registered and is using the trademark KAPITEELI in bad faith. The domain name <kapiteeli.net> is identical with Kapiteeli Oy’s trademark KAPITEELI and trade name Kapiteeli Oy. The trademark KAPITEELI has been taken into use by Kapiteeli Oy before the Respondent registered the domain name <kapiteeli.net>. The domain name <kapiteeli.net> is identical with Kapiteeli Oy’s well-known intranet service "Kapiteeli Net". The domain name is auto-forwarded to Kapiteeli Oy’s intranet service "Kapiteeli Net" indicating clearly that the Respondent is fully aware of the Complainant’s intellectual property rights. Kapiteeli Oy is the only entity using KAPITEELI as a trademark or trade name in Finland or other countries and therefore John Denver cannot have any legitimate rights to the mark or the domain name.

B. Respondent

The Respondent has not replied to the Complainant’s contentions.

 

6. Discussion and Findings

According to Paragraph 15(a) of the Rules the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

2) that the Respondent has no legitimate interests in respect of the domain name; and

3) that the domain name has been registered and is being used in bad faith.

The Complainant has shown that it is the proprietor of the trademark KAPITEELI, which is protected by the Finnish trademark registration No. 216882.

In view of the above it is the Panelistґs opinion the domain name <kapiteeli.net> is confusingly similar to the trademark KAPITEELI of the Complainant, except for the addition of ".net". Accordingly, the Panelist finds that the domain name at issue is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

Given the Respondent’s failure to submit a response, the Respondent has not proven that he has any prior rights or legitimate interests in the domain name. Nor has the Complainant authorised the Respondent’s activities or has any control over these activities.

The prerequisites in Paragraphs 4(a)(i) and (ii) of the Policy are therefore fulfilled.

Paragraph 4(a)(iii) of the Policy further provides registration and use of the domain names in bad faith.

Given the Respondent’s failure to file a response, the Panel accepts as true all the allegations of the Complaint, vide e.g. Talk City, Inc. v. Robertson, WIPO Case No. D2000-0009 (February 24, 2000), § d. The Respondent’s default does not, however, translate into an automatic ruling for the Complainant. To the contrary, the Complainant still must establish a prima facie showing that, under the Policy, it is entitled to transfer of the domain name.

The circumstances mentioned in Paragraph 4(b)(i)-(iv) of the Policy, if found by the Panel to be present, are examples of facts, which constitute evidence of the registration and use of a domain name in bad faith.

The contested domain name has been auto-forwarded to the Complainant’s "Kapiteeli Net" intranet service web site at its present address "www.kapiteeli.mogul.fi". According to the Complainant the auto-forwarding indicates that the Respondent’s aim is to attract internet users falsely to the web site "www.kapiteeli.net" misleading internet users to think that the domain name is owned and the web site is provided by the Complainant.

This conduct would correspond to the circumstances set out in Paragraph 4(b)(iv) of the Policy. In order for this paragraph to be applicable the Respondent must have intentionally attempted to attract, for commercial gain, internet users to its web site, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site. In accordance with prior WIPO Cases (see WIPO Case No. D2002-0109, Altavista Company v. Brunosousa, aka Bruno Sousa and WIPO Case No. D2003-0293, Ameriquest Mortgage Co. v. Jason Banks) the Panelist finds that it is difficult to see what the purpose of the Respondent’s registration and use of the domain name would be in this case other than being for commercial gain.

The Panelist also finds that if the domain name should be kept in the Respondent’s name, there is a risk that the intellectual property rights of the Complainant could be infringed more seriously in the future, if the Respondent would cause the domain name to resolve to the Respondent’s own web site or the web site of a competitor.

Furthermore, the Panelist finds that although the contested domain name was registered on August 23, 1999, and the Complainant’s trademark was not registered until February 29, 2000, the fact that the contested domain name has been auto-forwarded to the Complainant’s intranet service web site indicates that the Respondent has been aware of the existence of the Complainant’s company and its trademark. The fact that the word KAPITEELI does not have any meaning in English also indicates that the Respondent had prior knowledge of the Complainant’s trademark.

In view of the above the Panelist finds that the Respondent has registered and used the domain name in bad faith in accordance with Paragraph 4(b)(iv) of the Policy.

Consequently, the Panelist concludes that the contested domain name has been registered and used in bad faith in accordance with Paragraph 4(a)(iii) of the Policy. Therefore, all the prerequisites for cancellation or transfer of the domain names according to Paragraph 4 (i) of the Policy are fulfilled.

The Complainant has requested transfer of the domain name.

 

7. Decision

In view of the above circumstances and facts, the Panelist decides that the domain name registered by the Respondent is identical or confusingly similar to the trademark and service mark in which the Complainant has rights, and that the Respondent has no rights or legitimate interests in respect of the domain name, and that the Respondent’s domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panelist requires that the registration of the domain name <kapiteeli.net> be transferred to the Complainant.

 

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Jonas Gulliksson
Sole Panelist

Dated: June 18, 2003