WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Port of Helsinki vs. Paragon International Projects Ltd.
Case No. D2001-0002
1. The Parties
Complainant is Port of Helsinki, Olympiaranta 3, FIN-00099 Helsinki, Finland.
Complainantís authorised representative in this case is Heinonen & Co,
Attorneys-at-Law, Ltd, P.O Box 671, FIN-00101 Helsinki, Finland, with visiting address Fredrikinkatu 61 A, FIN-00100 Helsinki.
Respondent is Paragon International Projects Ltd. In the Complaint, Respondentís address is indicated as: Trafford House, Trafford Street, Chester, Cheshire CH1 3HP United Kingdom. In the Response, Respondent has indicated its contact details as "1 Hunters Walk, Canal Street, Chester, CH1 4EB".
2. Domain Name and Registrar
The domain name at issue is "portofhelsinki.com". The Registrar is Network Solutions, Inc, Herndon, Virginia, United States.
3. Procedural History
The WIPO Arbitration and Registration Center (the Center) received Complainantís complaint in electronic form on January 2, 2001, and in hard-copy form on January 5, 2001. The Center verified that the Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules) and the WIPO Supplemental Rules. The Center then issued, on January 22, 2001, a Notification of Complaint and Commencement of Administrative Proceeding which was communicated to Respondent, to Complainantís representative and to ICANN as well as to the Registrar.
Having sent a Verification Request to Network Solutions, Inc. the Center received, on January 16, 2001, a Verification Response. In that Response was indicated that:
(a) Network Solutions was in receipt of the Complaint sent to it by Complainant;
(b) Network Solutions is the Registrar of the domain name at issue;
(c) Network Solutions confirmed that the current Registrant of the domain name registration is Paragon International Projects Ltd (PORTOFHELSINKI-DOM) Trafford House, Trafford Street, Chester, Cheshire CH1 3HP, United Kingdom;
(d) the domain name at issue is "PORTOFHELSINKI.COM;
(e) Administrative Contact is Carr, Steve (SC9079) Paragoni@GLOBALNET.CO.UKC, Paragon International Projects Ltd, Trafford House, Trafford Street, Chester, Cheshire CH1 3HP, United Kingdom;
(f) Technical Contact is Hostmaster (HOS194-ORG) hostmaster@NET-WORK.NET, Net-Work, Suite W" 16, Chester Enterprise Centre, Chester, Cheshire CH2 3NE, United Kingdom;
(g) Billing Contact is Dean, David (DD208) d@Vid.NET, Net-Work Internet Ltd, Technology House Rhewl, RUTHIN, LLO15 1TN, United Kingdom;
(h) Network Solutions 5.0 Service Agreement is in effect, and;
(i) the domain name registration is in "Active" status.
On January 26, 2001, the Center received a Response from Respondent; the Center acknowledged receipt of this the same day.
Having invited Mr. Henry Olsson so serve as a Sole Panelist in this case and having received, on February 5, 2001, Mr. Olssonís Statement of Acceptance and Declaration of Impartiality, the Center issued, on February 5, 2001, a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Olsson was formally appointed as Sole Panelist. The Projected Decision Date was February 19, 2001.
The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the WIPO Supplemental Rules.
4. Factual Background
The name "Port of Helsinki" refers to the Port of Helsinki, which is the port authority of the City of Helsinki, Finland. The Port Authority is a legal person of public law incorporated under the laws of Finland. Its regulations entitle the Port Authority to represent itself in a court or similar proceeding.
5. Partiesī Contentions
Complainant contends that the domain name at issue is identical or confusingly similar to a trademark or a service mark in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain name and that the domain name was registered and is being used in bad faith.
In the Complaint, Complainant agrees, in accordance with Paragraph 3(b)(xiii) of the Rules, to submit, only with respect to any challenge that may be made by Respondent to a decision by the Administrative Panel to transfer or cancel the domain name that is the subject of the Complaint, to the jurisdiction of the courts where the principal office of the concerned registrar is located.
Identity or confusing similarity
In respect of the first one of these allegations Complainant states essentially the following:
The Port of Helsinki has used the trademark "Port of Helsinki" for decades in connection with its various port services and the trademark has been used both in Finland and internationally.
The trademark in question has not been registered but enjoys nevertheless protection under the Finnish Trademark Act. Article 2, first Paragraph, of that Act prescribes: "A sole right to a trademark may be acquired even without registration after the mark has become established."
The name "Port of Helsinki" is the only possible name for the port. It is, according to Complainant, common practice around the world that ports are called "port of the name of the location." Complainant has submitted a printout from a website to support this statement. In the view of Complainant, port business is international and it is thus naturally the domain name "portofhelsinki.com" that people will look at when they want to obtain information about the Port of Helsinki.
In the view of Complainant a unique geographical name should Ė just like trademarks- enjoy protection against others registering the name in bad faith; such a geographical name functions in the same way as a trademark by distinguishing one personís goods and services from those of another person. Thus the rights in a geographical name should be considered to belong to the owner of the geographical area in question.
Complainant also stresses that the Port of Helsinki is the owner of the Finnish domain name "portofhelsinki.fi." The Telecommunications Administration Centre (TAC) is the authority that issues domain names under the country code top level domain ".fi". As Finnish domain names are issued only to parties that are entitled to the name, the TAC has been convinced that the name "Port of Helsinki" is an established trademark.
Complainant adds that the "Port of Helsinki" is internationally known as the name of the port in Helsinki. All letterheads, brochures, visiting cards, advertisements and forms Ė of which Complainant has submitted samples Ė all include the trademark "Port of Helsinki".
On the basis of these allegations Complainant submits that the domain name "portofhelsinki.com" is identical with Complainantís trademark "Port of Helsinki".
Rights or legitimate interests
Complainant contends that it has not entitled or licensed Respondent to use the trademark "Port of Helsinki" and Respondent does not have any business at Helsinki and especially not at the port of that city and no connection to it. The name "Port of Helsinki" is not a general common word that anyone would have the right to use but refers only to the port of that city and does not have any other meaning. To the knowledge of Complainant, Respondent does not own a trademark or a service mark "Port of Helsinki" and at least in Finland Respondent would not have been able to obtain such a mark without the consent of Complainant.
In view of this, Respondent should not be considered to have any rights or legitimate interest in the name of the geographical area to which it has no connection.
Registration and use in bad faith
Complainant contends that Respondent knows that "Port of Helsinki" is a sign that refers to the port services in Helsinki, Finland. As shown in an Annex to the Complaint, Respondent has registered more than 50 domain names beginning with "portofÖ." The pattern shows that Respondent has intentionally registered all available port names around the world as its domain names. Respondent has registered the domain name at issue in order to prevent the City of Helsinki from registering the mark Port of Helsinki in a corresponding domain name and Respondent has a pattern of having done so in respect of several ports all around the world. Respondent must have known that the names of different ports belong to themselves and therefore the registration of the domain name at issue has been made in bad faith.
Respondent is selling advertisement space to companies in the website "portofhelsinki.com". Thus the domain name has been registered with the intention to obtain commercial gain from another personís trademark.
According to Complainant, using the domain name at issue creates a likelihood of confusion with Complainantís mark and the website tries to create the impression that the "portofhelsinki.com" website would be the official website of the Port of Helsinki.
In addition, according to Complainant, the website creates a likelihood of confusion as to the source of the services advertised at Respondentís website in that one is made to believe that the advertisers have something to do with the port and that the services are available at the port. According to Complainant the website contains a lot of false or misleading information which can cause damage both to the Port of Helsinki and to third parties. Because the Port of Helsinki is a public authority and as such is trusted for giving accurate information, there is a risk that visitors will believe in the misleading information, which may lead to damages. Complainant submits, as examples, some information from the different pages of the website which in its view includes only a minor part of the different services provided at the Port of Helsinki (only those companies that have paid Respondent for advertising space) and some of the services advertised at the website have nothing to do with the Port of Helsinki. In this respect Complainant has submitted some extracts from the website on, among several other matters, banking, car rental and security services available at the Port.
In accordance with Paragraph 4b(i) of the Policy and for the reasons indicated Complainant requests that the Administrative Panel issue a decision that the contested domain name be transferred to Complainant.
Respondent contends that the domain name portofhelsinki.com is part of the www.portof.com network containing presently about 23 sites on-line with more than 200 additional ones following in the next eight months as part of Respondentís global plan to launch a comprehensive search engine for the shipping industry world-wide. Consequently, Respondent has a legitimate interest in respect of the domain name at issue. It has been registered and is being used in connection with the global promotion of bona fide shipping related services within Helsinki Port. Until 1998, Helsinki Port promoted itself as "Helsingin Satama" under which name it was known in both the national and international maritime market.
In addition, according to Respondent, the web site which address is www.portofhelsinki.com, is presented as an independent venture totally different from any "official" site the ports may have as shown in the disclaimer included in the website linked to the domain name at issue. Complainant contends that this is the strength of the www.portof.com network as it is recognised and actively promoted as an independent venture that promotes local shipping related companies within a specific global network.
Observations on specific points.
Respondent refers to Complainantís statement that "The name ĎPort of Helsinkií belongs to the Port of Helsinki, etc" and Complainantís assumption that a unique geographical name should be regarded as belonging to the owner of the geographical area in question. Respondent does not believe this to be the case as evidenced by a number of examples referring to the names of cities registered as domain names and which are owned by organisations rather than by the respective cities. Respondent refers in this context also to the example of helsinki.com which is owned by another party than the City of Helsinki. Respondent has submitted a number of annexes to support its contentions in this respect. Respondent is firmly of the view that
non-distinct geographical terms cannot be trademarked.
Respondent remarks that "Port of Helsinki" is rather a phrase or sign that refers to the port services in a port and not to the administrative body that handles a specific port.
In the view of Respondent "Port of Helsinki" is not the only possible name for the port until fairly recently Helsinki Portís website was promoted as www.hel.fi/port, and it was only fairly recently that Helsinki Port changed their promotional material to promote the new website address www.portofhelsinki.fi.
Respondent furthermore contends that the statement that all ports around the world are called "Port of the name of the port" is not accurate and examples show that domain names containing names of cities are not always owned by the respective cities. From, for example, Annex 6 to Helsinki Portís Complaint can be seen that ports may have varying website addresses (www.revolta.com"/-andrey/port.hmtl). In fact, according to Respondent, it is apparent that only a small number of ports have www.portof.com as their website address. Instead they have, as mentioned, varying website addresses which again, according to Respondent highlights the strength and the legitimacy of the www.portof.com network by promoting a uniform domain name for bona fide and legitimate shipping services around the world.
Respondent furthermore contends that Complainantís statement that Respondent has no rights or legitimate interests in respect of the domain name is not correct, as portofhelsinki.com is part of Respondentís global www.portof.com network. The domain name has not been registered in bad faith and has not been registered to prevent the City of Helsinki from registering portofhelsinki.xxx, as there are other variables available. Helsinki Port already owns portofhelsinki.net which is, however, an inoperative link.
Finally, Respondent contends that the specific points raised about the services and more specifically the accuracy of the services within Helsinki Port refer more to the intention of the individual private companyís to join the project rather than of the accuracy of the information. According so Respondent, the information is to the best of its knowledge accurate. However, certain information referred to by Complainant has been removed from the website.
6. Discussion and Findings
Rule 15 of the Rules prescribes that the Panel shall decide a Complaint on the basis of the statements made and documents submitted and in accordance with the Policy, these rules and any rules and principles of law that it deems applicable.
Applied to this case, Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
(a) that the domain name registered by Respondent is identical or confusingly similar to a trademark or a service mark in which Complainant has rights;
(b) that Respondent has no rights or legitimate interests in the domain name, and;
(c) that the domain name has been registered and is being used in bad faith.
a) Identity or confusing similarity
First the Panel notes that the present Dispute Resolution Policy applies only to conflicts between on the one hand a trademark or a service mark (Complainantís) and on the other hand a domain name (Respondentís). The Policy consequently does not presently apply to, for instance, conflicts between domain names and geographical indications or signs or symbols that are not supported by trademarks/service marks. The Panel cannot agree with the contention that a unique geographical name should be considered as belonging to the legal authority of the geographical area in question under the Policy. Protection for geographical names can be provided through other means, such as the special protection for geographical indications and not per se under trademark law.
The domain name at issue is "portofhelsinki.com."
Complainant has invoked that it has rights in the symbol "Port of Helsinki" under Article 2, first paragraph, of the Finnish Trademark Act, which establishes trademark rights on the basis of establishment of the mark on the market. According to Article 2, third Paragraph, "a trade symbol shall be regarded as established if it has become generally known in the appropriate business or consumer circles in Finland as a symbol specific to its proprietorís goods."
From the evidence available in the case appears that the notion "Port of Helsinki" is being used together with its Finnish corresponding denomination "Helsingin Satama" and its Swedish one "Helsingfors Hamn." In view of this and of the fact that no market research or similar evidence has been submitted by Complainant to prove establishment on the market in the sense of the trademark law, the Panel cannot make a finding that trademark rights exist in the denomination "Port of Helsinki.
b) Rights or Legitimate Interests
From the evidence available it appears that Respondent is using this domain name Ė together with several similar domain names Ė to provide information about the services available in different ports around the world. In the view of this Panel such a use does not imply that Respondent would have no rights or legitimate interests in respect of the domain name in the sense of Paragraph 4.2(ii) of the Policy.
(c) Registration and Use in Bad Faith
Evidence submitted in the case does not suggest that bad faith would be present in any of the senses referred to in Paragraph b(i)-(iv) of the Policy. In addition, the Panel attaches some importance to the fact that Respondent has put on the website "portofhelsinki.com" a disclaimer indicating that: "This Site Refers to the geographical location of the Port of Helsinki 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"
Obviously, the registration of the domain name at issue would have an impact on the ability of the Port of Helsinki to register the same domain name for its services. In view of the circumstances just described and of the use that Respondent is making of its registration of the domain name, the Panel does not consider that the domain name has been registered and is being used in bad faith as mentioned in Paragraph 4a(iii) of the Policy.
On the basis of the foregoing the Panel concludes that it has not been established;
(a) that "Port of Helsinki" enjoys trademark protection,
(b) that Respondent has no rights or legitimate interests in the domain name at issue in the sense of Paragraph 4a(ii) of the Policy, or
(c) that the domain name has been registered and is being used in bad faith.
Complainantís request for transfer of the domain name at issue shall consequently be denied.
Complainantís request for transfer of the domain name "portofhelsinki.com" is denied.
Dated: February 12, 2001