WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Oy RADIOLINJA Ab vs. Media Pub

Case No. D2001-0845

 

1. The Parties

Complainant is Oy RADIOLINJA Ab, Tammasaarenlaituri 3, 00180 Helsinki, Finland. Complainantís authorised representatives are Esa Korkeamäki and Martin von Willebrand, Attorneys at law, HH Partners, Attorneys at Law, Ltd, P.O Box 232, 00101 Helsinki, Finland.

Respondent is Media Pub, attention Juha-Pekka Köykka, P.O Box 408, 00101 Helsinki, Finland. (As Administrative and Technical Contact is indicated Maukka Sivonen; see below).

 

2. Domain Names and Registrar

The domain names at issue are <radiolinja.com> and <radiolinja.net>.

The Registrar is Bulk Register.com, 7 East Redwood Street, Third Floor, Baltimore MD21202, United States.

 

3. Procedural History

The World Intellectual Property Organization Arbitration and Mediation Center (the Center) received the Complaint by e-mail on July 2, 2001, and by hardcopy on July 12, 2001. On July 4, 2001, the Center issued an Acknowledgement of Receipt of the Complaint.

On July 4, 2001, the Center transmitted via e-mail to the Registrar a request for registrar verification in connection with this case. On July 8, 2001, the Registrar transmitted via e-mail to the Center its response, confirming that:

- a copy of the Complaint had been sent to it by Complainant

- the domain names at issue were registered with the Registrar

- the Respondent was the current Registrant of the domain names; and that the Respondent was Media Pub, with mailing address P.O Box 408, FI 00101, Finland

- the Administrative Contact and Technical Contact for <radiolinja.net> was "Maukka Sivonen maukka.sivonen@radiolinja.com Radio "Heawy" Linja, Frejgatan 13-1027, Stockholm, Se 11479, SE"

- the domain name record was created on 1999-02-11, updated on 2001-04-19 and will expire on 2002-02-11

- the Administrative Contact and Technical Contact for <radiolinja.com> was the same as for <radiolinja.net> and the same dates applied to the record

- the Uniform Domain Name Dispute Resolution Policy applies to the domain names and

- the current status of the domain names is "Registrar LOCK"

On July 12, 2001, the Center issued a Notification of Complaint and Commencement of Administrative Proceeding, which was communicated to Respondent (to Media Pub and to Maukka Sivonen by post/courier, by facsimile and by e-mail). The Notification was also communicated to Complainant and to the Registrar

On July 30, 2001 the Center received an e-mail from Respondent requesting an extension of the deadline for filing Response. After consultation with Complainant, the Center extended the deadline by 15 days, until August 15, 2001.That extension was communicated to Juha Köykka on the same e-mail address as the one on which the request was received. As no Response had arrived, the Center issued a Notification of Respondent Default on August 20, 2001, which was communicated to the Parties by e-mail

Having invited Mr. Henry Olsson to serve as a Sole Panelist in the case and having received Mr. Olsson's Statement of Acceptance and Declaration of Impartiality and Independence, the Center issued, on August 23, 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 September 6, 2001.

The Sole Panelist considers that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the WIPO Supplemental Rules.

On the basis of the documents available in the case relating to the notifications to Respondent, the Panel concludes that the Complaint has been duly communicated to Respondent, who has, however, not submitted any Response. As of August 27, 2001, no communication had been received from Respondent.

 

4. Factual Background

Complainant, Oy Radiolinja Ab is a mobile telephone operator in Finland and is, according to Complainant, the second largest such operator and provider of related services in that country, with a market share of approximately 35 %. It had approximately 1,25 million active mobile phone subscriptions by the end of 2000. It was the first GSM operator in the world.

In accordance with Paragraph 3(b)(xiii) of the Rules, Complainant agrees 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 names that are the subject of this Complaint, to the jurisdiction of the courts where the Respondent is located, as shown by the addresses given for the domain holder in the concerned Registrarís Whois database at the time of the submission of the Complaint to the WIPO Center.

 

5. Parties' Contentions

A. Complainant

General Background

The Complainant contends that it is the proprietor of registrations for the trademark "Radiolinja" (since 1990) and "GSM 050 Radiolinja" (since 1996) in Finland in class 38 and, as regards the later mark also in class 9. In addition an application is pending in several classes since June 2000 in Finland for the mark "Radiolinja." Complainant is also the proprietor of an international trademark application under the Madrid Protocol since December 2000, in several classes, for Germany, Denmark, Estonia, Iceland, Latvia, Norway and Sweden.

According to Complainant the trademark "Radiolinja" has been used in Finland as a symbol for Complainantís business since 1989 and, due to strong marketing activities, Complainantís marks, including "Radiolinja" are continuously visible in Finnish media. Because of the strong establishment of Complainantís trademark, the mark must be considered as well known and thereby subject to a broad protection in accordance with Article 6, Second Paragraph, of the Finnish Trademark Act.

Identity or Confusing Similarity

In this respect, Complainant contends that both domain names at issue incorporate fully the Complainantís trademark, the sole difference being the addition of ".com" and ".net." Thus the domain names must be considered as identical with the trademarks of Complainant.

Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interests in the domain names at issue, for several reasons.

First, to the best knowledge of Complainant, no trademark registrations, registration applications, company names or other rights in the textual component of the contested domain names is held or controlled by Respondent or any other party than Complainant or an affiliate of it.

Secondly, according to Complainant, Respondent is not carrying out any real activity under the name "Radiolinja" or any similar name. The apparent band activity presented on the websites <radiolinja.com> and <radiolinja.net> are, in the view of Complainant, fabricated. Thus, the band has not provided any contact information except for that available at the Registrarís database; in this respect

Complainant has submitted a printout of the source code of the bandís webpages. Furthermore, in the Registrarís database, the Registrant is the Respondent, and the Administrative Contact and Technical Contact is a person with the name of "Maukka Sivonen," who has for the purposes of registration provided an address in Sweden. According to information received from the population registers - annexed to the Complaint - in Sweden and Finland, no person by that name is a Finnish or a Swedish citizen, nor a resident in those countries. The address at Frejgatan in Stockholm belongs to a company by the name of Old Eagle, which provides to its customers anonymous mail addresses and anonymous mail redirection services; the address for Maukka Sivonen is one of those addresses. Complainant has submitted a printout of Old Eagleís services. In the opinion of Complainant, giving false or misleading name information and using an anonymous mail address indicates an effort by Respondent to conceal the lack of any real activity by the band.

Complainant furthermore contends that the background music played when visiting the webpages under the domain names is not proprietary of any person or legal entity associated with Respondent but by the rock band Metallica

Complainant asserts that before April 12, 2001, the domain names at issue were redirected to Complainantís website "radiolinja.fi" so that Complainantís website was opened in a frame within the site operated by Respondent. The visual result was that the page was identical to Complainantís site, the sole exception being that the address of the page seemed to be Respondentís domain names. Thus, Complainantís customers were made to believe that Complainant was in possession of the domains at issue even if that was not the case. A result must have been that customers sent e-mails to the wrong addresses thus creating confusion among the customers of Complainant and loss of goodwill. Complainant has submitted printouts of the source code as of February 2001 and also a printout of the current Whois data base printout. The change in the type of activities of the sites support, according to Complainant, that the band activity is fabricated and that Respondent does not have any legitimate interests in the domain names.

Finally, in this context Complainant also stresses that the activity on the sites at issue is in Finnish and thus targeted to a Finnish audience. According to Complainant, any realistic use of the mark "radiolinja" or any similar mark must misrepresent an association with Complainant and its goodwill, resulting in a trademark infringement. As mentioned, the mark "Radiolinja" must be considered as well known and thus Respondent can not have made itself generally known by the domain names at issue prior to the commencement of the proceedings in this case.

Registration and Use in Bad Faith

Complainant refers to what has been said above on the band activities at the domain sites at issue and on the contact details and/or lack of correct such details. Furthermore, according to Complainant, the implementation of the redirection was such as to deliberately mislead Complainantís customers to believe that Complainant was operating the sites at the domain names at issue and thus creating a loss of goodwill. In addition, the pages operating the redirection links to Complainantís website contained, in its metatag fields, trademarks and other proprietary names held by third parties, including Complainant. Such metatags have been considered as unfair competition and also trademark infringements in several court cases in Finland and abroad.

According to Complainant, Respondent or the person behind Respondent is continuously and deliberately illegally using third parties' trademarks, including Complainantís, for the benefit of the business and/or other activity of Respondent or the person behind it. According to the Finnish Trade Register (extract provided as evidence) Juha-Pekka Köykkä Ė who is indicated as a Finnish citizen in Helsinki - is the sole ordinary member of the board of directors and the Chief Executive Officer of Pusuradio Oy, which is a company with the auxiliary name of Media Pub, which is in turn the registrant of the domain names at issue. He was also the Technical and Administrative Contact for the domain names until April 12, 2001.

Complainant asserts, in summary, that there is a pattern of deliberate and illegal use of third parties' marks, something that is evidenced by a number of circumstances. One such is the registration of both domain names at issue without any legitimate interests in the domain name "radiolinja." Another indication in this direction is the registration of other domain names of which identical and/or other marks are held by third parties and of which Respondent does not have any legitimate use. According to a search conducted at the Whois database of Network Solutions, such registrations include <napakymppi.net> (the trademark Napakymppi being held by MTV), <erotiikanmaailma.net> (the trademark Erotiikan Maailma being held by TV-KUSTANNUS) and <viikkolehti.net> (where <viikolehti.com> is held by a Finnish newspaper). Furthermore, the Internet pages operated under the user name controlled by Juha-Pekka Köykkä illegally exploit the trademarks and other marks owned by third parties, including Complainantís and several world-wide known marks. The banners operated in relation to the e-mail address operated by Juka-Pekka Köykkä before April 12, 2001, included several banners for marketing purposes, among them a banner directed from Media Pubís site, Those pages therefore have a business purpose; they do, however, illegally use the trademarks and other marks owned by third parties for business purposes in the metatags and also in the plain text field. Those third party marks at that site include at least, for instance, Radiolinja, Nokia, Ericsson, Playboy, Hustler, Finnair, Sonera etc. Complainant has submitted printouts of webpages of "www.nic.fi/-jpk/" with an indication that those belong to the same person who has the e-mail address "jpk@nic-fi", which was Juha-Pekka Köykkäīs e-mail address before April 12, 2001.

According to Complainant, Respondent had agreed to meet with Complainant on February 9, 2001, for the purpose of discussing the transfer of the domain names to Complainant. An attorney representing Juha-Pekka Köykkä asked for an offer from Complainant regarding the domain names; the circumstances strongly indicated that such an offer would have been accepted only if it has substantially exceeded Respondentís out-of-pocket costs and Complainant was not willing to proceed under those conditions and therefore the meeting was ended.

Because the activities presented under the domain names are in Finnish and thus targeted to a Finnish audience, any realistic use must misrepresent an association with Complainant and its goodwill and resulting in trademark infringements. Because of the strong establishment of Complainantís trademark on the market, it must be considered as well known under the Finnish Trademark Act and thus enjoying a broad protection; Respondent can not have made itself generally known by the domain names at issue. Consequently, the current use of the domain names by Respondent is in bad faith and with intent to harm Complainantís trademarks and cause loss of goodwill to Complainant. There is, according to Complainant, no other way to interpret Respondentís use of the domain names in order to cause loss of goodwill to Complainantís trademarks than an intent to force Complainant to pay for the domain names in excess of Respondentís out-of-pocket costs in order to have the current use terminated. Finally, due to the strong establishment on the market of Complainantís trademark since 1989, Respondent must have been aware of Complainantís mark when registering the domain names and must have known that any realistic use thereof would infringe the established mark of Complainant.

In the light of the circumstances thus referred to and of the evidence submitted, it can, according to Complainant, only be concluded that the domain names at issue were registered and are being used in bad faith.

Remedies Requested

Complainant requests the Administrative Panel to issue a decision that the domain names at issue be transferred to Complainant.

B. Respondent

Respondent, who has, as mentioned above, been communicated the Complaint, has not submitted any Response and is in default.

 

6. Discussion and Findings

Paragraph 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.

In the case of a default by a Party, Paragraph 14 of the Rules prescribes that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or a requirement under, these Rules, the Panel shall draw such inferences therefrom as it considers appropriate. In this case, Respondent has not submitted any Response and has consequently not, despite the opportunity given, contested any of the contentions by Complainant. The Panel will therefore have to operate and consider the case on the basis of the factual circumstances contained in the Complaint and the documents available to support these contentions.

According to the Registrar Verification the Uniform Domain Name Dispute Resolution Policy applies to the domain names at issue.

Paragraph 4.a of the Policy directs that Complainant must prove each of the following: -

- that the domain name registered by Respondent 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 the domain name and

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

In the following parts of this Decision, the Panel discusses each of those elements.

Identity or Confusing Similarity

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

The domain names at issue are <radiolinja.com> and <radiolinja.net>.

Complainant has valid trademark registrations of, among others, the trademark "Radiolinja" nationally in Finland and also, for instance, trademark applications relating to that mark under the Madrid Protocol in a number of other countries. There is reason to believe that "Radiolinja" in Finland is a mark which is covered by Article 6, Second Paragraph, of the Finnish Trademark Act and thus a mark which is well known and enjoying a broad protection.

The domain names at issue incorporate the trademark "Radiolinja" with the addition of ".com" and ".net" respectively. These additions are, in the view of the Panel, not sufficiently distinguishing factors to remove the likelihood of conclusion.

On the basis of these considerations the Panel concludes that there exists a confusing similarity between the domain names at issue and Complainantís trademark.

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 the domain names.

The Panel notes that the person indicated as Administrative and Technical Contact for the domain names at issue, Maukka Sivonen, does not seem to exist in the Finnish and the Swedish population registers and that he can not be reached directly under the address shown in Stockholm. The Panel also notes that the redirection to Complainantís site www.radiolinja.fi before April 12, 2001, was such as to create confusion among Complainantís customers and was thus likely to create a loss of goodwill. Now, it seems that the sites mainly play hard-rock music but seemingly do not conduct any other business activities. Furthermore, the sites are in Finnish and thus directed to a Finnish audience. Complainantís trademark has a strong position on the Finnish market and the Panel agrees with Complainant to the effect that Respondent can not have made itself generally known by the domain names at issue either prior to the initiation of the present case or thereafter.

In view of the circumstances now referred to, supported by evidence, the Panel concludes that in fact Respondent does not have any rights or legitimate interests in the domain names at issue.

Registration and Use in Bad Faith

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

The Panel first concludes that, due to the position of Complainantís trademark on the Finnish market, it is inconceivable that Respondent did not know about its existence at the time of the registration of the two domain names at issue. The Panel also concludes that Respondent must have been aware that its use of the domain names at issue would be likely to constitute an infringement of Complainantís trademark rights in the Finnish market.

The evidence provided in the case indicates that the redirection links to Complainantís site contained metatags to trademarks held by other parties. In addition, evidence available suggests that Respondent has registered other domain names containing trademarks held by third parties and that the webpages operated with relation to the e-mail address indicated by Juha-Pekka Köykkä before April 12, 2001, include metatags and other use of third party trademarks

While there is no specific evidence about the amount according to which Respondent would be prepared to sell the domain names to Complainant, there is no reason not to believe Complainantís statement that circumstances implicated that the amount would be substantially higher that the coverage of out-of-pocket expenses.

On the basis of these circumstances and the evidence provided by Complainant, which have not been contested by Respondent as no Response has been submitted, the Panel concludes that in fact the domain names at issue have been registered and are being used in bad faith.

Conclusion

On the basis of the foregoing, the Panel concludes that the domain names at issue are confusingly similar to the trademark "Radiolinja" in which Complainant has rights, that Respondent has no rights or legitimate interests in the domain names at issue and that the domain names at issue have been registered and are being used in bad faith.

 

7. Decision

In accordance with Complainantís request and with reference to Paragraph 4.i of the Policy, the Panel requires that the domain names <radiolinja.com> and <radiolinja.net> be transferred to Complainant.

 


 

Henry Olsson
Sole Panelist

Dated: August 28, 2001