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WIPO Domain Name Decision: D2000-1680
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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ICL Invia.com vs. Invia (TMPend) Ltd
1. The Parties
Complainant is ICL Invia Oyj, Valimotie 16, 00101 Helsinki, Finland. It is in this case represented by Esa Korkeamäki and Vesa-Jaako Rantala, Heikki Haapaniemi, Attorneys at Law, Ltd, Box 232, 00101 Helsinki, Finland.
Respondent is Invia (TM pend) Ltd, with mailing address P.O. Box 41, St-Petersburg, St Petersburg 191025, Russia.. It is in this case represented by T. Timoshenko, General Director (CEO), Mailadmin. P.O. Box 41, St-Petersburg 191025, Russia.
2. The Domain Name and Registrar
The domain name at issue is "invia.com" and the Registrar is Domain Direct/Tucows. Com., Inc, 96 Mowat Avenue, Toronto, ON M6K 3M1, Canada.
3. Procedural History
A Complaint was received by the World Intellectual Property Organization Arbitration and Mediation Center (the Center) on December 4, 2000, in electronic form and in hard copy form on December 5; the same day an Acknowledge of Receipt of Complaint was issued.
Having sent on December 6, 2000, a Request for Registrar Verification, such a Verification was received on December 13, 2000. According to that Verification
a) no copy of the complaint had yet been received by the Registrar;
b) the domain name "invia.com" is in fact registered with Tucows.Com., Inc.;
c) the Respondent is the current Registrant of the domain name at issue;
d) the Registrant is Invia (TM.pend) Ltd, Mailadmin, P.O. Box 41, St-Petersburg, St Petersburg 191025, Russia;
e) administrative Contact is "Invia (TM pend.)Administrator "info@mail."invia.com"", Mailadmin, P.O. Box 41, St-Petersburg, St-Petersburg 191025 RU +7 812 941400";
f) Technical Contact and Billing Contact is the same as Administrative Contact;
g) record was created on May 7, 2000, last updated on December 12, 2000, and expires on May 7, 2001;
h) the Uniform Domain Name Dispute Resolution Policy applies to the domain name as per Section 7 of the Registration Agreement;
i) the domain name is currently on hold in Registarґs system, something that will not affect the functionality of the website but is a procedure in place to ensure that no changes of Registrar or ownership occur for the duration of the dispute.
Having verified, on December 13, 2000, that the Complaint satisfied the formal requirements, the Center issued, the same day, a Notification of Complaint and Commencement of Administrative Proceeding which was communicated to the Parties and copied to ICANN and to the Registrar.
On January 3, 2001, a Response was submitted by e-mail to the Center, of which an Acknowledgement of Receipt was issued the same day. The following day a hard copy of the Response was received.
Having invited Mr. Henry Olsson to serve as a Sole Panelist in this case and having received, on January 10, 2001, Mr. Olssonґs Statement of Acceptance and Declaration of Impartiality and Independence, the Center issued, the same day, a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Olsson was formally appointed as Sole Panelist. The Projected Decision Date was January 24, 2001.
The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the WIPO Supplemental Rules.
4. Factual Background
Complainant, ICL Invia Oyj, has its origins in the 1960s when it developed and later merged with Nokia. In the late 1980s Nokia Information Systems, Ericssonґs Data Group and Dava merged into Nokia Data Systems. This company was then sold to ICL Plc and the business name was changed to ICL Data Oy. In March, 2000, a portion of the company’s shares was sold to institutional investors. In May, 2000, the Finland-based ICL Data acquired ICLґs Swedish, Danish and Norwegian companies while changing its name to ICL Invia Oyj.
ICL Invia Oyj is part of the FUJITSU Group and is also part of the global ICL Plc Group. Its net sales for the financial year ending on March 31, 2000, amounted to EUR 355,8 million with an operating profit of EUR 23,4 million and a net profit of EUR 58,9 million. The company employs approximately 3 000 persons. Its operations include designing, implementing and operating e-business solutions.
5. Partiesґ Contentions
Complainant contends that ICL Invia Oyj is to-day one of the most widely known and leading suppliers of comprehensive e-business solutions in the Nordic and Baltic Sea Region. The company provides e-business applications integrated with basic applications and business systems that require information technology infrastructure support. Complainant focuses on the markets of financing, retail, industry and telecommunications and also public administration, and it designs, builds and operates in all those sectors in the Nordic countries.
Complainant is the owner of the mark INVIA in Finland, Norway, Sweden, Denmark, Latvia, Lithuania and Estonia and also has a EU registration and an international registration under the Madrid Protocol. All those registrations are in classes 9, 35, 37, 38, 41 and 42, which relate to various types of computer, telecommunications and information services. The first application for registration was filed in Finland, on April 24, 2000.
Complainant owns and has since 1991 used the trademark ICL Data and has built a strong presence through use. Also the name ICL Invia has gained a very strong establishment on the market by use since it has been the symbol of Complainant’s business from the year 2000 and onwards and also enjoys protection in accordance with Article 2 of the Finnish Trademark Act. It has thus been used in international classes 9, 35, 37, 38, 41 and 42, which, as mentioned before, relate to various computer, telecommunications and information services. Thus, Complainant has a real and valid interest to all exclusive rights in the symbol INVIA as a symbol for its business activities.
Complainant contends the domain name is identical to the trademark in which Complainant has rights, the Respondent has no rights or legitimate interests in respect of the domain name and that the domain name was registered and is being used in bad faith.
In relation to the first element, Complainant asserts that the relevant part of the domain name at issue is INVIA, which is clearly identical to the distinctive word INVIA which is registered as the dominant part of Complainant’s trade name and as such appears also in Complainant’s trademark applications filed before the disputed domain name.
As regards Respondent’s rights and legitimate interests in the domain name, Complainant contends that a natural person with the name Gustavo Antorcha (for whom the administrative contact was a Finnish company) first registered the domain name at issue. The contact details of that company were "Transfer Officer, Transfer@euronic.com, P.O. Box 102, Lappeenranta, Kymi 53101, Finland". Thus, Registrant must through its administrative channels have had knowledge about Complainant’s trade name and international reputation by the time of the registration of the domain name at issue. Furthermore, as Finland with its comparatively small population is a very limited market, large software companies, such as Complainantґs are very well known among Finnish persons who are active in this specific area. In addition, INVIA is an invented word and not one that traders would legitimately choose unless seeking to create an impression of some association with complainant. It is, in the view of Complainant, evident that Respondent is seeking to create an association with Complainantґs well-known company name and trademark.
Complainant asserts that it has not licensed or otherwise permitted Respondent to use any of its trademarks, nor has it licensed or otherwise permitted Respondent to apply for or use any domain name incorporating its trademark.
As then concerns registration and use in bad faith Complainant invokes mainly the following four elements. First, as no existing company under the name Invia Plc seems to exist in any relevant register in St Petersburg, Respondent apparently has provided inaccurate company and/or address information for the purposes of its domain name registration, in breach of Respondent’s warranty under Paragraph 2(a) of the Policy. Secondly, the trademark INVIA is one of the best known IT service marks in the Nordic and Baltic Sea area, including St Petersburg and it is inconceivable that the persons behind Respondent would not be aware of this fact. Thirdly, by virtue of the widespread use and reputation of the trademark INVIA, members of the public and of the business community in that area would believe that the entity owning the domain name "INVIA.COM" is the parent company of Complainant or in some other way associated with Complainant. Fourth, due to the strong establishment of the mark INVIA, this must be considered to be a well-known mark and thus enjoying broad protection; Respondent can, therefore, not have made itself generally known by means of the domain name at issue prior to the commencement of the proceedings at hand.
Complainant furthermore alleges that it is not aware of any trademark registrations or applications for the trademark INVIA in the name of Respondent anywhere in the world; in any case it is evident that Registrant has not owned a single registration or application for such a registration prior to the registration of the domain name at issue. Complainant adds that Respondent does not own any valid trademark registrations or pending registration applications for the symbol INVIA whose priority would be prior to that of the domain name at issue. Complainant is not aware that the symbol INVIA would be used as a trademark for any goods or services in any country of the world by Registrant or that any preparations have been made for initiating such use.
In view of these elements and because the changing of the name of Complainant from ICL Data to ICL Invia was widely reported in Scandinavian and European media, circumstances indicate that the domain name was initially registered for the sole purpose of either selling the domain name to Complainant for valuable consideration in excess of the Registrant’s out-of-pocket costs directly related to the domain name, or for unauthorised use of the goodwill connected to Complainant’s business and trademarks.
The registration of the domain name does, in the view of Complainant, factually prevent it from reflecting its trademark INVIA in a corresponding domain name. The mere act of registration must, in the light of earlier decisions by Administrative Panels be considered to be a use in bad faith. Complainant finds that the factual circumstances in the case at hand clearly amount to the conclusion that the act of registration in this case constitutes a use in bad faith in accordance with paragraph 4(a)iii of the Policy.
On the basis of these allegations Complainant requests that the domain name "invia.com" be transferred to Complainant.
Complainant agrees, in accordance with Paragraph 3(b)(xiii) of the Policy 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 the Complaint, to the jurisdiction of the courts where Respondent is located as shown by the addresses 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.
Respondent has submitted a comprehensive and detailed Response, all the elements of which cannot be reported in this decision. Essentially, however, Respondent
1) rejects the allegations by Complainant and requests the Administrative Panel to deny the remedies requested by Complainant,
2) asks the Panel to make a finding of reverse domain name hijacking in the basis of the allegations contained in the Response.
In addition, Respondent submits that the very fact that this case has been brought means "considerable loss of business reputation" for Respondent; as the allegations by Complainant are, in the view of Respondent, unfounded, it requests "immediate disclamation of the allegations" and "immediate compensation for the moral losses to the business reputation of the Respondent in the amount of 200 000 USD." In this context Respondent stresses that it is currently developing a search and mobile telephone support system oriented mainly towards an Italian market, with the help of software developers in St Petersburg and appropriate experience in this field.
First, Respondent stresses that it is the Complainant who has the burden of proof in respect of all three elements included in Paragraph 4.a of the Policy; what Complainant has submitted are either presumable conclusions or assumptions and indirect proofs.
Respondent submits that the domain name "invia.com" was first registered in February 1998 and was being used in good faith without any connection with Complainant, which did not exist under the name Invia at that time. The domain name originally belonged to a US company INVIA INDUSTRIES, INC, located in Pittsburg. United States, as shown in an extract from Whois Network Solutions database. Respondent tried to acquire the domain name but did not succeed. The domain name was then dropped and when it was then available, Respondent applied for a domain name registration and registered it for its own use. Respondent refers in this respect to a screenshot showing the results of the query "invia" at the Altavista search engine. Before the registration, Respondent checked all available databases and could not find any registered identical or similar trademarks, nor any application for this name.
According to Respondent, Complainant does not have any valid trademark right but only applications for trademark registrations and, for instance, protection under the Madrid Protocol depends on the fate of the basic Finnish registration. Thus, the case is not within the scope of the Uniform Domain Dispute Resolution Policy. It could also, in the view of Respondent, involve elements of unfair competition, at least under the laws of the Russian Federation.
Respondent expresses disagreement with Complainant’s allegation about inaccurate information about Respondentґs identity and address. In this respect Respondent has submitted copies of a Decision by the Registration Chamber of the Administration of St. Petersburg and a Certificate by the same Chamber indicating that on November 17, 2000, the Limited Liability Company Invia was registered. Respondent also invokes that it has in fact received e-mails from Complainant and also hardcopy material in this case.
As regards Respondentґs actions in good faith Respondent first alleges that the word "Invia" is in fact not a constructed word but has a meaning both in Latin, Italian and Russian and is being used as the name for goods and services provided by Respondent; it does in fact denominate indefinite number of entities in commerce. In this respect Respondent invokes the contents of a number of Annexes containing, inter alia, results of Whois queries concerning, among others, the domain names "Invia.net" and "Invia.org". The choice of the name "Invia" was the result of research by specialists on behalf of Respondent.
Respondent alleges that it is using the "Invia" name and "Invia.com" domain name exclusively in good faith, i.a. in connection with the websites "http://www.invia.com" and "http://www.peterburg.com", copies of which have been submitted and are included in the material provided by Respondent. Respondent stresses that in the website it points out that it is not affiliated with any other company.
According to Respondent, the brand name and the product name "Invia" were used in commerce since March 2000 even if preparations for such use started before that. Respondent is commonly known among customers and partners under the name Invia since that time. Respondent also has submitted copies of certificate showing that, on –December 5, 2000, the Russian Agency for Patents and Trade Marks (ROSPATENT) accepted for consideration an application for registration of the trademark Invia. In summary, Respondent suggests that neither the registration nor the use of the domain name can infringe Complainantґs rights because chronologically the brand name, product name use and domain registration were made before any information was available to Respondent and, furthermore, the domain name and the website are being used with due care by indications that it is a St-Petersburg company with no links to any other company under the same or similar name.
Respondent also points out that the names of its products (Invia Games, Invia News and Invia Forum) are protected by copyright law in the Russian Federation and have been used openly and exclusively in good faith by Respondent and its affiliates since March 2000.
In view of these circumstances, the elements of Paragraph 4.a (ii) on rights and legitimate interests should be decided in favour of Respondent.
Respondent furthermore alleges that it has no connections with the Finnish market, has no interests in that market and has no knowledge about it. Respondent submits that its market is different from that of Complainant and that the companies ICL Data oyj or ICL Invia oyj are not known in St Petersburg. Complainant alleges that one of Invia Ltd partners could be involved in an illegal arrangement with the American citizen Gustavo Antorcha that could include an attempt of illegal transfer of property. Respondent assumes that the alleged Gustavo Antorcha was related to the previous owner of the domain name, Invia Industries Ltd. In any case Invia Ltd has no connection with Gustavo Antorcha.
Respondent alleges that a number of intellectual property rights for Invia websites existed in the past, such as "invia.net", "invia.org", "invia.de", "invia.nl" and "invia.com". Respondent refers in this context to Annexes which contain results of Whois queries relating to those domain names. Respondent stresses that this shows that the Invia name is wide-spread and not connected with any specific owners; it is, according to Respondent, impossible to assume that all owners of the Invia domain name knew or considered the existence of the company ICL Data Oyj.
For all these reasons, Respondent asks the Center to decline Complainantґs requests.
As then regards Respondentґs claim for a finding on Reverse Domain Name Hijacking, Respondent invokes essentially the circumstances mentioned above but stresses, inter alia,
- that the domain name was being constantly and fairly used, including by previous owners, in commerce long before Complainant decided to obtain any rights in that domain name;
- by the moment of the Complaint, Complainant did not have any protected rights in the object of intellectual property;
- that Complainant, at the time of the application for registration of its trademark, knew, or should have known, about the rights held by other entities and about the use of "invia.com" by other entities;
- that Complainant has attempted to discredit, among other matters, the business reputation of Respondent before third parties, being evidently informed about the rights of Respondent.
6. Discussions 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 appropriate.
Applied to this case, Paragraph 4(a) of the Policy directs that Complainant must prove each of the following;-
a) that the domain name registered by Respondent is identical or confusingly similar to a trademark or a service mark in which Complainant has rights,
b) that Respondent has no rights or legitimate interests in the domain name,
c) that the domain name has been registered and is being used in bad faith.
As regards Respondentґs claims for a finding of Reverse Domain Name Hijacking the Panel has to consider the provisions of Rule 1 of the Rules according to which Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name. Also, Rule 15(e) prescribes: "If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt of Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding."
In the following part of the decision the Panel discusses each of those elements and also Respondentґs request for a finding against Complainant.
Identity or Confusing Similarity
The first element, which a Complainant has to prove, is, according to Paragraph 4.a(i) of the Policy, that Respondentґs domain name is identical or confusingly similar to a trademark or a service mark in which Complainant has rights.
The domain name at issue is "invia.com".
Complainant has submitted that it is the proprietor of applications for trademark registrations of the mark INVIA in Finland and in other countries in Scandinavia and the Baltic States as well as in the European Union and under the Madrid Protocol. The first one of those applications was, according to Complainant, filed on April 24, 2000. Dates for the filing of the other applications are not available.
Respondent has not contested that such applications have been made. The Panel consequently concludes that in fact applications for registration of the mark INVIA have been made, of which at least the one in Finland was filed before the registration of the domain name at issue on May 7, 2000. The Panel also concludes that per se the domain name at issue would be identical or at least confusingly similar to that trademark.
The filing of an application for registration of a trademark does not, however, create a right in that mark. Under at least Finnish law such rights may be created by the use of the mark, in accordance with Article 2 of the Finnish Trademark Act, which is in this respect similar to the Trademark Acts of the Scandinavian countries. It prescribes basically that an exclusive right in a trademark may be acquired, also without registration, if the mark has been established on the market. This means in essence that the mark must, in the country concerned, within a significant portion of the circle for which it is intended, be known as a symbol for the goods which are being made available under it.
In this respect Complainant contends that the name ICL Invia has gained a very strong establishment by use as a symbol for Complainantґs activities from the year 2000 and onwards. Complainant also suggests that the trademark at issue has such a strong establishment that it must be considered as well known and thereby entitled to a broad protection as mentioned in WIPOs Recommendation on the Protection of Well-known Marks.
It is extremely difficult for the Panel to determine, without any evidence at hand and in a strictly formalised proceeding as the present one, whether in fact there exists a trademark right also in a situation where the mark has not been registered. This is particularly so when the mark, as in the present case, has existed in the market for a comparatively short time. Even if there is reason to believe that the mark is at least in the process of being established on the market and therefore protected, it is not clear for the Panel whether this is in fact the case. As the situation in this respect remains unclear, the Panel proceeds to examine the other elements mentioned in Paragraph 4.a of the Policy before deciding on the outcome of the examination of the Complaint.
Rights or Legitimate Interests
As regards this element of the proceeding, Complainant has, according to Paragraph 4.a (ii) of the Policy, to prove that Respondent has no rights or legitimate interests in respect of the domain name.
Respondent has in this respect indicated that the domain "invia.com" earlier belonged to another company but that Respondent registered it after it had been abandoned by the previous owner and that Respondent has used it for its website after it was registered. As regards the statement that Respondent had earlier been owned by another company Respondent has referred to the contents of certain annexes, in this case Annex 25 (Screenshot evidencing the results of the query "invia" to Altavista Search engine). Respondent has also referred to certain other Annexes (containing the results of certain Whois queries) in support of its allegations that domain name registrations exist for the domain names "invia.net", "invia.org", "invia.de" and "iclinvia.com". In some of these cases records of the registration were created as early as in 1998.
As mentioned, it is Complainant that has to prove that Respondent has no rights or legitimate interests in the domain name at issue. Taking into account Respondentґs allegations in this respect and the pieces of evidence submitted to support those allegations, the Panel considers that Complainant has not sufficiently proved that in fact Respondent has no rights or legitimate interests in respect of the domain name at issue.
Registration and Use in Bad Faith
In this respect Complainant has, according to Paragraph 4.a (iii) of the Policy, to prove that the domain name at issue has been registered and is being used in bad faith. Paragraph 4 b. of the Policy then contains examples of situations which shall be evidence of bad faith if found to be present by the Panel.
To support its allegations, Complainant has invoked several circumstances, among them that no existing company under the name Invia Plc seems to exist and that inaccurate company and/or address information has been provided for the purposes of the domain name registration. In view of the circumstances invoked by Respondent and the evidence submitted to support these, the Panel cannot find Complainantґs allegations in this respect supported by evidence. On the other hand, evidence available in the case support Complainantґs allegations that Respondent did in fact not own any trademark registration or application for such registration prior to the registration of the domain name.
An important element is whether the existence and the operations of Complainantґs business could have been known by Respondent at the time of the registration of the domain name at issue. The Panel accepts that ICL Invia Oyj and its products and operations are in fact very well known in Finland; whether this is the case also in the other Scandinavian countries and in the Baltic States is somewhat more uncertain, but the Panel accepts that this may be the case. Whether the same would apply also in St-Petersburg is far more uncertain. The question whether bad faith existed on the side of Respondent has therefore to be evaluated also taking into account the circumstances surrounding the acquisition and registration of the domain name at issue. In this respect Complainant has invoked that the domain name at issue was first registered by Gustavo Antorcha whose administrative contact was a Finnish company. Respondent has basically stated that any arrangements with Gustavo Antorcha would have an illegal character; according to Respondent the domain name at issue was registered after the previous owner, a US company, had abandoned it.
Different pictures are thus presented concerning the circumstances surrounding the registration of the domain name at issue. It is consequently extremely difficult for the Panel to get a clear view of what actually happened in connection with the registration of the domain name, in particular because evidence is incomplete. Evidence available suggests, however, that the sign "invia" did exist and was used before it was actually registered as a domain name by Respondent after having been abandoned by a previous owner.
Complainant has also invoked that INVIA is an invented word and not one that traders would not legitimately choose unless seeking to create an impression of some association with Complainant. Respondent has contested these allegations and submitted that that word has been chosen after some research and that it exists in other languages. In view of this the Panel can not agree with Complainantґs allegations in this respect.
Having considered these and the other circumstances present in this case the Panel comes to the conclusion that Complainant has not been able to sufficiently prove that the domain name has been registered and is being used in bad faith.
Conclusions as regards Complainantґs claims
On the basis of the considerations set out above, the Panel concludes that Complainant has not sufficiently established the elements mentioned in Paragraph 4.a of the Policy. The conclusion therefore must be that Complainant’s request for transfer of the domain name at issue shall be rejected.
The question of Reverse Domain Name Hijacking
The Panel then has to consider Respondent’s counterclaim for a finding on Reverse Domain Name Hijacking. The Panel does not find that the circumstances invoked by Respondent support the conclusion that Complainant has brought the claim in bad faith in an attempt to deprive Respondent of its domain name. Respondent’s claim for a finding in this respect shall consequently be rejected.
On the basis of the foregoing considerations the Administrative Panel
1) rejects Complainant’s request for transfer of the domain name "invia.com", and
2) rejects Respondentґs request for a finding of Reverse Domain Name Hijacking of the domain name at issue.
Dated: January 16, 2001