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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sampo plc v. Tom Staver

Case No. D2006-1135

 

1. The Parties

The Complainant is Sampo plc, Helsinki, Finland, represented by HH Partners, Attorneys at Law, Ltd., Finland.

The Respondent is Tom Staver, Irvine, California, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <sampobank.com> is registered with Kingdomains Inc, an eNom owned registry credential.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2006. On September 8, 2006, the Center transmitted by email to Nameview Inc a request for registrar verification in connection with the domain name at issue. On September 9, 2006, Nameview transmitted by email to the Center its response, informing the Center that Nameview was no longer the Registrar for the domain name at issue. In response to a request from the Center, Nameview responded, on September 14, 2006, that the domain was in redemption and should be available for registration at the beginning of October 2006.

After email communication with the Respondent and upon request of the Complainant, the Complaint was suspended on October 13, 2006. On October 23, 2006, the Complainant informed the Center that the Complainant had failed to take control over the disputed domain name and requested for a re-institution of the pending dispute. On October 30, 2006, the Center re-instituted the administrative proceedings.

On October 30, 2006, the Center transmitted by email to Kingdomains Inc a request for registrar verification in connection with the domain name at issue. On October 30, 2006, eNom (of which Kingdomain Inc is owned as a registry credential) 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.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 6, 2006.

The Center verified that the Complaint together with the amendment to 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 November 9, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 29, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2006.

The Center appointed Anders Janson as the sole panelist in this matter on December 12, 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 the parent company of the Sampo Group, a financial services group in the Nordic and Baltic regions. The Complainant owns three subsidiaries engaged in insurance, banking and investment services. The subsidiary Sampo Bank plc is a bank specializing both in traditional banking products, such as housing loans, and in investment and savings. About 1.1 million people and over 100, 000 companies and institutions have banking relations with Sampo Bank and it has a market share of 10-20 per cent in Finland. Subsidiaries operate in Estonia, Latvia, Lithuania and the Russian Federation. Sampo Bank Group employs approximately 4, 500 people.

The Complainant has asserted that it holds numerous trademarks comprising the trademark SAMPO. The Complainant has, in the Complaint, put forward a number of registrations. Among the registrations put forward can be mentioned:

- Registration no 2316687 of SAMPO (+device), registered on February 21, 2003, in the EU for the classes 35 and 36.

- Registration no 39544258 of SAMPO, registered on April 18, 1996, in Germany for the class 36.

- Registration no 2042981 of SAMPO, registered on October 9, 1996, in the United Kingdom for the class 36.

The Panel notes that the registration dates of the three above-mentioned registrations predate the registration of the disputed domain name by the Respondent, which was on October 13, 2006, with Kingdomains Inc and May 10, 2005, with Nameview. The Complainant furthermore operates the website, “www.sampo.com”.

The Respondent is Tom Staver, with a stated address in Irvine, California in the United States of America. The disputed domain name does not link to a specific website but contains lists of hyperlinks to various other websites.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- The disputed domain name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;

- The Respondent has no rights or legitimate interests in respect of the disputed domain name;

- The disputed domain name was registered and is being used in bad faith; and

- that the disputed domain name <sampobank.com> should be transferred to the Complainant.

B. Respondent

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

 

6. Discussion and Findings

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

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

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

A. Identical or Confusingly Similar

The domain name in question is <sampobank.com>. The Complainant holds a number of registered trademarks of the word “sampo”. The Panel finds that the Complainant has established that SAMPO is a recognized trademark and that the trademark is distinctive. The disputed domain name contains the Complainant’s mark SAMPO in its entirety, with the added suffix “bank” and the generic and functional top level domain name “.com”. In determining whether a domain name and a trademark are identical or confusingly similar, the gTLDs and ccTLDs that constitute the suffix shall be disregarded. The question is therefore if the addition of the suffix “bank” makes the disputed domain name dissimilar to the Complainant’s registered trademarks.

In previous UDRP decisions, the panels have found that the fact that a domain name incorporates a complainant’s registered mark may be sufficient to establish identity or confusingly similarity for the purpose of the Policy (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 and CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273).

The Panel finds that the term “sampo” is the distinctive part of the disputed domain name, and the generic term “bank” adds little to the overall impression of the disputed domain name. Internet users are highly likely to assume that the addition of the word “bank” to the trademark SAMPO signifies a website associated with the Complainant. The Panel finds that the addition of the suffix “bank” does not diminish the similarity between the disputed domain name and the Complainant’s trademark.

The disputed domain name is therefore considered to be confusingly similar to the trademark SAMPO. The panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Complainant has asserted the following. The Complainant is unaware of any use by the Respondent of the disputed domain name or of demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods and services.

The Complainant has furthermore asserted that the website, to which the disputed domain name resolves, is a collection of links to third-party websites, offering different types of banking services and that no goods or services by the Respondent are promoted on the website.

The Respondent has not filed a Response. In these circumstances, when the Respondent does not have an obvious connection with the disputed domain name, the mere assertion from the Complainant that the Respondent has no right or legitimate interest is enough to shift the burden of proof to the Respondent to demonstrate that such right and legitimate interest exists. The Respondent has not demonstrated or argued that he used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services or that any other rights or legitimate interests exist. Registration of a domain name in itself does not establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.

In conclusion, the Respondent has not presented any evidence of rights or legitimate interests in the disputed domain name and has no obvious connection to it. The Panel therefore holds that the Complainant has established element (ii) of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Complainant has asserted that the Respondent’s registration and use of the disputed domain name has evidently been made in bad faith with regard to the Complainant’s established rights to the trademark SAMPO. The Complainant is the sole banking institution in the world using the word “sampo” in its trademark. It is, according to the Complainant, evident that the disputed domain name was registered either to prevent the Complainant from reflecting its mark in the corresponding domain name or that the Respondent, by using the disputed domain name has intentionally attempted to attract for commercial gain, Internet Users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of a product or service on the Respondent’s website or location.

Paragraph 4(b) states four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the domain name. Paragraph 4(b)(iv) states that a circumstance indicating bad faith is using a domain to intentionally attempt to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of your website or location or of a product or service on your website or location.

Based on the evidence provided by the Complainant, the Panel finds it established that the website of the disputed domain name consists of a hyperlink collection where products and services of other banks are marketed. The domain name, by these links, diverts Internet users to websites promoting and offering products and services of third parties in direct competition with the Complainant. It must therefore be hold that the Respondent, by these actions, is trying to mislead consumers in order to attract them to other websites making them believe that the websites behind those links are associated or recommended by the Complainant.

The Panel finds, with reference to the above-mentioned and the proof provided by the Complainant, that the Respondent uses the disputed domain name in bad faith, hence having intentionally attempted to attract, for commercial gain, Internet users to web-sites, by creating a likelihood of confusion with Complainant’s mark as to the source.

The Panel therefore concludes that the Complainant has proven that the Respondent registered and is using the domain name in bad faith pursuant to Paragraph 4(a)(iii) of the Policy.

 

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 name, <sampobank.com> be transferred to the Complainant.

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Anders Janson
Sole Panelist

Dated: December 26, 2006