WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Teollisuuden Voima OY v Jarno P. Vastamäki

Case No. D2001-0321

 

1. The Parties

Complainant is Teollisuuden Voima OY, Töölönkatu 4, FIN, 00100 Helsinki, Finland represented by Georg R. F. Souter, Esq., Lammi & Partners OY, attorney, P.O.Box 1214, FIN-00100 Helsinki, Finland, hereinafter the "Complainant".

Respondent is Jarno P. Vastamäki, Länsitorikatu 3 A 1, FIN-35800 Mänttä, Finland,

hereinafter the "Respondent".

 

2. Domain Names and Registrar

The domain names in dispute are <olkiluoto.com> and <olkiluoto.net>.

The registrar for the disputed domain names is Register.Com, Domain Registrar, 578 8th Avenue Ė 11th Floor, New York, NY 10018, United States of America.

 

3. Procedural History

The essential procedural history of the administrative proceeding is as follows:

(a) Complainant initiated the proceeding by the filing of a complaint via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on

March 5, 2001, and by courier mail, received by WIPO on March 8, 2001. On March 8, 2001, WIPO transmitted a Request for Registrar Verification to the registrar, with the Registrarís Response received by WIPO on March 13, 2001.

(b) On March 14, 2001, WIPO transmitted Notification of the Complaint and Commencement of the proceeding to Respondent via e-mail and courier mail.

(c) On April 2 Respondent submitted a Response by email, and by courier mail, received by WIPO on April 5, 2001. WIPO notified acknowlegdement of Receipt on April 2, 2001.

(d) OnApril 20, 2001, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). The same day the undersigned transmitted by fax the executed Statement and Declaration to WIPO.

(e) On April 23, 2001, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by

May 6, 2001. On, April 23, 2001, the Panel received an electronic file in this matter by e-mail from WIPO. The Panel subsequently received a hard copy of the file in this matter by courier mail from WIPO.

The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.

 

4. Factual Background

The Complainant operates nuclear plants situated in the island of Olkiluoto, Finland.

Olkiluoto is a small island of approx. 10 square kilometres on the Finnish west coast.

Complainant started production of nuclear power on Olkiluoto in 1978. A second nuclear power plant started producing in 1980. The Complainantís power plant facility on Olkiluoto has received considerable press coverage across Finland for many years. Olkiluoto is also used in the stream of commerce to identify the Complainantís nuclear power stations.

In Finland there has been a debate regarding use of the bedrock of Olkiluoto as a final depository site for nuclear waste.

The Respondent works for one of the major Finnish, nation-wide environmental organisations. The Respondent also has family roots in the surroundings of Olkiluoto.

The Respondent registered the domain names <olkiluoto.com> and <olkiluoto.net> on November 17, 2000. On November 22, 2000, the Respondent offered the domain names to the Complainant for a sum of FIN 250.000.

 

5. Partiesí Contentions

A. Complainant

The Complainant claims that the general Finnish public through the considerable press coverage has come to identify Olkiluoto with the Complainantís power plants.

Accordingly, Olkiluoto has become established as a trademark for the Complainant.

The domain names registered by the Respondent are identical to the Complainantís trademark.

The Respondent has no legitimate interest in the domain names.

It cannot be argued that Respondentís purpose by registering the domain names

was to provide a platform for legitimate debate. According to WIPOís case No. D200-1314, the purpose of lawful criticism of a trademark owner does not justify the occupation of a domain name identical to a sign identifying the trademark owner.

Both registration and use have been in bad faith since the domain names were registered primarily for the purpose of selling the domain name registrations to the Complainant.

B. Respondent

When registering the domain names the Respondent was in charge of duties of chair in Dodo-Tulevaisuuden Elävä Luonto Ry, one of the major Finnish, nation wide environmental organisations.

It is not correct that the only substantial business in Olkiluoto is that of the Complainant. There are two other independent considerable businesses in the island: Olkiluoto Shipyard and The Port of Olkiluoto. Further, Olkiluoto Permanent GPS Station has been established by the Finnish Geodetic Institute on Olkiluoto.

All Finnish power plants are named by location/the name of the place + power plant. This also applies to the newspaper clippings produced by the Complainant, which in the main text always mention Olkiluoto power plant, not Olkiluoto alone. Use of Olkiluoto alone only applies in the headlines.

The Complainant has not used the word Olkiluoto as a trademark.

Olkiluoto is a geographical name and should be treated like a generic word to which anyone can have domain rights.

Olkiluoto is also a family name and an estate name.

The domain names in question can function as a proper platform for a legitimate non-commercial and fair use of bringing forth important issues on future. In particular it is referred to the plans for building a depository site for highly radioactive nuclear waist on the bedrock of Olkiluoto.

Moreover, the Respondent has family roots in the surroundings of Olkiluoto.

Thus the Respondent has right and legitimate interests in respect of the domain names.

The primary purpose of Respondent when registering the names was use for the environmental organisation he worked for.

The e-mail produced by Complainant as Annex 8 to the Complaint, is not the original e-mail containing the offer for sale of the domain names from the Respondent to the Complainant. The Respondent admits having contacted representatives of the Complainant by an e-mail some time at the end of November, 2000.

 

6. Discussion and Findings

Paragraph 4 (a) of the Uniform Domain Name Dispute Resolution Policy lists three tests which a complainant must satisfy in order to succeed. The Complainant must satisfy that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of such domain name; and

(iii) the domain name has been registered in bad faith and is being used in bad faith.

A Identical or confusingly similar to a trademark or a service mark

The Complainant has argued that it has trademark rights in the name Olkiluoto according to section 2 of the Finnish Trademark Act. This section states that "exclusive rights in a trademark may be acquired, even without registration, after the mark has become established".

The test of whether a trademark has been established, is given in the third paragraph of the same section (cited in WIPO case No. D2001-0199):

"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".

Accordingly, Complainant must demonstrate that the name Olkiluoto has been generally known in the appropriate business or consumers circles in Finland "as a symbol specific to its proprietorís goods".

The Complainant has produced various press clippings in order to prove that Olkiluoto is established as a trademark.

These press clippings show use of the sole word Olkiluoto in reports covering the operations of the power plant. However, the clippings do not render an unambiguous picture.

Sometimes the name Olkiluoto is used as a name for the power plant. Sometimes it is used as the name for the location and sometimes it is used in conjunction with the word "power plant" or similar words.

Respondent has also referred to other companies situated in the island of Olkiluoto using the name of the island in its name.

Olkiluoto is not a part of the Complainantís company name. Neither has the Complainant produced any evidence of use of the name by Complainant as a trademark.

It cannot be clearly concluded from the various press clippings whether Olkiluoto is known as the name of the location of the power plant or as the name of the power plant itself. In order to prove that the name has been established as a trademark for the Complainant, the Complainant must prove that the name has adopted secondary meaning as a trademark within the context of goods and services offered by the Complainant. Generally it is difficult to fulfil this burden of proof, and in particular this applies as long as the Complainant does not carry Olkiluoto as a part of its company name or use the name as a trademark. In the absence of such use it is less likely that the public, within in the fields of goods and services rendered by the Complainant, will come to comprehend the name exclusively as a symbol identifying the Complainantís goods and services.

It is the opinion of this Panel that the evidence produced is not sufficient to prove that Olkiluoto is established as a trademark for the Complainant according to third paragraph of Section 2 of the Finnish Trademark Act. Accordingly, the Complainant has not satisfied the requirement according to paragraph 4 (a) (i).

This Panel would like to add that the question whether the Complainant has acquired trademark rights in the name Olkiluoto according to Section 2 of the Finnish Trademark Act, mainly is a question of evidence which in most cases can be dealt with more properly by the national courts.

B Legitimate interests/registration and use in bad faith

Since the Panel has reached the conclusions that the Complainant has no rights in the name of Olkiluoto, it is not necessary for the Panel to discuss the requirements of legitimate interests/registration and use in bad faith according to Paragraph 4 (a) (ii-iii).

However, this Panel would like to express that it shares the view taken by the Panel in WIPO case No. D2000-1314 that the right to use a domain name as a platform for lawful criticism of a trademark owner does not extend to occupying a domain name identical to a sign identifying the owner.

Further this Panel would like to state that it finds that the circumstances evidenced in this case indicate that the Respondent has registered the domain names primarily for the purpose of selling the domain name registrations to the Complainant for valuable consideration in excess of documented out-of-pockets costs. This applies irrespective of the claims made by the Respondent regarding the originality of the e-mails produced by the Complainant, since the Respondent himself admits having made an offer by e-mail to the Complainant for sale of the domain names.

Since the requirement according to Paragraph 4 (a) (i) is not met, the above conclusions have no practical impact on this matter.

 

7. Decision

The Complainant has not proved that it has acquired a trademark right in the name Olkiluoto.

Accordingly, pursuant to paragraph 4 (a) (i) of the Policy, the Administrative Panel denies the request that registration of the domain names <olkiluoto.com> and <olkiluoto.net> be transferred to Complainant.

 


 

Peter G Nitter
Sole Panelist

Dated: May 4, 2001