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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Designor OY AB v Bamse Enterprises
Case No. D2001-0643
1. The Parties
Complainant is Designor OY AB, Hämeentie 135, FIN-00561 Helsinki, Finland represented by Kristiina Harenko, Attorneys at law Bornenius & Kemppinen Ltd., Yrjönkatu 13 A, FIN-00120 Helsinki, Finland, hereinafter the "Complainant".
Respondent is Bamse Enterprises, Box 154, Svedala, 23331 Sweden, hereinafter the "Respondent".
2. Domain Name and Registrar
The domain name in dispute is <iittala.com>.
The registrar for the disputed domain names is Network Solutions Inc., 505 Huntmar Park Drive Herndon, VA 20170 USA.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
(a) Complainant initiated the proceeding by the filing of a complaint via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on May 11, 2001, and by courier mail, received by WIPO on May 14, 2001. On May 15, 2001, WIPO transmitted a Request for Registrar Verification to the registrar, with the Registrar’s Response received by WIPO on May 16, 2001.
(b) On May 17 and 18, 2001, WIPO transmitted Notification of the Complaint and Commencement of the proceeding to Respondent via e-mail and courier mail.
(c) On May 17, 2001, an email was received by the WIPO Center for the email address of the Respondent, saying "The following addresses had permanent fatal errors email@example.com". On the same date, an email was received by the WIPO Center for the email address of the Respondent, saying "The following addresses had transient non-fatal errors firstname.lastname@example.org".
(d) On May 25, 2001 the Notification of the Complaint, which was sent by courier mail, was returned to WIPO. The envelope was marked "unknown". Having reviewed the communications records in the case file, the Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2 (a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
(e) Having received no response from the Respondent within the specified time in the Notification of Complaint, on June 8, 2001, the WIPO Center issued to both parties a Notification of Respondent’s Default.
(f) On June 15, 2001, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On June 19, 2001 the undersigned transmitted by fax the executed Statement and Declaration to WIPO.
(g) On June 25, 2001, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. The same date WIPO notified that the Projected Decision Date would be July 8, 2001.
The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.
4. Factual Background
The Complainant asserted, and provided evidence in support of, and the Panel finds established, the following facts.
4.1 Complainant’s activities
The Complainant, Designor Oy Ab, belongs to Hackman Group and was registered on July 25, 1980 under the earlier Company name Oy Finncrown. The Complainant is specialized in designing, manufacturing, producing, marketing and selling housewares of high quality design in Finland as well as in other countries. The net sales revenue of the Complainant in 2000 was 132.1 million Euros.
4.2 Complainant’s Trading Name and Trademarks
The Complainant’s brand IITTALA is a well-known brand in the Nordic Countries and is known in other countries as well. The Complainant is the proprietor of 13 registrations of trademarks containing the word IITTALA. The trademark has been registered in more than 20 countries, such as Finland, Sweden, Denmark, Norway, Great Britain, Italy, France, EU, Japan, Canada and USA. The various trademark registrations cover the trademark classes (nice classification) 8, 14 and 21, and reference is made to annex 2 and 3 to the Complaint. The trademark registrations cover different kinds of household or kitchen utensils.
4.3 Complainant’s Domain names and Web Sites
The Complainant is marketing IITTALA products on the www.designor.com web site jointly with products under the other Designor brands.
The Complaint is a registrant of the domain name <iittala.net> and the country code top level domain name <iittala.fi>.
4.4 Respondent’s Identity and activities
The Respondent registered the domain name <iittala.com> on October 17, 1997.
Prior to issuing the Complaint, the Complainant made efforts to identify and contact the Respondent, using the details in the Registrars registry. It was then disclosed that the post box address was false and the telephone number belonged to a person, which had no connection to the Respondent. Complainant successfully sent one email, dated December 28, 2000, to Respondent. The Respondent did not reply to this email. The Complainant sent a new message on May 9, 2001, but requested action was not taken due to the fact that the user account was inactive.
5. Parties’ Contentions
The Complainant claims that the relevant part of the domain name IITTALA is identical to the various trademarks for the word IITTALA, which are registered and owned by the Complainant.
The Respondent has no legitimate interest in the domain name. The word IITTALA is an invented word, and as such, no trader would legitimately choose to use it unless seeking to create an impression of an association with the Complainant.
The web site iittala.com is inactive. A passive holding of a domain name can also constitute a use in bad faith. Reference is made to WIPO. Decision Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003.
The Respondents inactivity constitutes a use in bad faith of the domain name, and reference is made to the following circumstances:
The Complainant’s trademark has a strong reputation and is widely known.
The Respondent does not have any actual or contemplated good faith use of the domain name.
The Respondent has taken active steps to conceal its true identity by operating under a name that is not a registered business name.
The Respondent actively provided false contact details, in breach of its registration agreement.
Taking into account all of the above, it has not been possible to conceive any plausible active use of the domain name that would not be illegitimate, such as passing off an infringement to consumer protection legislation or an infringement to the Complainant’s rights under trade mark law.
The Respondent did not file a Response to the Complaint.
6. Discussion 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. The Complainant must satisfy that:
(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 such domain name; and
(iii) The domain name has been registered in bad faith and is being used in bad faith.
A. Identical or confusingly similar to a trademark or a service mark
The Complainant has trademark rights in the name IITTALA.
The relevant part of this domain name is "iittala". The Panel finds that this part of the domain name is identical to the dominating element, the word IITTALA, in Complainant’s numerous trademark registrations of figure marks. Hence, the Panel finds that the domain name is confusingly similar to Complainant’s trademark registrations.
B. Legitimate interest
The Respondent has not provided evidence of circumstances of the type specified in paragraph 4 c) of the Uniform Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for, or use, any domain name incorporating any of those marks. The word "iittala" appears to be an invented word, and as such is not one trader would legitimately choose unless seeking to create an impression of an association with the Complaint. Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the domain name.
C. Registration and use in bad faith
The first question is whether the Complainant has proved that the domain name "has been registered in bad faith".
The Panel finds that the Respondent does not conduct any legitimate commercial or non-commercial business activity. The Panel finds that the Respondent has taken deliberate steps to ensure that its true identity cannot be determined and communication can not be made. Given the Complainants numerous trademark registrations and its wide reputation connected with the word iittala, it is hard to conceive that the Respondent could legitimately use the domain name <iittala.com>. It is also hard to conceive that the Respondent, which is Swedish, could have been unaware of the Complainant’s rights at the time of registration. Therefore, the Panel concludes that the domain name has been registered in bad faith.
The next question is whether the domain name "is being used in bad faith".
First the Panel will, with reference to Case No. D2000-0003, state that the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all circumstances of the case, it can be said that the Respondent is acting in bad faith.
The domain name <iittala.com> does not lead to a web site. There is no evidence that a web site or other on-line presence is in the process of being established which will use the domain name. There is no evidence of advertising, promotion or display to the public of the domain name. Furthermore, there is no evidence that the Respondent has offered to sell, rent or otherwise transfer the domain name to the Complainant, a competitor of the Complainant, or any other person. This Panel does not know of any positive action being undertaken by the Respondent in relation to the domain name. There is, however, several other circumstances which proves that the domain name is being used in bad faith. The particular circumstances which lead to the conclusion of use in bad faith are:
- The Complainant’s trademark has a strong reputation and is widely known in a number of countries, and especially in the Nordic Countries.
- The Respondent does not have any actual or contemplated good faith use of the domain name. The Panel points out in this connection that the word "iittala" is an invented word by the Complainant.
- The Respondent has taken active steps to conceal its true identity by operating under a name that is not a registered business name. Furthermore the Respondent actively provided false contact details, in breach of its registration agreement. Reference is made to the Complaint and to subsection 4.4 above.
The Panel decides that the Complainant has proven each of the three elements in paragraph 4(a) of the Uniform Policy. Accordingly, the Panel requires that the domain name <iittala.com> be transferred to the Complainant.
Peter G. Nitter
Dated: July 6, 2001