WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Valio Oy v. TCOVA Oy

Case No. D2001-0805

 

1. The Parties

Complainant is Valio Oy with mailing address, P.O. Box 10 and visiting address Meijeritie 6, 00039 Helsinki, Finland. Complainantís authorised representative is Esa Korkeamäki and Martin von Willebrand, HH Partners, Attorneys at law, Ltd., P.O. Box 232, 00101 Helsinki, Finland.

Respondent is TCOVA Oy, Peikkokuja 2, 04230 Kerava, Finland. Respondentís authorised representative in this case is Olli Valtonen, with the same address as Respondent.

 

2. Domain Name and Registrar

The domain name at issue is <Valio.com>. The Registrar is Network Solutions, Inc., Herndon, Virginia, United States.

 

3. Procedural History

The World Intellectual Property Organization Arbitration and Mediation Center (the Center) received a Complaint in electronic form on June 19, 2001, and Ė after some correspondence with Complainant - in hardcopy form on July 4, 2001. The Center issued a Notification of Complaint and Commencement of Administrative Proceeding on July 9, 2001.

Having sent, on June 21, 2001, a request for Registrar Notification, the Center received a Verification Response on June 22, 2001.

According to that Verification the Registrant is "TCOVA OY (VALIO6-DOM) Peikkokuja 2, KERAVA, FINLAND 04230", Network Solutionsí 5 Service Agreement is in effect, and the domain name registration status is "Active".

On July 20, 2001, the Center received a Request from Respondent for Extension of two weeks to file a Response, which extension was granted the same day.

On August 6, 2001, the Center received a Response of which the Center acknowledged Receipt on August 10, 2001. The Acknowledgement of Receipt was communicated to Respondent and to Complainant by e-mail. According to the Response, a copy of it was transmitted to Complainant on August 7, 2001, using the contact details indicated in the Complaint.

Having invited Mr. Henry Olsson to serve as Sole Panelist in this case and having received, on August 17, 2001, Mr. Olssonīs Statement of Acceptance and Declaration of Impartiality, the Center issued, the same day, 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 August 31, 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

Complainant is a company which is incorporated and existing under the laws of Finland had has its principal place of business in Helsinki. Finland. The company has conducted its business activities since 1905, in the field of diary products.

Respondentís business activities are dealt with below in the context of the Response.

 

5. Partiesí Contentions

A. Complainant

General

First, in relation to Respondent, Complainant points out that the Finnish Companies Register does not contain any existing registration of a company under the name "Tcova Oy." On the other hand, the Finnish companies database contains information about a registered company by the name of "Telecommunications Consultants Olli Valtonen Associates Oy," for which the contact details are the same as those given for the Registrant. Complainant asserts that the name in the Registrarís Whois database is thus incorrect.

Secondly, Complainant alleges that the domain name <valio.com> redirects the browser to a one-page website at <telecom-valio.com>. That website is of a standard design and has been created by use of the "Image Café" database which is provided by Network Solutions. Complainant refers in this context to the source code of the webpage - which is annexed to the Complaint - and contends that the website has not been operational so far.

Thirdly, Complainant contends that the dispute over the domain name at issue is properly within the Policy, as the registration agreement pursuant to which the domain name is registered incorporates the policy. The domain name was registered on February 4, 2000.

Fourthly, Complainant alleges that Respondent is, in accordance with Paragraph 4(a) of the Policy, required to submit to a mandatory administrative proceeding because a) the domain name is identical to a combination of trademark or service marks in which Complainant has rights, b) Respondent has no rights or legitimate interests in respect of the domain name, and c) the domain name was registered and is being used in bad faith.

As regards the trademarks which form the basis of the Complaint, Complainant contends that is has about 70 national registrations of the wordmark "VALIO" as well as one European registration and one international registration under the Madrid Agreement/Protocol. In addition, Complainant also owns a series of combined word and design marks incorporating the word "VALIO". According to Complainant the registrations show Complainantís rights and interests in the word "VALIO" as a specific symbol for Complainantís goods and services. The trademark "VALIO" has, according to Complainant, been used continuously and without interruption in Finland since 1905, and has thereby gained a strong establishment by use in the field of the diary industry, and thus a broad protection as a well-known mark in accordance with Article 6 of the Finnish Trademark Act. Complainant points out that Complainantís market position in the Finnish market is very strong, in that approximately 78 % of all domestic milk providers send their milk to Complainant. Thus, Complainant is, according to the Complaint, a distinct market leader in its specific field of business and Finnish consumers are undoubtedly familiar with the company and its products and trademarks. Complainant also exports its products widely through a number of foreign subsidiaries.

In view of this, Complainant has a real and valid interest in all exclusive rights to the word "VALIO" as a specific symbol for the companyís business activities and products.

Identity or Confusing Similarity

Complainant contends in this context that the relevant part of the domain name at issue is "VALIO" and that this notion is identical with the distinctive trademark "VALIO" which is registered and owned by Complainant.

Rights or Legitimate Interests in the Domain Name

Complainant contends that, due to the exceptionally strong market share and long period of use of the word "VALIO" as a symbol for Complainantís products, that word has obtained a broader protection against imitators than is the case for regular trademarks (Articles 2 and 6 of the Finnish Trademark Act) As a result, according to Complainant, the word "VALIO" is not one that Finnish traders would legitimately choose unless seeking to create an impression of an association with Complainant.

Complainant furthermore contends that it has not licensed or otherwise permitted Respondent to use any of their trademarks or licensed or otherwise permitted Respondent to apply for any domain name incorporating any of those marks. Consequently, Respondent has no rights or legitimate interests in the domain name at issue.

Registration and Use in Bad Faith

As indications of bad faith Complainant invokes in the first instance four circumstances. First, Respondent has, according to Complainant, provided false address and/or address information for the purpose of its domain name registration, as no existing or former company under the name of Respondent exists in the records of the Finnish Trade Register. Secondly, as "VALIO" in fact belongs to the best known trademarks in Finland, it is inconceivable that a person operating the business of Respondent would not be aware of this fact. Thirdly, in view of the widespread use and reputation of the trademark "VALIO" members if the public in Finland would believe that the entity owning the domain name <valio.com> was in fact in some way associated with Complainant. Fourthly, any realistic use of the domain name at issue must, in the view of Complainant, misrepresent an association with Complainant and its goodwill, resulting in a trademark infringement. Due to the strong establishment of the trademark, it must be considered as well known and thereby subject to the above-mentioned broad protection. Thus, Respondent can not have made itself generally known by the domain name prior to the commencement of the proceedings at hand.

Complainant states that it is not aware of any trademark registrations or applications for registrations of the trademark "VALIO" in any country in the name of Respondent or by any other party.

In addition Complainant invokes that Respondent does not own any valid trademark registrations or pending applications for registration for the symbol "VALIO" and Complainant is not aware that the symbol would be used as a trademark for any goods or services in any country by Respondent or that any real and bona fide preparations for the initiation of such use have been made.

Respondent has, according to Complainant, activated a re-direction service from the web page <valio.com> to the web site <valio-telecom.com>. According to Network Solutionsí Whois database the latter domain name is owned by a company by the name of Telecom Valio LLC, 30 Old Rudnick Lane DOVER, Delaware 19001, United States. Complainant has not been able to detect any real and valid establishment or operational unit in the given address. Furthermore, according to Complainant, Respondent has asserted that it has the right to act and conclude agreement on behalf of the US company. Complainant furthermore contends that in the correspondence that has taken place between Complainant and Olli Valtonen, the latter has indicated that the US company in question would in fact be acting on behalf of an alleged French company by the name of Colibris Networks, 291 Croix de Ciselle, 06530 Cabris, France. Complainant has not been able to locate this French company nor has it been found in French business directories. In view of these circumstances and the fact that the website at <valtio-telecom.com> has not been put to genuine use after registration of the domain name, Complainant concludes that the founding of the US company has taken place solely for the purpose of covering any direct connection with the real and effective owner/operator of the website which is the alleged Finnish company that is acting as Respondent in this case. According to Complainant, the same may apply to the French company. Complainant contends that the US company was apparently founded simultaneously with the registration of the domain name at issue. In view of these circumstances, the Panel should require sufficient evidence about the company Telecom Valio LLC, the French company and any other foreign company other than the Respondent, in case Respondent would allege that it has been acting on behalf of any other firm or entity. If sufficiently and duly confirmed evidence in this respect is not filed by Respondent the allegations made by Respondent in this respect should not be taken into consideration.

In view of the circumstances indicated now Complainant alleges that the domain name was initially registered for the sole purpose of selling the domain name registration for valuable consideration in excess of the domain name registrantís out-of-pocket costs directly related to the domain name. In an earlier correspondence Respondent has made a direct offer to sell the disputed domain name to Complainant for a sum of 400 000 USD. Complainant has submitted this letter of December 12, 2000, signed by "Olli Valtonen Hallituksen puheenjohtaja TCOVA Oy" in Finnish with an English translation and an addendum to it. The addendum states, inter alia: "Following options are proposed to Valio Oy: 1. Valio Oy can buy the right to domain name(s)ÖÖThe following pricing is proposed for the domain name transfer(s): Valio.com or valio telecom. com each USD 400,000 (four hundred thousand US dollars) individually or USD 500 000 (five hundred thousand US dollars) both domains togetherÖ" It is then added that under this option the transaction can not be accomplished until certain conditions are fulfilled, viz. that the domain name transfer to Telecom Valio LLC has been concluded or cancelled. It is added that "in the latter case the seller would be TCOVA Oy."

Furthermore, evidently, the registration does prevent Complainant from reflecting its trademark in a corresponding domain name.

Complainant alleges that the mere act of registration of the domain name must, in the light of earlier decisions by WIPO panels, be considered to constitute bad faith. According to Complainant all the factual circumstances in the case can not amount to any other conclusion that that the act of registration in this case constitutes use in bad faith.

Remedies requested

In accordance with Paragraph 4(b)(i) - should be Paragraph 4.i - of the Policy and for the reasons set out in the Complaint, Complainant requests the Administrative panel issue a decision that the domain name at issue be transferred to Complainant.

B. Respondent

Respondent has requested the Panel to deny the remedies requested by Complainant. In a comprehensive Response, Respondent has refuted basically all the allegations by Complainant. In addition, Respondent states that the domain name at issue should not be covered by the Policy. To the Response are attached 16 annexes. The following part of the Decision contains a summary of the main statements of Respondent.

Applicability of the Policy

According to Respondent the domain name at issue should not be considered as being covered by the Policy. The argument is that the domain name belongs to a special category; for example "Mr. Best" or "Best Dog Goods" "could not claim that they have rights to own <best.com> (as) none of those, even having the trademark registered or family name existing for hundreds of years would be the only legitimate owner of the domain name." Respondent points in this context out that the domain name at issue is owned by Verio, Inc., in the United States and that Respondent is not aware of any disputes over this domain name. Under the question of the applicability of the Policy Respondent also alleges that Complainantís trademark registration is questionable under current European and Finnish Legislation.

Identity or Confusing Similarity

Following the statements summarised under the foregoing headline, Respondent then challenges the rights in the trademark or service marks asserted by Complainant.

According to Respondent, Complainantís claims to its trademark registration rights are "discussible, questionable and even disputable." To support this allegation Respondent has put forward a number of arguments, which are, in summary, basically the following:

a) "valio" is a common Finnish language word with a number of meanings.

b) "Valio" was the name of the creator of the Earth in the Finnish national epos Kalevala, and it is a common Finnish first name and also a Finnish surname and an international personís name.

c) Respondent agrees that the uppercase text "VALIO" may today be commonly associated with Valio Oy, in particular as is always spelled uppercase and normally used in specific typefaces. On the other hand, Respondent does not agree that the lowercase word "valio" would be associated with Complainant or its trademark, nor would that be the case with the name "Valio" with an initial uppercase letter.

d) Respondentīs authorised representative admitted in a telephone conversation that Complainant might not be able to register its trademark as a new trademark under European and Finnish legislation; this had been done on the basis of earlier legislation and with reference to the earlier names of the company.

On the basis of these allegations and the circumstances referred to, supported by documentation, Respondent concludes that it fails to see how the domain name at issue or the web address <valio.com> would be associated with Complainant and only with Complainant, something that is supported by the behaviour of www users.

Rights or Legitimate Interests

Respondent disputes Complainantís claim that the words "Valio" or "valio" have to be licensed or otherwise permitted by Complainant; Complainant itself has explicitly stated that the rights refer to "VALIO" but implicitly now holds the view that both "Valio" and "valio" would be covered by its trademark rights. As stated above, Respondent is of the opinion the words are commonly used Finnish language words and widely used in business names as well. Respondent has referred to a listing of domain names in the Finnish registry (.fi) containing the word "valio." Some of these are linked to Valio Oy. An example is "Valiotekniika Oy" or in English "Valio Engineering Ltd" That companyís naming and home page demonstrate the Finnish language feature of "concatenating" the words which are distinct in the English language to form the Finnish terms and names.

As regards the registration of the domain name for the US company Telecom Valio LLC, in Delaware, Respondent contends that it should be noted that the trademark "VALIO" does not appear in the companyís name but rather follows the practice referred to above. The registration of the domain name was part of a consulting delivery to the US company which includes prototyping and design of the companyís website. In fact Respondent was in progress of transferring the ownership of the domain name, when the potential trademark conflict was first indicated by Complainant. Respondent refers in this context to an annex to the Response relating to the Registrantís name change.

In summary, Respondent concludes that it has legitimate interests in respect of the domain name. It will not try to pose any similar limitations as Complainant for the use of the words "Valio" or "valio" on domain names.

Registration and Use in Bad Faith

Respondent rejects Complainantís allegation that Respondent has registered and used the domain name in bad faith. To support this, Respondent has submitted a number of contentions.

Thus, Respondent claims that it has conducted business since 1994, as "Telecommunications Consultants Olli Valtonen Associates Oy". This name proved impossible to handle for business partners and others and those partners shortened the name to Telecom Consultants or TCOVA Oy for practical reasons. Respondent has used the short versions in its logos and on its business cards and TCOVA Oy appears in the Helsinki area Business telephone directory since 1995/96. It also owns the domain names <tcova.com> and <telecom-consultants. Net>. The situation as regards the registration in the business register is now being corrected; Respondent has in this case submitted an extract of the first page of the registration of TCOVA Oy in the Finnish Trade Register, the PRH Kaupparekisteri. TCOVA Oy Ė or TCOVA Ltd. in English Ė is now the registered business name of the company with the additional business names of "Telecommunications Consultants Olli Valtonen Associates" and "Telecom Consultants Ė TCOVA". Respondent adds in this context that the Telephone Directory is by far the most common means of finding addresses; according to a press release submitted by Respondent, 69 % of the population would use it for that purpose.

As regards the well known character of the trademark "VALIO" Respondent agrees that the mark written in uppercase letters is in fact a well known mark but not so as regards "Valio" or "valio."

The past 12 monthsí experience of Respondentís customer Telecom Valio LLC, which has been the primary user of the domain name, does not support Complainantís claim that members of the public in Finland would believe that the entity owning the domain name <valio.com> is in some way associated with Complainant. Only 5 Ė 6 e-mails have been received concerning, or for, Valio Oy but those mainly concerned requests for information etc. and did not have any commercial value.

Respondent rejects Complainantís claim that any realistic use of the domain name must misrepresent an association with Complainant and its goodwill. First, as mentioned above, Respondent disputes Complainantís trademark infringement claims and, furthermore, Respondent had reasons to believe that Complainant would not be interested in the domain name.

Respondent has not in its correspondence stated that it has the right to act and conclude agreements on behalf of Telecom Valio LLC; it has merely communicated the views of that company and stated that it Ė Respondent Ė could act as representatives for the initial contact between the other two parties.

As regards Colibris Networks that company is a partner of Respondent and Telecom Valio LLC. It is a small international engineering company specialised primarily in manufacturing satellite link testing and simulation systems. Its domain name registration is in Germany and its primary customer base is satellite companies worldwide. TCOVA Oy has worked together with Colibris in a number of consulting projects including international deliveries to companies like Compaq and Nokia. Respondent does not understand why this company has been mentioned as part of the Complaint.

Respondent contends that it has not made any offer of selling the domain name to Complainant but has merely communicated Telecom Valio LLCīs views to Complainant. The amount mentioned was based on the commercial value of the established website to that company in two years.

Respondent also alleges that the relevant part of the letter invoked by Complainant is wrongly translated into English; the notion should not be that Respondent acts as "commissioner of Telecom Valio LLC in Finland" but should instead be construed as "representative" with the idea of having no legal or contractual powers to act but merely to act as a catalyst between the parties. Respondentís customer Telecom Valio LLC has now accepted that so far it is better to implement their website on <valio-telecom.com> and await the outcome of the dispute relating to the <valio.com>. Respondent also states that Complainantís claim for a wider scope of the protection of the trademark VALIO" does not exclude the words "valio" and "Valio" which may bring any website containing the text "valio" within the scope of the disputes.

In addition, Respondent states that the domain name at issue was acquired by Respondent for the sole purpose of delivery to Telecom Valio LLC with related consultancy services, for instance prototyping and design of a related website. Complainant had a time of approximately 7 Ė 8 years to register the domain name at issue since the introduction of the World Wide Web in 1991-1993, but did not register it; consequently, Respondent considers that it had reason to believe that Complainant was not interested in the domain name at issue. In the context of earlier contacts, Mr. Valtonen had suggested to Valio ATK (which is the IS/IT department of Valio) that it should register <valio.com>. This was, however, not accepted and Respondent was lead to believe that Valio would be satisfied with using their web address <valio.fi>. In addition Respondent has mentioned some other factual circumstances to support its allegation that it had not acted in bad faith; for instance that if Respondent had acted in bad faith it would have registered the domain name at issue before the implementation of the ICANN UDRP and not after it.

There exists according to Respondent no competitive situation between Complainant and Respondent. The likelihood of confusion has been practically zero which is shown by the extremely low rate of misunderstandings, practically one every two months, and no commercial gain was attracted therefrom.

Before it received any notice of the dispute there is, according to Respondent, evidence of Respondentís use or demonstrable preparations for use the domain name or a name corresponding to the domain name in connection with bona fide offering of goods and services. Thus Respondent has been preparing the website <valio-telecom.com> for the end customer Telecom Valio LLC and that site has gone through several phases of development. The site has been operational since autumn 2000. Respondent also refers to Complainantís statement that the domain name at issue redirects the browser to a one-page website at the address <valio-telecom.com>. This was, however, only in the early stages of the prototyping phase and the site was then upgraded. Respondent has submitted, as an annex to the Response, copies of the main webpages of the site. (Those pages mention Telecom Valio LLC in terms of "Excellence in Telecommunications" and refers to partnerships and good relations with most key players in the European telecom space). Finally, to show good faith, Respondent has avoided implementation of the website using the domain name <valio.com>.

In conclusion, Respondent contends that it has not acted in bad faith and has not performed any actions which could be described as bad faith.

 

6. Discussions 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 has to prove each of the following circumstances:

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 at issue, and

c) that the domain name has been registered and is being used in bad faith.

In the following part of the decision, the Panel discusses each of those elements.

Both Complainant and Respondent has submitted comprehensive statements supported by extensive documentary evidence in the form of annexes. As regards the Response the Panel notes that it was, according to the indication given by Respondent, transmitted to Complainant by e-mail on August 7, 2001. As of August 22, 2001, no comment had been received from Complainant.

Identity or Confusing Similarity

In this respect Complainant has, according to Paragraph 4.a.(i) of the Policy, to prove that the domain name at issue is identical or confusingly similar to a trademark or a service mark in which Complainant has rights.

The domain name at issue is <valio.com>.

Complainant has a number of registrations of the wordmark "VALIO" and also of combined wordmarks and design marks incorporating the same word.

Respondent has questioned the validity of the registrations of the trademark "VALIO," inter alia on the ground that "valio" is a common Finnish language word and that in any case only "VALIO" but not "Valio" and "valio" may be commonly associated with Complainant.

The Panel notes that it has not been alleged in this case that the trademark registrations of the word "VALIO" have been subjected to any cancellation procedure or any other procedure questioning the validity of the registrations. Consequently, the Panel must draw the conclusion that the registrations of the mark in question are valid and that Complainant has rights in that mark under trademark law.

The domain name incorporates Complainantís trademark "VALIO" with the addition of the notion ".com.". In the view of the Panel, this is an insignificant distinction which does not change the likelihood of confusion.

On the basis of these facts and considerations, the Panel concludes that in fact the domain name registered for Respondent is confusingly similar to the trademark VALIO in which Complainant has rights.

Rights or Legitimate Interests

In this respect Complainant has, according to Paragraph 4.a.(ii) of the Policy, to prove that Respondent has no rights or legitimate interests in relation to the domain name.

Respondent disputes that the words "Valio" or "valio" would at all have to be licensed as those are commonly used Finnish language words. Furthermore, Respondent contends that the registration of the domain name was part of a consultancy service for the US company Telecom Valio LLC and that Respondent was in progress of transferring the domain name at issue to that company when this dispute arose.

As mentioned above, the Panel has found that the domain name at issue incorporates the trademark "VALIO" in which Complainant has valid rights and that there is a confusing similarity between the domain name and the trademark. From this follows that a license or other permission from Complainant would, in principle, be needed for Respondentís use of the domain name. Respondent does not contest Complainantís contention that no such license or permission to use the trademark has been granted. The Panel can not find that the circumstances invoked by Respondent would make such a license or permission unnecessary.

On the basis of the arguments and evidence brought by Complainant and the Panelís considerations relating to Respondentís explanations, the Panel concludes that Complainant has sufficiently proved that Respondent has no rights or legitimate interests in the domain name at issue.

Registration and Use in Bad Faith

In this context, Complainant has, according to Paragraph 4.a.(iii) of the Policy, to prove that the domain name has been registered and is being used in bad faith.

In order to prove their positions in relation to the bad faith both Parties have forwarded a considerable number of contentions and arguments, supported by evidence. On the basis of those contentions and arguments and the documentary evidence available, the Panel makes the following findings.

In the view of the Panel, the trademark "VALIO" is a mark which is has "a reputation" in the country as provided in Article 6 of the Finnish Trademark Act; this notion is largely similar to the notion of a "well-known mark." The Panel draws the conclusion that Respondent must have obviously been aware of the existence of the trademark "VALIO" at the time of the registration of the domain name.

Complainant has made several allegations concerning the issue of bad faith on the side of Respondent, for instance that the registration prevents Complainant from reflecting its trademark in a corresponding domain name. The Panel can not find it to be established that the registration was carried out in order to obtain this result, in particular as nothing proves that Respondent has, as prescribed in Rule Paragraph 4.b.(ii) of the Policy, engaged in a pattern of such conduct.

Complainantís main allegation as regards the bad faith issue is that the domain name was, as indicated in Paragraph 4.b.(i) of the Policy, registered primarily for the purpose of selling, renting or otherwise transferring the domain name to Complainant for valuable consideration in excess of Respondentís documented out-of-pocket costs directly related to the domain name.

It is not under dispute that Complainant received an offer to acquire the domain name at issue for an amount of 400 000 USD. That amount in itself is obviously far more than "documented out-of-pocket costs directly related to the domain name".

Another question in this context is, however, by whom or on whose behalf this offer was made and whether this offer can be linked to the condition under the Policy that the registration was made "primarily for the purpose of sellingÖ" the domain name at issue to Complainant.

As regards the first question the Panel notes a) that in fact the domain name at issue was registered by Respondent and is owned by Respondent, b) that the offer to sell the domain name to Complainant was signed by Respondent, that is by the owner of the domain name at issue, and that it would, from a legal point of view be strange if the US company Ė about which little information is available in addition to the webpages submitted by Respondent - would make an offer to sell an asset which it did not own, and, c) that the addendum states that, if the transfer of the domain name was cancelled, the seller would be TCOVA Oy. This supports a conclusion to the effect that Respondent in fact stood behind the offer to sell the domain name to Complainant.

The next question is then whether the registration of the domain name at issue was made primarily for the purpose of selling it to Complainant or one of its competitors. The Panel notes in this context that the domain name was registered on February 4, 2000, and that the first contact between Complainant and Respondent on this issue seems to be the letter of December 4, 2000, that is the letter to which Respondentís letter with the sale offer of December 12 was a reply. Respondent has stated that the site in question was operational from autumn 2000. Consequently, Complainant reacted reasonably quickly in respect of the registration of the domain name at issue.

The statements by Respondent and the documentary evidence submitted support to some extent the claim that at least some demonstrable preparations were made for use of the domain name in the context of the preparations of the website <valio-telecom.com>. The information is, however, not very detailed as regards the activities of the company in question, in addition to a reference to, among others, Respondentís company.

The Panel attaches some importance to the offer of December 12, 2000, to sell the domain name to Complainant for USD 400 000 or both that domain name and <valio-telecom.com> for 500 000 USD. The only justification given by Respondent is that the amount was based on "the commercial value of the established web site to Telecom Valio LLC in two years, beginning of year 2003." The Panel can not find this justification particularly convincing as little was known about the activities and their future development. In addition, there is no indication of why Respondent was prepared to sell not only the domain name at issue but also <valio-telecom.com>.

The statements by the Parties and the evidence invoked by the are conflicting and thus the situation is extremely difficult to assess. The Panel finds, however, that Panel the circumstances now referred to, especially the sale offer, in connection with the fact that the trademark VALIO is a well known mark in Finland, supports a conclusion that the registration of the domain name at issue and the further use of it were in fact in bad faith as required under Paragraph 4.a.(iii) and 4.b.(i) of the Policy.

Conclusion

In the light of the foregoing the Administrative Panel concludes that the domain name <valio.com> is confusingly similar to Complainantís trademarks, that Respondent has no rights or legitimate interests in the domain name and that Respondentís domain name has been registered and is being used in bad faith.

 

7. Decision

Pursuant to Paragraph 4.i of the Policy and in accordance with the request by Complainant, the Panel requires that the domain name <valio.com> be transferred to Complainant.

 


 

Henry Olsson
Sole Panelist

Dated: August 24, 2001