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WIPO Arbitration and
ADMINISTRATIVE PANEL DECISION
Exel Oyj v. KH Trading, Inc.
Case No. D2004-0433
1. The Parties
The Complainant is Exel Oyj, Mäntyharju, Finland, represented by Jukka
The Respondent is KH Trading, Inc., Boynton Beach, Florida, United States of
America. The Respondent is not represented in this proceeding.
2. The Domain Names and Registrar
The disputed domain name <nordicwalker.net> is registered with Network
Solutions, LLC. The disputed domain name <nordicwalker.org> is registered
with Go Daddy Software, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center")
on June 11, 2004.
On June 11, 2004, the Center transmitted by email to Network Solutions,
LLC. a request for registrar verification in connection with the domain names
<nordicwalker.org> and <nordicwalker.net>. On June 15, 2004,
Network Solutions, LLC. transmitted by email to the Center its verification
response confirming that with respect to <nordicwalker.net>, the Respondent
is listed as the registrant and providing the contact details for the administrative,
billing and technical contact. No confirmation was received with regard to the
domain name <nordicwalker.org>.
On June 18, 2004, the Center transmitted by email to Go Daddy Software,
Inc. a request for registrar verification in connection with the domain name
<nordicwalker.org>. On June 18, 2004, Go Daddy Software, Inc.
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 the notification by the Center that the Complaint was administratively
deficient - since Network Solutions, LLC. was not the registrar of the domain
name <nordicwalker.org> but Go Daddy Software, Inc. the Complainant filed
an amendment to the Complaint on June 22, 2004, by e-mail and on June 24, 2004,
in hardcopy. The Center verified that the Complaint together with the amendment
to the Complaint now 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
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 June 28, 2004.
The Panel is satisfied that the Complaint was sent to the Respondent as prescribed
in paragraph 4(a) of the Rules. In accordance with the Rules, paragraph 5(a),
the due date for Response was July 18, 2004. Since the Respondent
did not file a Response to the Complaint, on July 20, 2004, the Center
formally issued a Default Notification to the Respondent.
The Center appointed Madeleine De Cock Buning as the sole panelist in this
matter on July 28, 2004. 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,
4. Factual Background
The Complainant relies on the following trademark registrations, evidence of
which is provided in annexes 5a – f to the Complaint (the "Mark(s)"):
- NORDIC WALKER (figurative), registered under 197274 in Norway on April 30, 1999,
in class 28;
- NORDICWALKER (figurative), a Community Trademark registered under 987206
on March 17, 2000, in class 28;
- NORDIC WALKER (figurative), registered under 4519537 in Japan on November 2, 2001,
in class 28;
- NORDIC WALKER (figurative), registered under 556119 in Canada on January 8, 2002,
in class 28;
- NORDICWALKER (figurative), a Community Trademark registered under 2269413
on August 27, 2002, in class 25; and
- NORDIC WALKER (figurative), registered under 1073394 in Taiwan on December 1, 2003,
in class 28.
Moreover, the Complainant has invoked a number of trademark applications pending
in various countries, evidence of which is provided in annexes 5g – m to the
The domain names <nordicwalker.net> as well as <nordicwalker.org>
(the Domain names) were registered in the name of the Respondent on September 24, 1999,
and May 6, 2003, respectively. The Panel observes that <nordicwalker.org>
is automatically linked to <nordicwalker.net>, which directs to an active
website where nordicwalker walking poles are advertised. The website moreover
features the logo of the Complainant, Exel Oyj, which serves as a hyperlink
to the Complainant’s website <exel.net>. Visitors to the website are requested
to contact the Respondent for product information. However, when clicking on
the button "order", the text "ordering is temporarily closed"
5. Parties’ Contentions
Identical / confusingly similar domain name
The Complainant invokes its trademarks as listed above in paragraph 4 to contend
that the Domain names are identical to the Marks.
Absence of right / legitimate interest
The Complainant asserts that the Respondent lacks any legal right to the Domain
names, since the Respondent does not hold any trademark rights to either "nordicwalker"
or "nordic walker", nor do the Domain names relate to the Respondent’s
Furthermore, the Complainant points out that by virtue of the Purchase and
Retail Agreement (the "Agreement"), signed on May 30, 2000,
the Respondent had become Complaint’s retailer in the United States of America.
The Complainant relies on Article 4 of the Agreement to assert that the Respondent
thereby recognized the exclusive right to any symbols that the Complainant at
the time of conclusion of the contract had adopted or would consequently adopt
within the United States of America. Moreover, according to the Complainant,
in signing the Agreement, the Respondent undertook to assign to the Complainant
all registrations referencing "nordic walker" in Respondent’s name.
The Agreement ended in 2003, when the Complainant signed a distribution agreement
with a second party.
Registration and use in bad faith
The Complainant contends that by virtue of the Agreement, the Complainant endorsed
past and future domain name registrations with respect to the Marks in the name
of the Respondent. However, these registrations were subject to two conditions:
the subsequent assignment thereof to the Complainant as well as the limitation
of this right to the duration of the Agreement. Therefore, according to the
Complainant still, failure to assign the Domain names upon the termination of
the Agreement retroactively deprived the registration of its bona fide
character. Moreover, the Respondent is thus preventing the Complainant from
using its Marks as a domain name.
Furthermore, the Respondent has offered the transfer of the Domain names together
with product (advertising) materials to the Complainant for the amount of EUR 92,000, which
largely exceeds the sum of the registration costs and value of the product materials.
The Complainant also invokes email correspondence evidencing the Respondent’s
threat to transfer the Domain names to an unnamed third party willing to pay
the required amount.
The Domain names are currently still connected to an active website with information
about "nordicwalking" products as well as featuring the Exel logo
and a link to the Complainant’s website. The Complainant therefore alleges that
this use of the Domain names creates the incorrect impression that the Respondent
is either the exclusive distributor or a subsidiary of the Complainant or that
the Complainant approves of the use made of the Domain names. This is further
compounded by the absence of a disclaimer to this effect.
In addition, the website described above features the Respondent’s contact
details. This leads the Complainant to claim that the Respondent is using the
Domain names for the sole purpose of attempting to attract Internet users to
the Registrant’s website for financial gain by creating a likelihood of confusion
with the Marks.
The Respondent did not submit a Response to the Complainant’s contentions before
the Response due date of July 18, 2004.
6. Discussion and Findings
The Respondent was given notice of this proceeding in accordance with the Rules.
The Center discharged its responsibility under paragraph 2 (a) of the Rules
to employ reasonably available means calculated to achieve actual notice to
Respondent of the Complaint.
However, as previously indicated, the Respondent failed to file a reply to
the Complaint. The Panel finds that the Respondent has been given a fair opportunity
to present its case.
Pursuant to paragraph 15 (a) of the Rules, the Panel shall decide on the Complaint
on the basis of the statements and documents submitted and in accordance with
the Policy, the Rules and any rules and principles of law it deems applicable.
Moreover, in accordance with paragraph 14(b) of the Rules, the Panel may draw
such inferences as it considers appropriate from the Respondent’s failure to
reply to the Complainant’s assertions and evidence. In those circumstances,
the Panel’s decision may be based upon the Complainant’s assertions and evidence.
The Respondent’s default however does not automatically result in a decision
in favor of the Complainant. The Complainant must still prove the elements required
by paragraph 4 (a) of the Policy, which stipulates that in order to succeed
in this proceeding and obtain the transfer of the Domain names, the Complainant
must prove that each of the following elements are satisfied:
i. The Domain names are identical or confusingly similar to a trademark
or service mark in which the Complainant has rights (see below, section 6 A);
ii. The Respondent has no rights to or legitimate interest in the Domain
names (see below, section 6 B); and
iii. The Domain names have been registered and are used in bad faith (see
below, section 6 C).
A. Identical or Confusingly Similar
As stated above, paragraph 4 (a) of the Policy requires that the disputed domain
names are "identical or confusingly similar" to the Marks.
The disputed domain names are <nordicwalker.net> and <nordicwalker.org>.
The "nordicwalker" trademarks the Complainant relies on are listed
above under section 4. The Complainant has provided sufficient evidence of its
rights in the Marks, registered in a wide variety of countries and well known
in hiking circles. The Panel notes that the Marks concerned predominantly consist
of the word element "nordicwalker". Therefore, the Panel finds the
Domain names <nordicwalker.org> and <nordicwalker.net> to be confusingly
similar to the Marks. Accordingly, the Panel is satisfied that the Complainant
has met the first requirement of paragraph 4 (a) of the Policy.
B. Rights or Legitimate Interests
While the overall burden of proof is on the Complainant, the element of possible
rights or legitimate interest of the Respondent in the Domain names involves
the Complainant establishing matters which normally are within the knowledge
of the Respondent. It involves for the Complainant the often impossible task
of proving a negative. This should, as correctly stated in Julian Barnes
v. Old Barn Studios, WIPO Case No. D2001-0121,
be approached as follows: the Complainant makes its assertion and puts forward
the evidence it can muster in support (e.g. it has rights to the name, the Respondent
has no rights to the name of which it is aware). Unless the allegation is manifestly
misconceived, the Respondent has to demonstrate its rights to or legitimate
interests in the Domain name under paragraph 4 (c) of the Policy.
According to paragraph 4 (c) of the Policy, the following circumstances, if
proved, demonstrate the Respondent’s rights or legitimate interest in the Domain
(i) the Respondent used or demonstrably prepared to use the Domain names
or corresponding names in connection with a bona fide offering of goods
or services prior to notice of the dispute;
(ii) the Respondent (as an individual, business or other organization) has
been commonly known by the Domain name, even if it has not acquired trademark
(iii) The Respondent is making a legitimate non-commercial or fair use of
the Domain name, without intent for commercial gain to misleadingly divert consumers
or to tarnish the Complainant’s trademarks.
There is no apparent legitimate justification for the Respondent’s registration
and use of the Domain names which are confusingly similar to the Marks. As indicated
above, the Complainant has stated what it could to establish the absence of
any rights or legitimate interests in the Domain names on the part of the Respondent.
In these circumstances, where the Complainant had made a prima facie
case, it was up to the Respondent to negate those assertions by providing evidence
to the contrary. In the absence of a Response, the Panel in deciding on this
point, therefore relies on the Complainant’s assertions to this effect.
However, for the sake of completeness, the Panel notes the following. As will
be elaborated on below, under the heading "Registered and Used in Bad Faith",
in the absence of evidence to the contrary, the Panel finds that at least in
the period prior to the commencement of the present dispute, the Respondent
was not bona fide in offering goods on its website, thus precluding reference
to paragraph 4 (c) i of the Policy as any offering of goods on the website ceased
to be a bona fide offering once the distribution agreement had terminated.
Since the Respondent made commercial usage of the website connected to the Domain
name, reference to paragraph 4 (c) iii of the Policy is also precluded.
C. Registered and Used in Bad Faith
Paragraph 4 (a) iii requires the Complainant to prove that the Respondent registered
and has used the Domain names in bad faith. Paragraph 4 (b) of the Policy non-exhaustively
lists circumstances which, if found by the Panel to be present, constitute evidence
that the Respondent has registered and used the Domain names in bad faith:
(i) Circumstances indicating that the Respondent has registered or has acquired
the Domain names primarily for the purpose of selling, renting, or otherwise
transferring the registration of the Domain names to the Complainant who is
the owner of the trademark or service mark or to a competitor of the Complainant,
for valuable consideration in excess of its documented out-of-pocket costs directly
related to the Domain names; or
(ii) The Respondent has registered the Domain names in order to prevent
the owner of the trademark or service mark from reflecting the Marks in a corresponding
domain name, provided that the Respondent has engaged in a pattern of such conduct;
(iii) The Respondent has registered the Domain Names primarily for the purpose
of disrupting the business of a competitor; or
(iv) By using the Domain names, the Respondent has intentionally attempted
to attract, for commercial gain, Internet users to its website or other on-line
location, by creating a likelihood of confusion with the Complainant’s Marks
as to the source, sponsorship, affiliation or endorsement of its website or
location or of a product or service on its website or location.
In support of its claim that the Respondent has registered the Domain names
in bad faith, the Complainant relies on UVA Solar GmbH & Co K.G. v. Mads
Kragh, WIPO Case No. D2001-0373 where
the Panel was asked to decide on inter alia the following question: if
authority to register a domain name was given subject to certain terms and conditions,
did the subsequent breach of such conditions render what would otherwise have
been a bona fide registration negative? After careful deliberation of
the circumstances at hand, the Panel in that case answered the question in the
In this particular case, the Panel finds that even if the initial registration
was condoned by the Complainant, it was done so subject to two conditions, namely
the registration was limited to the duration of the Respondent’s status as Complainant’s
retailer, and required the subsequent transfer of the Domain names to the Complainant.
The Panel notes that the Respondent’s capacity as the Complainant’s retailer
had come to an end. Thus in the absence of a transfer of the Domain names to
the Complainant, the Respondent has failed to fulfill the first condition. The
Respondent’s non-fulfillment of the contractual term in relation to the return
of the Domain names may in the absence of a Response, be taken as a basis for
concluding that the registration lacks good faith. The fact that one of the
Domain names was registered before the distribution agreement between the Complainant
and the Respondent is not relevant since the Respondent agreed to terms in the
Agreement that foresaw the transfer of the Domain names at the end of the Agreement.
The Respondent, in failing to submit a Response, also failed to provide any
information as to any circumstances that may justify retaining ownership of
In support of its claim that the Respondent has used the Domain names in bad
faith, the Complainant relies inter alia on paragraph 4 (b) (i) of the
Policy. The Complainant has submitted e-mail correspondence between itself and
the Respondent in support of its allegation that the Respondent offered the
transfer of the Domain names for the amount of EUR92,000. The Panel considers
that the Complainant has sufficiently demonstrated that the offering of the
Domain names, albeit as part of a package, for the sum of EUR92,000 is manifestly
in excess of the out-of-pocket costs usually paid for the registration of domain
names. The Panel therefore finds the Respondent to have used the Domain names
in bad faith as stipulated under paragraph 4 (b) (i) of the Policy.
Moreover, with its status as the Complainant’s retailer terminated, the Respondent
lacks a legitimate purpose to retain (usage of) the Domain names. By having
an active website connect to the Domain names, the Respondent has intentionally
attempted to attract, for commercial gain, Internet users to its website which
features the Complainant’s logo and Marks. The Respondent has thus created a
likelihood of confusion as to the source of its website. Coupled with the request
that potential customers of the Complainant’s products direct their inquiries
to the Respondent, thereby creating the impression of endorsement by Complainant
of such usage of the Domain names, the Respondent has violated article 4 (b)
iv of the Policy.
Accordingly, the Panel finds that the Complainant has established that the
Respondent registered and is using the Domain names in bad faith pursuant to
paragraphs 4 (b) i and iv of the Policy.
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 <nordicwalker.net>
and <nordicwalker.org> be transferred to the Complainant.
Madeleine De Cock Buning
Dated: August 9, 2004