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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kesko Oyj v Jessimet Oy
Case No. D2001-0199
1. The Parties
The Complainant is Kesko Oyj, a Finnish public company of Satamakatu 3, 00016 Kesko, Finland, represented by Heinonen & Co, Attorneys-at-Law, Ltd, of P. O. Box 671, 00101 Helsinki, Finland
The Respondent is Jessimet Oy, a Finnish company of Koroistentie 9 A 5, 00280 Helsinki, Finland, represented by Risto Eskola, of the same address as the company.
2. The Domain Name and Registrar
The domain name at issue is <kesko.com>. The Registrar is Network Solutions Inc., 505 Huntmar Park Drive, Herndon, VA 20170, USA.
3. Procedural History
The complaint was received by the WIPO Arbitration and Mediation Center on
February 7, 2001. A timely response was submitted and received by the WIPO Arbitration and Mediation Center on March 7, 2001. George R. F. Souter was appointed Sole Panelist on March 19, 2001.
4. Factual Background
The complainant is an old-established Finnish company, trading across a wide range of goods and services, with annual revenues of the order of Euros 6 billion.
The complainant has three Finnish trade mark registrations, in which the word KESKO is a prominent part. These registrations do not cover the whole range of goods and services in respect of which the company trades, and there is no registration of the trade mark KESKO simpliciter.
The complainant’s trading activities under the sign KESKO are well known in Finland. An independent market survey in 1998 found that the brand KESKO had an 87% brand awareness value among Finnish consumers, and that 68% of the public knows KESKO very well or fairly well.
The complainant has retail stores throughout Finland and is, consequently, widely known throughout the country.
The complainant’s name appears frequently in the Finnish media. The complainant cites, as an example, June 2000, during which "the mark KESKO appeared in Finnish local newspapers (not including the national newspapers) 264 times reaching a total circulation of 7.6 milllion readers". The population of Finland is circa 5 millions.
The company is a small web-related (especially databases) company in Helsinki.
It claims to have used the domain name at issue for almost three years as a non-commercial web site and mail and ftp server (from which a user can download information files from the server). It also claims that "many people" have their personal e-mail addresses under the domain name. The respondent has not quantified an approximate number of such claimed e-mail users, nor has it provided any evidence as to how these claimed users have been attracted to use the domain name as their e-mail addresses.
5. Parties’ contentions
The complainant alleges that its mark KESKO is so well-known in Finland that that there can be no doubt that the respondent would have known that it belonged to the complainant.
The complainant further alleges that the domain name at issue, as used, has a linkage to a further web site, from which the respondent can, in appropriate circumstances, obtain income, and that the respondent is, consequently, "gaining - or at least trying to gain – financial gain by attracting Internet users to the web site <kesko.com>.
The complainant additionally alleges that the respondent has engaged in a pattern of such conduct, and draws the Panel’s attention to another domain name owned by the respondent, <pohjola.com>, Pohjola Oyj being one of the largest insurance companies in Finland.
The complainant contends that the respondent has no legitimate interest in either the trade mark or the domain name, that it registered the domain name at issue in bad faith, and asks for the relief of transfer of the domain name at issue to itself.
The respondent alleges that the complainant’s "trademark is not (according to the Rules) so-called "well known" (small area and few people)".
The respondent further alleges that "the word kesko is so common Finnish word or a part of a word that anybody can not have better right to use it in Finland or worldwide", and has provided evidence showing the use of kesko as a part of a number of Finnish words.
The respondent draws the Panel’s attention to Section 9 of the Finnish Trademarks Act, and points out that it has been using the domain name for almost three years.
The English translation of Section 9 of the Finnish Trademarks Act, produced by the Finnish National Board of Patents and Registration, provides:
If an established trademark is liable to be confused with another registered or established trademark, but the proprietor of the earlier trademark has not subsequently taken steps to prevent use of the later trademark within a reasonable period of time, he shall no longer be entitled to prohibit the use of the later trademark.
The respondent, further alleges that there is an organisation named kesko in Turkey, and that there is a famous football player in US with the nickname Kesko.
6. Conclusions and findings
Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy lists three tests which a complainant must satisfy in order to succeed:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered in bad faith and is being used in bad faith.
In connection with the first test of paragraph 4(a)(i), the complainant must demonstrate that it has trademark rights, the Panel observes that the complainant’s registered trade mark rights are sparce.
As both parties to this dispute are Finnish companies, it is, in the Panel’s opinion, legitimate to refer to the law of Finland. Indeed, the respondent has referred the Panel to the Finnish Trademarks Act, as mentioned above.
Section 2, first paragraph, of the Finnish Trademarks Act, in the translation mentioned above, provides:
A sole right to a trademark may be acquired even without registration after the mark has become established..
Section 2, third paragraph, of the Finnish Trademarks Act defines what is meant by "established":
A trade symbol shall be regarded as established if it has become generally known in the appropriate business or consumer circles in Finland as a symbol specific to its proprietor’s goods.
The Panel is satisfied in this case that the evidence presented by the complainant as to the well known nature of its trade symbol KESKO is sufficient for the Panel to find that it has become "established" as a trade mark in Finland. The domain name at issue is simply the addition of the .com suffix to the word kesko. The Panel, consequently, finds that the complainant has satisfied the test of paragraph 4(a)(i) of the Uniform Domain Name Dispute Resolution Policy.
In connection with the second test of paragraph 4(a)(ii), the complainant has not licensed or otherwise permitted the respondent to use its trade mark or to apply for any domain incorporating its trade mark..
In connection with this test, paragraph 4(c) of the Uniform Domain Name Dispute Resolution Policy sets out guidance to respondents as to how they can demonstrate rights to and legitimate interests in a domain name, in the following circumstances:
(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Examination of the web site of the domain name at issue shows, in the Panel’s opinion, no circumstances in which the respondent could claim benefit of paragraph 4(c)(i).
No evidence has been presented to the Panel to lead to the conclusion that the respondent could claim benefit of paragraph 4(c)(ii).
In the Panel’s opinion, the use of the domain name at issue, as demonstrated by the complainant to be potentially fee-earning to the respondent, is sufficient to deny the respondent the benefit of paragraph 4(c)(iii).
The respondent argues that "kesko is so common Finnish word or a part of a word that anybody can not have better right to use it in Finland or worldwide". The Panel rejects this argument, and agrees with the complainant that kesko simpliciter is not a Finnish word. Consequently, in the Panel’s view, "kesko" is not a "freely occuring" word to adopt for a domain name, but the established trade mark of the complainant.
In the Panel’s opinion, the mark KESKO is so well established in Finland that it cannot reasonably be argued that the respondent, a Finnish company, could have been unaware of the trademark rights vested in the complainant when registering the domain name, and refers to the decision in case D2000-0102, Nokia Corporation v Nokiagirls.com a. k. a.. IBCC, in this connection.
Accordingly, the Panel finds that the complainant has satisfied the test of paragraph 4(a)(ii), that the respondent lacks rights or legitimate interest in respect of the domain name at issue.
The Panel does not regard the existence of an organisation called kesko in Turkey or the fact that it is the nickname of a famous US football player as being sufficient reason to override this finding.
It follows from the above that the Panel finds that the respondent registered the domain name at issue in bad faith.
Paragraph 4(a)(iii), however, requires that the domain name registration was not only effected in bad faith, but has also been used in bad faith. No evidence has been presented to the Panel to the effect that the respondent has attempted to profit from the sale of the domain name at issue, which, in previous cases, has usually resulted in a finding of use in bad faith.
Paragraph 4(b)(ii) of the Uniform Domain Name Dispute Resolution Policy, however, sets out circumstances in which both registration and use in bad faith can be proved to exist, namely that the domain name has been registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, providing that you have engaged in a pattern of such conduct.
Clearly, the effect of the respondent’s having registered the domain at issue denies it to the complainants, who could have a legitimate need for it.
The registration by the respondents of <pohjola.com>, with the same potentially fee- earning linkage as in the case of the domain name at issue is, in the Panel’s opinion sufficient for the conclusion that the respondent’s registration in bad faith of the domain name at issue is part of a pattern of such conduct, and justifies a finding that the complainants have also met the dual test of paragraph 4(a)(iii) of the Uniform Domain Name Dispute Resolution Policy.
The respondents drew the Panel’s attention to the provisions of Section 9 of the Finnish Trademarks Act. There are no equivalent "acquiescence" provisions in the Uniform Domain Name Dispute Resolution Policy. A similar issue was raised in case D2000-1838, Celine Dion and Sony Music Entertainment (Canada) Inc. v Jeff Burger. The Panel in this case agrees with the Panel in that case that such an issue does not override a finding of registration and use in bad faith.
The Panel finds that the complainant has satisfied the three tests of paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy, and, accordingly, requires that the domain name <kesko.com> be transferred to the complainant
George R. F. Souter
Dated: March 24, 2001