WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
City of Hamina v. Paragon International Projects Ltd.
Case No. D2001-0001
1. The Parties
The Complainant is City of Hamina, a legal person under public law, incorporated under the laws of Finland, Raatihuoneenkatu 1, FIN-49400 Hamina, Finland.
The Respondent is Paragon International Projects Ltd., Trafford House, Trafford Street, Chester, Cheshire CH1 3HP, United Kingdom.
2. The Domain Name
The domain name at issue is "portofhamina.com", registered with Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, VA 20170, United States.
3. Procedural History
A complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on January 2, 2001, and was there received in hardcopy form on January 5, 2001. Payment of the administration fee was made by bank transfer on January 2, 2001, and duly received. The Center correctly verified that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Uniform Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy and the WIPO Center Supplemental Rules for Uniform Domain Name Dispute Resolution Policy. The WIPO Center acknowledged receipt of the Complaint on January 9, 2001. Request for Registrar Verification was issued on January 11, 2001, and the Response by the Network Solutions, Inc. was received on January 16, 2001. After appropriate Formal Compliance Review and an ensuing e-mail communication from the WIPO Center on January 22, 2001, to the Complainant, with a copy to the Respondent, the Complainant submitted on January 29, 2001 to the Center, by e-mail (hard copy received on January 31, 2001), an amendment to the Complaint, evidenced to have been transmitted to the Respondent on the same day. The Complaint was properly notified to the Respondent on January 31, 2001, and its response was received by e-mail on February 16, 2001. After an intermediate e-mail communication to the WIPO Center from the Complainant on February 23, receipt of the Response was acknowledged by the Respondent on February 26, 2001.
The Complainant chose to have the dispute decided by a single member Administrative Panel. The Respondent has not elected that a three member panel decide the case. Founded on a Statement of Acceptance and Declaration of Impartiality and Independence dated February 27, 2001, the Administrative Panel was properly constituted on February 28, 2001, the formal date of commencement of this administrative proceeding. There have been no further submissions. The date scheduled for the issuance of the Panel’s decision is March 13, 2001.
4. Factual background
The port of Hamina is run by the port authority of the City of Hamina, Finland. The authority works under the name of Port of Hamina as an administrative entity of the City, Complainant in this case and presenting itself as the owner of any port authority’s rights related to the complaint. There is also a body corporate, registered under the name of Port of Hamina Ltd./Haminan Satama Oy, for the City of Hamina.
The Respondent has not brought any material to bear evidence of its statements. However, in its response, reference was made the WIPO Case No. D2001-0002, Port of Helsinki vs. Paragon International Projects Ltd., dated February 12, 2001.
5. Parties’ Contentions (summary)
The complaint is based on the assertion that the name Port of Hamina is a trademark widely used over considerable time nationally and internationally in connection with port services by the City of Hamina/Port of Hamina, the City being the owner of an unregistered trademark right to the name of Port of Hamina, based upon Section 2 of the Finnish Trademarks Act, according to which an exclusive right to a trademark may be acquired even without registration "after the mark has become established" (quotation from Annex 5 to the complaint). It is common practice that ports are called "Port of the name of the location". The name Port of Hamina is the only possible name for the port of the City of Hamina. Whoever wishes to obtain information related to the Port of Hamina will, consequently, as a matter of cause, look up the domain name "portofhamina.com". Any rights to a unique geographical name should be regarded to belong to the owner of the geographical area in question. The top domain name "portofhamina.fi" has been assigned to the port authority of the City of Hamina, which mirrors the conviction of the issuing authority in Finland, its Telecommunications Administration Centre, that the name Port of Hamina is an established trademark of the City of Hamina. Also, the trademark is widely used for letterheads, brochures, advertisements etc., referring to a port with a yearly turnover of FIM 60 million, visited by approximately 1,200 ships a year with over 55,000 containers passing through. The domain name and the trademark are identical.
The Respondent has not acquired any rights or legitimate interests to the domain name. No right of use to the trademark has been licensed to it and claimant has no business at Hamina or its port. Nor has it any trademark or service mark Port of Hamina and it would not have been able to obtain any right to such a mark without the consent of the City of Hamina. The name Port of Hamina exclusively refers to that port and the Respondent will not have rights or any legitimate interest related to the name of a geographical area to which it is not connected.
The domain name has been registered and is used in bad faith, the Respondent knowing that Port of Hamina is a sign that refers to the port services in Hamina, Finland. The Respondent has internationally as a pattern registered every available name all around the world as its domain names and in the case at hand it has done so knowingly in order to prevent the City of Hamina from registering its mark in a corresponding domain name. Without authorization, the Respondent uses the logo of the Port of Hamina on its website which shows knowledge of the trademark character of Port of Hamina, there presented in figurative form. An intention to obtain financial gain by use of the trademark is evidenced by the fact that the Respondent sells advertising space to companies in the website "portofhamina.com". The use of the domain name creates a likelihood of confusion with the trademark. The site creates the impression that it would be the official website of the Port of Hamina or related to it in co-operation and it also makes believe that advertisers on the website have something to do with the port and that the services advertised are available at the port. This is to be seen together with false and misleading information provided on the website which can cause damage to the Port of Hamina as a trusted party and to third parties. Examples of false information have been adduced as evidence in annexes to the complaint.
The Respondent argues that its domain name is part of a network "www.portof.com", recognized and actively promoted as an independent venture that promotes local shipping related companies within a specific global network of presently 23 sites
online with another 200 web sites to be introduced online "within the next 8 months as part of a plan to launch a comprehensive search engine for the shipping industry world wide". Thus, "www.portofhamina.com" is used to provide information about services available within a system covering different ports under the concept of "www.portof[name of port].com". As a consequence, the Respondent has acquired a legitimate interest in respect of the domain name at issue, its registration and use being connected with the "global promotion of bona fide shipping related services within Hamina Port." Also, the domain name is presented together with a disclaimer on the home page, saying: "This site refers to the geographical location of the Port of Hamina and the Companies located within the port area. It is not the official port authority site. It is part of the Global port community search engine portof.com." This shows that the domain name is an independent venture different from any "official" site of Hamina port. The Respondent holds that "a unique geographical name can not be considered as automatically belonging to the authority of the geographical area in question".
6. Discussion and findings
On the basis of the Parties’ submissions and evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Uniform Policy, (paragraph 4. a to c), the Administrative Panel, noting that the Policy only applies to conflicts between trademarks/service marks and domain names, concludes as follows:
The Respondent has referred to the case No. D2001-0002, Port of Helsinki vs. Paragon International Projects Ltd., ie, itself, mentioning that "Nearly all of the legal and technical points raised are specifically covered in the previous case…" mentioned. This Administrative Panel is familiar with the decision in that case. It will, however, not take notice, from that case, for its information or decision, of which "legal and technical points", of the "nearly all", that the Respondent may have intended to draw attention to. Consequently, the Administrative Panel considers the response of the Respondent to concern only what is expressly mentioned in its response of February 16, 2001, in the part following "In general, paragon’s response is as follows:" The content of that part of the Respondent’s response has been summarized here above under 5(B).
A. Is the domain name "portofhamina.com" identical or confusingly similar to a trademark or service mark in which the Complainant has rights?
The Administrative Panel notes that the name Port of Hamina, as used by the Complainant, indicates the geographical origin of services rendered in that port. It has not been made clear to which extent, if any, the name is used by the Complainant in relation to goods. However, the name should not be seen as just the name of a place, like e. g. Newport. It also, in itself, connotes such services as are possibly rendered to ships, boats etc., and, in cities of some significance, implicitly under such rules as may have been established by a port authority of some kind, at least by offering a harbor. Thus, the name Port of Hamina may, in itself, be a trademark for services and protected as such, irrespective of trademark registration, if fulfilling the conditions required under Finnish law for the protection of non registered trademarks (service marks). The test applied to distinguish protected trademarks of this kind from those non protectible bears reference to whether the mark, by its use, has acquired distinctiveness so as to distinguish the goods and services of one undertaking from those of other undertakings. Under Section 2 third paragraph of the Finnish Trademarks Act the notion "established" is defined to mean that the mark has become generally known in the appropriate business or consumer circles in Finland as a symbol specific to its proprietor’s goods or services.
Finland is a member of the European Union and consequently, to put it simply, it is bound by European law. The European Court of Justice, in its decision May 4, 1999, in the joint cases C-108/97 and C-109/97 (usually referred to as the Chiemsee-decision), interpreted articles 3.1c and 3.3 first sentence of the Directive 89/104/EEC. Article 3 of the Directive, entitled "Grounds for refusal or invalidity", provides that certain signs and trademarks shall not be registered or if registered shall be liable to be declared invalid. Among these, we find trademarks which "consist exclusively of signs or indications which may serve, in trade, to designate the … geographical origin… of the goods or service". The Administrative Panel finds that Port of Hamina is such a trademark designating geographical origin. Of interest in this context is now the Court’s interpretation of article 3.3 first sentence together with the content of article 6.1(b); the latter, however, not subject to interpretation by the Court. Be it, that article 3.3 refers to non refusal of registrations and declarations of invalidation of registered signs, which cannot constitute a trademark, and of trademarks; the criterion for registration is, notwithstanding the presence of any ground for refusal related to trademarks in article 3.1, under the main rule in article 3.3 first sentence, whether the mark has "acquired a distinctive character" before the date of application for registration and following the use which has been made of it. If so, registration may take place and no invalidation shall occur.
The Court: "The first sentence of Article 3(3) of the First Directive 89/104/EEC is to be interpreted as meaning that:
- a trademark acquires distinctive character following the use which has been made of it where the mark has come to identify the product in respect of which registration is applied for as originating from a particular undertaking and thus to distinguish that product from goods of other undertakings;
- it precludes differentiation as regards distinctiveness by reference to the perceived importance of keeping the geographical name available for use by other undertakings;
-in determining whether a trademark has acquired distinctive character following the use which has been made of it, the competent authority must make an overall assessment of the evidence that the mark has come to identify the product concerned as originating form a particular undertaking and thus to distinguish that product from goods of other undertakings;
- if the competent authority finds that the significant portion of the relevant class of persons identify goods as originating from a particular undertaking because of the trademark, it must hold the requirement for registering the mark to be satisfied;
- where the competent authority has particular difficulty in assessing the distinctive character of a mark in respect of which registration is applied for, Community law does not preclude it from having recourse, under the conditions laid down by its own national law, to an opinion poll as guidance for its judgement."
The Administrative Panel takes definite exception to the Complainant’s view that rights to a unique geographical name should, evidently as a matter of principle, "be regarded to belong to the owner of the geographical area in question". However, applying by analogy relevant parts of the European Court’s interpretation to evidence introduced by the Complainant, the Administrative Panel concludes that the Port of Hamina has acquired distinctiveness and become established in the meaning of the Trademarks Act as a trademark/service mark relating to services originating from the City of Hamina/Port of Hamina. Consequently, Port of Hamina is a trademark/service mark to which the Complainant has rights. The Administrative Panel also finds that the domain name "portofhamina.com" is confusingly similar to that mark.
However, referring to the principle expressed in article 6.1(b) of the Directive about "Limitation of the effects of a trademark", according to which "The trademark shall not entitle the proprietor to prohibit a third party from using, in the course of trade, …indications concerning the … geographical origin … of goods or rendering of services or other characteristics of goods or services; … provided he uses them in accordance with honest practices in industrial and commercial matters" and paragraph 4(a)(ii) of the Uniform Policy, the Administrative Panel now moves to consider the issue.
B. Whether the Respondent has no rights or legitimate interests in the domain name.
The Respondent has registered and uses the domain name "portofhamina.com" within a business concept of presenting under domain names of the type "portof[name of port].com" information intended for users of the respective ports or services rendered there or in connection with the ports by port authorities, servicing companies etc. The Administrative Panel considers that by materializing this business concept which, as such, has not been proven to be in disaccord with honest practices in industrial and commercial matters, the Respondent has acquired a legitimate interest in the domain name "portofhamina.com".
C. Has the domain name been registered and/or is it used in bad faith?
The Administrative Panel disregards the Complainant’s contentions about false or misleading information provided on the website of the Respondent. There is no evidence that such information has been introduced under the domain name with an evil intent or else outside the course of, perhaps not infallible, ordinary business services such as mentioned here above under B. There is no evidence of an intent to create confusion as mentioned in paragraph 4.b (iv) of the Uniform Policy, nor of any other element of bad faith. Any confusion that may appear as a result of the semi-identity between trademark and domain name must be accepted under the law, because of the character of the mark and the character of the opposite legitimate interest in the use of the domain name. The risk of confusion may have been foreseen by the Respondent, introducing on its website "http://www.portofhamina.com/"the disclaimer: "This Site refers to the geographical location of the Port of Hamina and the Companies located within the port area. It is not the official port authority Site. It is part of the Global port community search Engine portof.com." Foresight about a possibility of confusion can not under the circumstances be held against the Respondent. The disclaimer rather attests to the finding of the Administrative Panel that no bad faith is involved.
D. Summarizing its findings under A-C., the Administrative Panel finds 1) that although there is a confusing similarity between the trademark Port of Hamina to which the City of Hamina/Port of Hamina has rights and the domain name "portofhamina.com", 2) the Respondent has a legitimate interest in respect of the domain name and 3) that the domain name has not been registered and is not being used in bad faith.
The Administrative Panel denies the remedy (transfer to the Complainant of the domain name "portofhamina.com") requested by the Complainant pursuant to paragraph 4(i) of the Uniform Policy.
Dated: March 12, 2001