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and Mediation Center
Oriola Oy and Kronans Droghandel AB v. Yes / Mr. Mustonen
Case No. D2006-0447
1. The Parties
The Complainant is Oriola Oy, Espoo, Finland, and Kronans Droghandel AB, Mцlnlycke, Sweden, represented by HH Partners, Attorneys at Law, Ltd., Finland.
The Respondent is Yes / Mr. Mustonen, Myllyoja, Heinola, Finland.
2. The Domain Name and Registrar
The disputed domain name <oriola-kd.com> is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2006. The Center verified that 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 April 26, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 16, 2006. The Response was filed with the Center on May 16, 2006.
The Center appointed George R. F. Souter as the sole
panelist in this matter on May 19, 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
Oriola Oy is a limited liability company, established in Finland in 1948. The co-Complainant, Kronans Droghandel AB, is a limited liability company, registered in Sweden. Both companies are owned by Orion Corporation, a Finnish company listed on the Helsinki Stock Exchange.
On October 10, 2005, Orion Corporation announced to the Stock Exchange that it planned to demerge into two separate companies, one of which would be Oriola-KD Corporation. This announcement was widely reported in the Nordic media, and there have been numerous entries relating to this merger on the Internet since then.
“ORIOLA” is not protected as a registered trade mark.
Kronans Droghandel have two trademark registrations, in Sweden, of KD, Nos.
323007 and 326365, and a European Community trademark registration, No. 379677,
in Classes 5 and 39.
5. Parties’ Contentions
The Complainants contend that: “Oriola’s market share of pharmaceutical wholesale in Finland is 40% and that KD’s market share in Sweden is 48%”, and that: “Their daily deliveries and services cover all areas of the healthcare sector: hospitals, pharmacies, research centres and laboratories, dental care and veterinary. Companies engaged in the natural and health product business and the daily consumer goods business are also Oriola’s customers”.
The Complainants contend that Oriola is registered as a company name, “and enjoys thereby, by virtue of the Finnish Act on Company Names, the same protection as a trademark”. They additionally contend that: “In addition to this protection, the word Oriola also enjoys protection due to the long lasting establishment in the pharmaceutical sector (Trademark Classes 5 and 39). Considering the above referenced market shares that the companies have in their respective home jurisdictions (Oriola 40%, and KD 48%), there can be no doubt about the fact that both trademarks are well established for the Complainant companies, as the specific symbols for the services they offer.”
The Complainants allege that the fact that they, individually
owned trademark rights prior to the announcement of the merger, gives them:
“time priority before the domain name <oriola-kd.com>”. They
further allege that: “the domain name <oriola-kd.com> must be regarded
as confusingly similar to the Trademarks ORIOLA and KD in which the Complainants
have rights”. They drew the Panel’s attention to two cases in which,
in a “merger scenario”, a domain name combining two “pre-merger”
trademarks resulted in legitimate trademark rights to a “combined trademark”
being acknowledged, seeMedicalLogic/Medscape, Inc v. The Domain Name You
have Never Entered Is For Sale, case NAF FA0094933, and PharmaciaUpjohn
AB v. Sol Meyer, WIPO Case No. D2000-0785.
The Complainants deny that the Respondent has rights or legitimate interests in respect of the domain name at issue, and have referred to the explanation given by the Respondent as to his choice of domain name (essentially, see below under “B Respondent”).
The Complainants allege that the domain name at issue
was registered and has been used in bad faith, and cite the decision in Telstra
Corporation Limited v. Nuclear Marshmallows, WIPO
Case No. D2000-0003. In this connection reference has also been made to
the decision in PharmaciaUpjohn AB v. Sol Meyer, WIPO
Case No. D2000-0785.
The Complainants allege that the circumstances in
connection with the domain name at issue are similar to the circumstances in
WIPO Case No. D2000-0785, in that in this
case the domain name at issue was registered a day following the official announcement
of the merger plan.
The Complainants request that the domain name at issue be transferred to themselves jointly.
The Respondent exercised his right to reply. In this reply, he alleged that the domain name at issue “is gathered from many different names”, namely:
“a stallion called Olavi and owned by K. Dekerman where stallion in Finnish is ori.”
No further explanation as to the reason for the choice
of any of these “provenance” words was given.
6. Discussion and Findings
For the Complainants to succeed, the Panel must, under paragraph 4(a) of Policy, be satisfied:
(i) that the 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 domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
(i). Identical or Confusingly Similar
The difficulty in this decision is the fact that ORIOLA is not registered as a trade mark,
but rather a trade name. This matter was also addressed in 01059 GmbH v.
VARTEX Media Marketing GmbH/Stefan Heisig, WIPO
Case No. D2004-0541. In that case, the panel stated:
“The Policy states that the domain name in question must be “identical or confusingly similar to a trademark or service mark in which the Complainant has rights”.
It is the clear language of the Policy that this administrative proceeding does only apply to disputes involving trademarks or service marks, but does not offer relief to holders of trade names, company names or other commercial designations. As a result, in the event of abuse, holders of these rights are required to defend their legal rights through national judicial systems. (See The Recognition of Rights and the Use of Names in the Internet Domain Name System, Report of the Second WIPO Internet Domain Name Process, September 3, 2001, “http://wipo2.wipo.int, at 138”, in the following “Final Report at 21 et seq. and 138.
Therefore the Panel finds that the Complainant has not discharged his burden of proof to show it has trademark rights in the disputed domain name <01059.com>.”
The Panel in the present case decides that he will follow the panel in the above-quoted WIPO Case No. D2004-0541, in rejecting a claim based only on the ownership of a trade name, in so far as the Complainants’ contention that a Finnish company name, by virtue of the Finnish Company Names Act, enjoys the same protection as a trademark is concerned; as he regards that contention, per se, to be one more properly for the appropriate Finnish courts to decide. No decisions of the Finnish courts on this matter were cited to the Panel.
It is, however, generally accepted that: “The name under which a company trades will almost always be a trade mark (or if the business provides services, a service mark, or both)” (Kerly’s Law of Trade Marks and Trade Names, 14th Edition, Sweet & Maxwell, 2005, at 498). The Complainants allege that Oriola Oy has 40% of the pharmaceutical market in Finland. A cursory check of the Finnish trademark register shows that Oriola Oy are the proprietor of 65 Finnish trademark registrations in the pharmaceutical field.
The distributors who acquire their pharmaceutical trademarks from Oriola Oy for onward sale to the ultimate user, are, with Oriola Oy, in the stream of commerce of the pharmaceutical products concerned. For them, Oriola Oy is the source of the products, to be passed on by them to the ultimate end-users. This, in the Panel’s view, in view of the scale of the activity and its accumulated goodwill, is sufficient trademark use for him to decide that Oriola Oy have protectable trademark rights to the trademark Oriola, which he, consequently, does.
There is no question as to the ownership of trademark rights to the sign KD by Oriola Oy’s co-Complainant.
In the Panel’s view, the logic of the panel in the above-cited MedicalLogic/Medscape, Inc v. The Domain Name You have Never Entered Is For Sale case, to the effect that: “prior to the merger, Medical Logic and Medscape each individually owned their trademarks. The merger does not alter their rights to their marks. The combined mark is unusual and distinctive and the Complainant has exclusive rights to the combined mark”, is compelling. The fact that the merger in this case has not yet taken place is, in the Panel’s opinion, balanced by the facts that the progress of the merger is in the hands of the parent company of both co-Complainants, and the fact that the owners of the two components of the “combined mark” are co-Complainants. The Panel, accordingly, finds that the Complainants have the “threshold” trademark rights in both ORIOLA and KD necessary to succeed under Paragraph 4(a)(i) of the Policy.
In the Panel’s decision, therefore, the Complainants are entitled to succeed under the provisions of paragraph 4(a)(i) of the Policy, as “oriola-kd” and a combination of Oriola and KD are, in his view, clearly confusingly similar, it being overwhelmingly clear from previous decisions that the “.com” element of a domain name at issue is to be disregarded in the comparison process.
(ii). Rights or Legitimate Interests
The Complainants have made a prima facie showing that the Respondent lacks
rights or legitimate interests to the disputed domain name. In the Panel’s
view, the (Finnish) Respondent has failed to demonstrate that he has rights
or legitimate interests in the domain name at issue. In view of the fact that
his domain name registration took place only the day following what was a major
Finnish Stock Exchange announcement, widely reported by the media, as to the
Orion (in Finland, an iconic name, similar to Nokia – see Nokia Corporation
v. Nokiagirls.com a.k.a. IBCC, WIPO Case
No. D2000-0102) “merger”, his explanation as to the independent
provenance of the domain name at issue is, with respect, not sufficient for
him to succeed.
(iii). Registered and Used in Bad Faith
The Panel is of the view that the decisions in both Telstra Corporation
Limited v. Nuclear Marshmallows, WIPO
Case No. D2000-0003 and PharmaciaUpjohn AB v. Sol Meyer, WIPO
Case No. D2000-0785, see below, are, in the circumstances of this case,
to be followed. The Complainants have succeeded under paragraph 4(a)(iii) of
“Having concluded under the previous heading that the Respondent knew when he registered the domain name that it was a combination of well known names owned by third parties, being names in which he has no right or legitimate interest, it is not difficult for the Panel to find and the Panel does find in fact that the Respondent registered the Domain Name in bad faith.
This leaves the question of “use in bad faith” in circumstances when, in ordinary parlance, the Respondent is making no use of the Domain Name of any kind.
The fact that the Domain Name was registered on the very day that news was first published of the merger talks between the Complainant and Monsanto Company leads the Panel irresistibly to the conclusion that it was an opportunist act by an alert entrepreneur with a view to making a profit.
Accordingly, the Panel finds that the circumstances
set out in paragraph 4(b)(i) of the Policy are present. If the Respondent has
not already made a demand for a sum in excess of his documented out of pocket
costs directly related to the Domain Name, he will at some stage do so. The
Panel is of the view that maintaining a registration for that purpose is use
in bad faith”.
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 <oriola-kd.com> be transferred to the Complainants.
George R. F. Souter
Dated: June 2, 2006