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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Stora Enso AB v. Holger Degen

Case No. D2008-1544

1. The Parties

The Complainant is Stora Enso AB, of Karlstad, Sweden, represented by Valea AB, Sweden.

The Respondent is Holger Degen, of Rossön, Sweden.

2. The Domain Names and Registrars

The disputed domain names <falurodfarg.biz>, <falurödfärg.com>, <falurödfärg.info> are registered with Cronon AG Berlin, Niederlassung Regensburg.

The disputed domain names <falurödfärg.biz>, <falurödfärg.net>, <falurödfärg.org> are registered with Active 24 ASA.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center“) on October 8, 2008. On October 10, 2008, the Center transmitted by email to Cronon AG Berlin, Niederlassung Regensburg, and to Active 24 ASA a request for registrar verification in connection with the disputed domain names. On November 3, 2008, Cronon AG Berlin, Niederlassung Regensburg, and on November 5, 2008, Active 24 ASA, Sweden, transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy“or “UDRP“), 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“).

A Response had been filed with the Center on October 14, 2008, before the commencement of the proceedings, after which the parties had some discussions on a possible settlement of the case. These discussions did not lead to a settlement. 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 December 1, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 21, 2008. Having received some additional emails from the Respondent, the Center acknowledged on December 5, 2008 receipt of the (previously filed) Response.

The Center appointed Knud Wallberg as the sole panelist in this matter on December 18, 2008. 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.

On November 21, 2008 the Center issued a notification to the Complainant and the Respondent concerning the language of the proceedings stating that:

The Complaint has been submitted in English. Pursuant to the Rules, Paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Administrative Panel (once appointed) to determine otherwise.

According to information we have received from the concerned registrar, the language of the registration agreement for the disputed domain names <falurodfarg.biz>, <falurödfärg.com> and <falurödfärg.info> is German, whereas the language of the registration agreement for the disputed domain names <falurödfärg.biz>, <falurödfärg.net> and < falurödfärg.org> is Swedish.

At the same time the Center invited the parties to submit their comments on and requests to this issue. After having received the Parties comments, the Center informed the parties in an e-mail of December 1, 2008 that the Center had decided to accept the Complaint in the English Language and commence the proceeding, accept a Response in either the German or the English language, appoint a Panel familiar with both languages mentioned above, if available, and allow the Panel (when appointed) to make the decision as to the correct language of the proceeding.

Language of the Proceedings

Paragraph 11 of the Rules reads:

(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

(b) The Panel may order that any documents submitted in languages other than the language of the administrative proceeding be accompanied by a translation in whole or in part into the language of the administrative proceeding.

The issue of language has been subject to a number of decisions made by UDRP Panels and as stated in Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679: “The spirit of Paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfortability with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors.“

In the present case, it is without question that the registration agreements for the disputed domain names were made in German and Swedish respectively. However, it is also apparent from the written communications exchanged between the parties during the proceedings, including the communication with respect to a possible voluntary transfer of the disputed domain names that both parties fully understand and can communicate in Swedish. It is also apparent from the Response and from the additional communication during the proceedings that the Respondent has no difficulties in understanding the English language. At the same time the Panel notes that although the Complainant requests that the language of the proceedings be English they have not specifically objected to the Response being filed in German. Further there is no indication that Complainant has not fully understood the facts and arguments put forward by the Respondent in the German language.

Therefore, in consideration of the above circumstances and in the interest of fairness to both parties, the Panel hereby decides, under Paragraph 11 of the Rules, to (i) accept the Complaint in the English language, (ii) accept the Response in the German language and (iii) to issue the Decision in the English language.

4. Factual Background

The Complainant is a Swedish based company and is the owner of the company Stora Kopparbergs Bergslags AB who has manufactured the FALU RГ–DFГ„RG pigment since the mid-1500s- and the FALU RГ–DFГ„RG paint since 1764. This paint is sold by retailers worldwide including in particular in Sweden and Germany.

Stora Kopparbergs Bergslags AB is the holder of the registered wordmark FALU RГ–DFГ„RG in Sweden. The mark was registered in 1977 for goods in class 2. Stora Kopparbergs Bergslags AB is also the holder of registrations of a devicemark FALU RГ–DFГ„RG in Sweden, Germany, Canada and the European Union.

The Complainant holds several domain names incorporating the trademark including <falurodfarg.com>.

The Respondent is a natural person located in Rossön, Sweden who operates a webshop under the disputed domain names and on e-bay called “Schwedenkonsum Online Marketing” with a registered address in Berlin, Germany. The Respondent sells the products of the Complainant through this webshop.

5. Parties’ Contentions

A. Complainant

The disputed domain names are identical to Complainants trademark FALU RГ–DFГ„RG, as the trademark is incorporated in full in the domain names.

The Respondent, who is not commonly known by the disputed domain names nor has any rights to the name FALU RГ–DFГ„RG, has not been authorized by the Complainant to use the trademark FALU RГ–DFГ„RG in any way including as domain name. Using the domain names incorporating the ComplainantВґs trademark to divert traffic to the Respondents website on which it is marketing and promoting FALU RГ–DFГ„RG paint is neither bona fide, nor legitimate noncommercial nor fair use of the disputed domain names.

The disputed domain names have been registered by the Respondent with full knowledge of the Complainant’s rights in the mark FALU RÖDFÄRG. Further, the domain names have been registered and are being used by the Respondent for commercial purposes and by using the Complainant’s trademark as domain names and using the same marks on the webpage the Respondent is misleading the Internet users by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship affiliation or endorsement of the website. Furthermore there are indications that the Respondent has registered the disputed domain names with the intention to sell or otherwise transfer the disputed domain names for a price high over the out-of-pocket costs directly related to the domain name or with the intention to create a business relationship with the Complainant for commercial gain.

B. Respondent

The Respondent rebuts the allegations put forward by the Complainant.

The domain names were thus registered and are being used in good faith for a webshop through which he sells FALU RГ–DFГ„RG products to the German market.

In view of the Respondent FALU RÖDFÄRG is a generic term designating a specific colour which according to the Respondent is sometimes also referred to as “schwedenrot”, “Falunrot” “or “Faluner Rot” in Germany. Before registering the domain names the Respondent checked the Community trademark Register of OHIM from which it appeared that Stora Kopparbergs Bergslags AB is the holder of a figurative registration of the mark FALU RÖDFÄRG but that an application for the word mark FALU RÖDFÄRG had been withdrawn allegedly because of lack of distinctiveness. The Respondent therefore alleges that the Complainant does not have any rights to the term FALU RÖDFÄRG in Germany. To register and use such a term as domain names for a website offering exactly such goods is therefore a legitimate use under the Community trademark law as well as under German trademark law. This also follows from the principle of exhaustion in section 24 of the German Trademark Act.

The Respondent further rebuts the allegation that the domain names were registered with the intention to sell them to the Complainant or otherwise use them to get the Complainant to enter into some kind of business relationship with the Respondent. In this regard the Respondent registered the disputed domain names containing the letters “ä” and “ö” because these letters are also understandable in Germany and because the domain names were intended to be used for activities directed against the German market. The Respondent has never had the intention to disrupt the business of the Complainant and the offer to transfer the domain names to the Complainant that was put forward during the correspondence between the parties prior to these proceedings was only a bona fide attempt to solve the dispute raised by the Complainant.

6. Discussion and Findings

According to paragraph 15(a) of the Rules the panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:

(1) 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

(2) that the respondent has no legitimate interests in respects of the domain name; and

(3) that the domain name has been registered and used in bad faith.

A. Identical or Confusingly Similar

The disputed domain names contain the Complainant’s trademark FALU RÖDFÄRG in full, with the addition of the non-distinctive top-level designations “.biz,““.com“, “.info,” “.net” and “.org“. For the purpose of these proceedings the disputed domain name must be considered identical to the Complainants trademark.

In respect of the Respondent’s contention that the Respondent’s business under the contested domain names is aimed at the German speaking market only and that the Complainant has no trademark registration of the word mark with effect in Germany, the Panel notes that use of the Internet is not confined by territorial boundaries and that for purposes of the fist element of the Policy, the Complainant is required to establish trademark rights in at least one jurisdiction. In addition the Respondent is domiciled in Sweden where the Complainant undisputedly has rights in the mark FALU RÖDFÄRG as such, see further below under paragraph 6 B.

The prerequisites in the Policy, paragraph 4(a)(i) are therefore fulfilled.

B. Rights or Legitimate Interests

According to the Complaint, the Complainant has not licensed or otherwise permitted Respondent to use its trademark or to apply for any domain name incorporating the mark. Under these circumstances the burden of proof of rights or legitimate interest must lie with the Respondent.

The Respondent claims that FALU RÖDFÄRG is a generic term designating a specific colour, which is sometimes also referred to as “Schwedenrot“, “Falunrot” or “Faluner Rot” in Germany, and that the registration and use of such a term as domain names for a website offering exactly such goods is a legitimate use under the Community trademark law as well as under German trademark law. The Respondent has, however, not furnished any evidence to support the allegation that the name FALU RÖDFÄRG as such will be perceived as a generic term in Germany, and given the differences between Swedish and German there is no presumption that this is actually the case. This is underlined by the fact that the Respondent himself does not use “falu rödfärg” as a descriptive term but as a name for those specific products sold though the webshop, which originate from the Complainant.

In addition, as already noted above under paragraph 6 A, use of the Internet in general is not confined by territorial boundaries and corresponding jurisdictions, which is even more so when using domain names are registered under any of the gTLDs. So although the Respondent’s claim may find some support in the fact that on the website, for which the contested domain names are used, Respondent offers goods bearing this designation that appears to be specifically aimed at the German market, both the Complainant and the Respondent are domiciled in Sweden just as the commercial origin of the products and services are indicated on the Respondent’s website to be Swedish as the following quotation shows: “In unserem inzwischen gut besuchten Shop erhältst Du nur Qualitätsfarben tillverkad i Sverige mit originaler Beschriftung und Herkunftsgarantie. Bei uns kann man nicht alles kaufen, aber was Du bei uns findest, ist von höchster Qualität sowie trendig oder klassisch zugleich. Wir sind die schwedische Farben-Boutique mit Discountpreisen!” The Panel therefore takes the view that the Decision must be based on, inter alia, the rules of law applicable to the Swedish market, as being a part of the European Union.

Since the Complainant has rights in the wordmark FALU RГ–DFГ„RG in Sweden, in the present circumstances, the Respondent cannot use the claim that FALU RГ–DFГ„RG is a generic term as defense under the Policy, paragraph 4(a)(ii), cf. 4(c).

The fact that the Respondent sells products originating from the Complainant on the website makes it relevant to consider whether this can be legitimate or fair use of the Complainant’s mark. In the view of this Panel, it is a recognized principle of European trademark law that an agent or reseller that is engaged in the legitimate sale and distribution of trademarked goods does not per se have any rights to register the said trademark as its trademark, business name or domain name without explicit consent of the trademark owner, cf. the principles of Article 6 septies of the Paris Convention. Even if Respondent was engaged in legitimate although not specifically authorized sales of Complainants products, and thus might, under certain circumstances, have a legitimate interest in and rights to use the trademark for promoting these goods, this does not, in this Panel’s view, establish such rights or legitimate interest for the purpose of these proceedings that may legitimize registration of the disputed domain names. The Panel explicitly notes that the principle of exhaustion under German and European trademark law cannot legitimate the registration and use of the disputed domain names either.

The Panel has reviewed quite a number of UDRP decisions on this issue, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, section 2.3, such as Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095, Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079, DaimlerChrysler A.G. v. Donald Drummonds, WIPO Case No. D2001-0160, Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946, and Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481. The Panel would like to note that even if it was to endorse the view expressed in, e.g., the Oki Data decision, the Oki Data test would not be applicable in the present matter since the Respondent, among other things, does not only offer the trademarked goods but also other paint. Moreover, unlike in Oki Data, the Respondent is not an authorized dealer of Complainant’s products.

Respondent’s registration and use of the disputed domain names indicates its lack of rights or legitimate interests therein, and consequently the prerequisites in the Policy, paragraph 4(a)(ii), cf. 4(c) are also considered fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy further provides registration and use in bad faith. Paragraph 4(b) regulates, by way of example, the kind of evidence that is required.

Complainant’s trademark FALU RÖDFÄRG must be considered to be a well known trademark in Sweden a fact that is not disputed by the Respondent. It is also clear that Respondent was fully aware of the Complainant and of the Complainant´s mark albeit he contests that the Complainant holds trademark rights to the name FALU RÖDFÄRG when he registered the domain names and that the domain names are actively used.

The disputed domain names’ corresponding websites have a very professional appearance which is capable of giving the visitor the impression that it is an official website or at least a website that is endorsed by the Complainant. The headline is “Wilkommen im Falu Rödfärg Shop” and the registered logo of the Complainant has a predominant position on the website both on the front page and on the underlying pages. It is also evident that the use of the name FALU RÖDFÄRG refers to the specific paints manufactured by the Complainant. At the bottom of the front page the following wording can be read: “Um Verwechslungen vorzubeugen: wir verstehen uns als Onlinehandel für den deutsch- sprachigen Raum und verkaufen unter anderem die Produkte der Bildmarkeninhaberin Stora Enso, dem skandinavischen Mischkonzern“. Given that the domain names are identical to the Complainants trademark and given the above mentioned content of the website the Panel do however find that this “disclaimer” does not serve the purpose of removing the impression that the Respondent is somehow affiliated to or that Respondents activities are somehow endorsed or permitted by the Complainant.

The Panel notes in this respect that the disputed domain names are in effect identical to the domain name of the corresponding official website of the Complainant at “www.falurodfarg.com“. By registering the identical domain name under the gTLD .biz and by registering the internationalised versions of Complainants trademark and domain name in the 5 principal generic top level domains, Respondent has gone well beyond any potential legitimate good faith use and has instead cornered the market for use of this specific domain name.

The Panel therefore finds that the Respondent by registering and using the domain name intentionally creates a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the domain name in dispute with the purpose of attracting Internet users to the website for commercial gain.

The Panel declines to conclude on the question of whether the disputed domain names were registered by the Respondent with the intention to sell them to the Complainant or otherwise use them to get the Complainant to enter into some kind of business relationship with the Respondent.

Bearing these facts and the facts mentioned above under paragraphs 6 A and 6 B in mind, the Panel finds that the disputed domain names have been registered and are being used in bad faith, cf. paragraph 4(a)iii and 4(b) of the Policy.

Consequently, all the prerequisites for cancellation or transfer of the disputed domain names according to paragraph 4(a) of the Policy are fulfilled.

The Complainant has requested transfer of the disputed domain names.

7. Decision

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, <falurodfarg.biz>, <falurödfärg.com> <falurödfärg.info>, <falurödfärg.biz>,<falurödfärg.net> and <falurödfärg.org> be transferred to the Complainant.

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Knud Wallberg
Sole Panelist

Dated: January 8, 2009