WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pohjola Group Insurance Corporation v Jessimet Oy
Case No. D2001-1118
1. The Parties
Pohjola Group Insurance Corporation, a company organised and existing under the laws of Finland, with its principal place of business at Lapinmäentie 1, FIN-00013 Pohjola, Helsinki, Finland, represented by Kimmo Larja.
Jessimet Oy, a Finnish company of Punavuorenkatu 4 A 6, 00120 Helsinki, Finland.
2. The Domain Name and Registrar
The domain name at issue is <pohjola.com>. The Registrar is Network Solutions Inc., of 505 Huntmar Park Drive, Herndon, USA.
3. Procedural History
The complaint was received by the WIPO Arbitration and Mediation Center on September 27, 2001. No response was received from the respondent. George R. F. Souter was appointed Sole Panelist on October 25, 2001.
4. Factual Background
The complainant is a Finnish insurance company, dating from 1897. Throughout this time "Pohjola" has always been the dominant element in the companyís name, other elements changing from time to time in accordance with prevailing insurance company laws. It has a share capital of Ä (Euros) 43,464,660.08.
It has 83 branch offices throughout Finland and claims a clientele of more than 1 million households.
In the year 2000, it claims gross insurance premiums of circa Ä (Euros) 1.1 billion.
In its complaint, the complainant claims no registered trademark covering the territory of Finland, but claims that it has, for decades, marketed and sold its insurance and investment products "in the service name of POHJOLA", and claims benefit of Section 2 of the Finnish Trademarks Act, which provides:
A sole right to a trademark may be acquired even without registration after the mark has become established..
Section 2, third paragraph, of the Finnish Trademarks Act defines what is meant by "established":
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.
The complainant has drawn the Panelís attention to a survey conducted in May 2001, in which POHJOLA has an almost 100% recognition nationally as a company offering insurance services.
5. Partiesí contentions
The complainant contends that it has acquired trademark rights in Finland, that the respondent has no legitimate interests in respect of the domain name at issue, and that the domain name was registered and is being used in bad faith.
The complainant contends that the respondent has registered as domain names the names of many well known Finnish companies, including several public institutions "such as the name of the Finnish Museum of Modern Art: <kiasma.com> and several other trademarks of third parties such as <kesko.com> being one of the biggest retail organization and trading company in Finland", and has provided evidence to this effect.
The complainant also draws the Panelís attention to its previous decision in Kesko Oyj v Jessimet Oy (Case No. D2001-0199), in which case the Panel directed that the domain name at issue be transferred to the complainant.
The complainant contends that the domain name at issue has been registered in order "to prevent the Complainant to use its well-known service mark POHJOLA in a corresponding domain name"
The respondent did not respond to the complaint.
6. Conclusions 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:
(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 the domain name; and
(iii) the domain name has been registered in bad faith and is being used in bad faith.
In connection with the first test, of paragraph 4(a)(i), the complainant must demonstrate that it has trademark rights.
Notwithstanding the lack of registered trademark rights, the Panel decides that the complainant has acquired protectable trademark rights through long and extensive use of its trade sign POHJOLA as a service mark in Finland, and that, accordingly has satisfied the first test of paragraph 4(a)(i).
In connection with the second test, of paragraph 4(a)(ii), the Panel adopts its reasoning in the cited prior Case No. D2001-0199, mutatis mutandis:
"In the Panelís opinion, the mark KESKO is so well established in Finland that it cannot reasonably be argued that the respondent, a Finnish company, could have been unaware of the trademark rights vested in the complainant when registering the domain name, and refers to the decision in case D2000-0102, Nokia Corporation v Nokiagirls.com a. k. a. IBCC, in this connection.
Accordingly, the Panel finds that the complainant has satisfied the test of paragraph 4(a)(ii), that the respondent lacks rights or legitimate interest in respect of the domain name at issue."
It follows from the above that the Panel finds that the respondent registered the domain name at issue in bad faith.
Paragraph 4(a)(iii), however, requires that the domain name registration was not only effected in bad faith, but has also been used in bad faith.
Paragraph 4(b)(ii) of the Uniform Domain Name Dispute Resolution Policy, however, sets out circumstances in which both registration and use in bad faith can be proved to exist, name that the domain name has been registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, providing that you have engaged in a pattern of such conduct.
Clearly, the effect of the respondentís having registered the domain at issue denies it to the complainants, who could have a legitimate use for it.
The circumstances outlined in the above-mentioned prior decision in Case No, D2001-0199, repeated here, together with the complainantís submitted evidence, are sufficient for the Panel to decide that the respondent has been engaged "in a pattern of such conduct", and, accordingly, finds that the complainant has satisfied the third test, of paragraph 4(a)(iii).
The Panel finds that the complainant has satisfied the three tests of paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy, and, accordingly, requires that the domain name <pohjola.com> be transferred to the complainant.
George R. F. Souter
Dated: November 8, 2001