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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Osuuspankkikeskus Osk v. RegisterFly.com

Case No. D2006-0461

 

1. The Parties

The Complainant is Osuuspankkikeskus Osk, Helsinki, Finland, represented by Heinonen & Co., Attorneys-at-Law Ltd., Finland.

The Respondent is RegisterFly.com, New York, United States of America.

 

2. The Domain Names and Registrar

The disputed domain names <opkk.com> and <opkk.net> are registered with eNom.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2006. On April 12, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name(s) at issue. On April 13, 2006, eNom transmitted by email 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”).

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 April 20, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 12, 2006.

The Center appointed Adam Taylor as the sole panelist in this matter on May 30, 2006. 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

The Complainant is a cooperative society incorporated under the laws of Finland.

Since the 1970’s, the Complainant has operated one of the largest real estate businesses in Finland. The Complainant has approximately 170 offices around Finland.

The Complainant has operated a website at “www.opkk.fi” from around 1997.

The Complainant owns four Finnish trademark registrations 226810, 226811, 228316, and 228317 for a wide range of goods and services. All are dated 2002, and all comprise logo trademarks with either “opkk.fi” or “www.opkk.fi” in large stylized italicized lettering and the name “OP-Kiinteistцkeskus” below in a smaller capitalized font.

Since at least 2001, the Complainant has advertised extensively in the main national newspaper in Finland.

The disputed domain names were both registered on September 6, 2004, in the name of Registerfly.com which describes itself as a “Whois Protection Service”.

At some point thereafter the disputed domain names were forwarded to a Finnish pornographic site.

 

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The sign OPKK is a dominant part of the trademarks and the trademark registrations give protection to this part of the trademark registrations.

The Complainant had trademark rights to OPKK at the time when the Respondent registered the disputed domain names.

In addition to the registered trademarks, the Complainant has established rights to the sign OPKK in accordance with Article 2 of the Finnish Trademarks Act. In City of Hamina v. Paragon International Projects Ltd, WIPO Case No. D2001-0001 the panel confirmed that in Finland trademarks may acquire distinctiveness and become established in the meaning of the Trademarks Act as a trademark and that such established trademarks enjoy the same trademark protection as registered trademarks.

The trademark OPKK has been used since the mid 1990’s. The Complainant has acquired exclusive trademark rights to the trademark OPKK first by establishment and then by registration in 2003.

The website “www.opkk.fi” has since its start had a large amount of visitors. For example in January 2006 there were 145,000 visitors on the website. In a country with population of approximately 5 million, this proves that the trademark OPKK is widely known in Finland.

Every Sunday and Wednesday, advertisements showing the use of the trademark OPKK appear in the largest newspaper of Finland, Helsingin Sanomat, which has approximately one million readers.

Based on the trademark registrations and the establishment, OPKK is a protected trademark giving only the Complainant the right to the disputed domain names.

The disputed domain names are nearly identical and/or confusingly similar to the Complainant’s trademark OPKK, since they entirely incorporate it. The addition of the gTLD “.com” or “.net” has no legal significance when comparing the domain names and the Complainant’s trademark.

Rights or Legitimate Interests

The Respondent does not have a US trademark registration for the word “Opkk” in the USA. A search covering thirty trademark databases suggests that it has no other registered trademarks for OPKK.

The disputed domain names redirect consumers to a Finnish pornographic site at “www.pornolinkit.net” and are not used in any genuine business activity.

The Respondent is using the disputed domain names only for commercial gain to divert customers misleadingly to its own website. Using another’s trademark for commercial gain is not “fair use”. Panels have held that using a domain name that incorporates completely the mark of another is not legitimate use and prima facie supports the conclusion that a respondent does not have a legitimate interest in the domain name.

OPKK does not have any dictionary meaning in English. A third party cannot have rights to the distinctive sign OPKK.

To the Complainant’s knowledge, the Respondent has not been commonly known by the disputed domain names.

The Respondent is not making a legitimate non-commercial or fair use of the disputed domain names.

Registered and Used in Bad Faith

The Respondent has registered the disputed domain names without any bona fide basis but is seeking to unfairly benefit from the trademark of the Complainant.

The disputed domain names have been redirected to a Finnish pornographic site. Thus it is apparent that behind the registrations is a Finnish person, who must have been aware of the trademark OPKK which is widely known in Finland and the popular website “www.opkk.fi”. This person is trying to take advantage of the fact that sometimes users by mistake type the popular gTLD .com or .net instead of the national ccTLD .fi. commonly known.

The disputed domain names have been registered in order to prevent the Complainant from reflecting its trademark OPKK in corresponding domain names and the Respondent has engaged in a pattern of such conduct in the sense of paragraph 4(b)(ii) of the UDRP Policy. The Respondent has been respondent in the following cases where domain names were transferred away from it: <egenericviagra.com> (WIPO Case No. D2004-0586), <freegenericviagra.com> (WIPO Case No. D2005-0156), <bestwedgewoodchinafast.info> (WIPO Case No. D2005-0876), <antoniodefelipe.com> (WIPO Case No. D2005-0969) and <hillsperscriptiondiet.com>, (WIPO Case No. D2004-0819).

The Respondent has also intentionally attempted to take advantage of the Complainant’s trademark in the sense of paragraph 4(b)(iv) of the UDRP Policy. The Respondent has registered the domain names in order to attract internet users to the pornographic website and is thereby tarnishing the trademark OPKK.

The disputed domain names incorporate the Complainant’s trademark and thereby create a risk that internet users who visit the websites may think that there is some sort of affiliation with the Complainant or that the Complainant authorized use of its trademark on a pornographic website or that the Complainant is active in pornography.

The Complainant has good reason to believe that the Respondent registered the disputed domain names with the Complainant’s trademark in mind and primarily for the purpose of selling it to the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain names.

If the disputed domain names remain in the Respondent’s name, the Complainant’s intellectual property rights would be infringed.

B. Respondent

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

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant relies, first, on four Finnish logo trademarks. The most prominent aspect of each trademark is the term “opkk.fi” / “www.opkk.fi” and “opkk” is in turn the distinctive and dominant part of each of those terms.

The Complainant also invokes unregistered rights based on the trademark OPKK having become “established” under the Finnish Trademarks Act. This appears to amount to the same thing as a claim of common law rights. The Complainant has produced evidence of extensive use in Finland of a logo similar to those comprised in the registered trademarks including appearance twice weekly in the largest Finnish daily newspaper since at least 2001 and on the Complainant’s own highly visited website.

The Respondent has not appeared in this proceeding to contest the Complainant’s assertions as to trademark rights.

Further, the Panel has concluded below that the Respondent set out to target internet users seeking the Complainant. Such activity by the Respondent presupposes that the Complainant’s business was known and identified, inter alia, by the term OPKK.

In light of the above matters, the Panel concludes that the disputed domain names are identical or confusingly similar to a trademark (OPKK) in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests thereby created. See, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070.

The Complainant has not licensed or otherwise authorized the Respondent to use its trademark.

As to paragraph 4(c)(i) of the Policy, a number of panels have held that use of a domain name for pornographic content unrelated to the domain name itself does not constitute a bona fide offering of goods or services. See, eg, InnoTown AS v. Mr. Jason Forest, WIPO Case No. D2003-0718. Certainly the Respondent has not come forward to claim that there is a logical connection between the disputed domain names and pornographic content or otherwise justify its use of the disputed domain names.

There is no evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply.

The Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.

The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Respondent is a proxy service used to conceal the identity and contact details of the person behind the disputed domain name. In this decision, the Panel treats that service and the unidentified controller interchangeably.

While the use of such a service is not conclusive evidence of bad faith as there can be genuine reasons for it (for example to prevent spam), the reluctance of the controller of the disputed domain names to reveal itself is nonetheless a factor which the Panel takes it into account in conjunction with the other matters below.

It is telling that the disputed domain names forward to a Finnish pornographic website. This suggests to the Panel that the controller is most probably based in Finland or has links to Finland, and likely to have registered the disputed domain names to target users who mistype the address of the Complainant’s website at “www.opkk.fi” into their browsers or who are otherwise seeking the Complainant, which is well-known in Finland.

The Respondent has not come forward to deny the Complainant’s assertions of bad faith effect or offer any plausible genuine explanation for registration and use of the disputed domain names.

The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract internet users to its websites for commercial gain by creating a likelihood of confusion with the Complainant’s trademark.

The likelihood of confusion is not diminished by the possibility that at some point users arriving at the sites will realize that they have reached the wrong destination. Paragraph 4(b)(iv) of the Policy is concerned with the intentional attracting of internet users. Here, the Respondent used the disputed domain names to create “initial interest confusion” on the part of internet users seeking the Complainant and in order to profit from at least some of that traffic. See, e.g., National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, WIPO Case No. D2000-0118 and Jardine Motors Group Holdings Limited v. Zung Fu Kuen, WIPO Case No. D2004-0168.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <opkk.com> and <opkk.net> be transferred to the Complainant.

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Adam Taylor
Sole Panelist

Dated: June 13, 2006