WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kelley Blue Book Company, Inc. v. Sanoma Magazines Finland Oy
Case No. DBIZ2002-00193
1. The Parties
The Complainant is Kelley Blue Book Company, Inc. of 5 Oldfield, Irvine, California, United States of America, represented by John P. Rynkiewicz, Esq. and Robert Barnes, Esq. of Kaye Scholer LLP of Washington, D.C and Los Angeles, United States of America.
The Respondent is Sanoma Magazines Finland Oy of P.O. Box 100, Sanoma, Finland 00040, represented by Riku Hakkarainen.
2. The Domain Name and Registrar
The disputed domain name is <bluebook.biz>.
The Registrar is Network Solutions, Inc., of Dulles, Virginia, United States of America.
3. Procedural History
This is an administrative proceeding in accordance with the Start-up Trademark Opposition Policy for .BIZ, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 ("the STOP"), the Rules for Start-up Trademark Opposition Policy for .BIZ, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 ("the STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ ("the WIPO Supplemental STOP Rules").
The Complaint was filed at the WIPO Arbitration and Mediation Center ("the Center") by email on April 27, 2002, and in hard copy on May 2, 2002. Its receipt was acknowledged on May 10, 2002. On May 31, 2002, the Center determined that the Complaint complied with all formal requirements of the STOP Rules.
On June 5, 2002, the Center formally dispatched copies of the Complaint by post/courier (with enclosures) to the Respondent at the address as recorded with the Registrar and by email (without attachments). The Center included with that material a letter dated June 5, 2002, containing notification of the commencement of this administrative proceeding, with copies (of the Complaint without attachments) to the Complainant, the Registrar and ICANN.
The last day specified by the Center for a Response was June 25, 2002. A Response was filed by email on June 17, 2002, and in hard copy on June 20, 2002. On June 17, 2002, the Center acknowledged receipt of the Response.
On June 21, 2002, the Center formally notified the parties of the appointment of Alan L. Limbury as panelist, Mr. Limbury having submitted a Statement of Acceptance and Declaration of Impartiality and Independence. That day the Center transmitted the case file to the Panel and notified the parties of the projected decision date of July 5, 2002.
The Panel is satisfied that the Complaint complies with the requirements of the STOP Rules and the WIPO Supplemental STOP Rules; payment was properly made; the Panel agrees with the Centerís assessment concerning the Complaintís compliance with the formal requirements; the Center discharged its responsibility under paragraph 2(a) of the STOP Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint; a Response was filed within the time specified in the STOP Rules and the Panel was properly constituted.
The language of the proceedings was English, being the language of the Registration Agreement.
4. Factual Background
The Complainant publishes the "Kelley Blue Book", a well-known guide to used car values, first published in 1926. It claims long established common law rights in the trademark BLUE BOOK.
The Complainant is the registered proprietor of U.S. trademarks No. 1,904,124 KELLEY BLUE BOOK being a device mark, registered on July 11, 1975, in International Classes 9, 16, 35 and 36; No. 1,142,514 KELLEY BLUE BOOK being a device mark, registered on December 9, 1980, in International Class 16 and with a disclaimer as to the exclusive use of the words "Blue Book" apart from the mark as shown.
The Complainant has made applications for U.S. registration of the word mark KELLEY BLUE BOOK (with a disclaimer as to the words "Blue Book") in International Classes 9, 16, 35 and 36 and for European Community and Canadian registration of the marks KELLEY BLUE BOOK and BLUE BOOK.
On February 15, 1999, a company called Helsinki Media Company Oy became the registered proprietor of the trademark BLUE BOOK in Finland. Subsequently its blue book business was transferred to a company called Helsinki Media Oy, the Respondent, which on November 20, 2001, changed its name to Sanoma Magazines Finland Oy. Consequently, when the domain name was registered to the Respondent, the Respondent was the registered proprietor of the Finnish trademark BLUE BOOK.
On August 16, 2000, Helsinki Media Company Oy applied to register the trademark BLUE BOOK in the European Community in International Classes 35 (for advertising, business management and business administration) and 41 (for education, providing of training and cultural activities). The mark was registered in the name of that company on September 17, 2001 (No. 001811637), by which time its assets and the blue book business had been transferred to the Respondent.
The disputed domain name was registered in the name of the Respondent on March 27, 2002.
5. Partiesí Contentions
The disputed domain name is identical and confusingly similar to the Complainantís BLUE BOOK mark. The Respondent has no rights or legitimate interests in the disputed domain name. Among other things, the Complainant has not licensed the Respondent to use the Complainantís mark and the Respondent is not the owner of a trademark or service mark that is identical to the domain name in question. The Respondent registered the disputed domain name in bad faith.
The Complainant does not have a word trademark for "Blue Book".
The domain name is identical to a trademark in which the Respondent has rights. The Respondent has rights and legitimate interests in respect of the domain name, which was not registered and is not being used in bad faith.
In April 2002 in another challenge case, the Respondent delivered its trademark documents to the Complainant, so the Complainant knows the Respondent has trademark rights and has provided misleading information to the Panel.
6. Discussion and Findings
STOP Rule 15(a) requires this Panel to decide this Complaint on the basis of the statements and documents submitted and in accordance with the STOP, the STOP Rules and any rules and principles of law that it deems applicable.
The Complainant is required by paragraph 4 (a) of the STOP to prove each of the following three elements:
(a) the domain name is identical to a trademark or service mark in which the Complainant has rights;
(b) the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) the domain name has been registered or is being used in bad faith.
Rights in a trademark
Having regard to the Respondentís successful demonstration of its rights and legitimate interests in the disputed domain name, it is unnecessary for the Panel to determine whether the Complainant has established in the material it has submitted to the Panel that it has trademark rights in the words BLUE BOOK in any country.
The disputed domain name is identical to the trademark BLUE BOOK in which the Complainant asserts rights. More importantly, the disputed domain name is identical to the Respondentís registered trademark.
The Complainant bears the onus of proof on this, as on all issues.
The Respondent has, however, conclusively demonstrated, under STOP Rule 4(c)(i), that it has rights and legitimate interests in respect of the disputed domain name by reason of its ownership of the registered trademark BLUE BOOK in Finland.
The Complainant has failed to establish this element.
The Respondent has clearly refuted any possible claim of bad faith that could be made.
The Complainant has failed to establish this element.
Reverse domain name hijacking
STOP Rule 1 defines reverse domain name hijacking as "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name." See also STOP Rule 15(d). To prevail on such a claim, a Respondent must show either that the Complainant knew of the Respondentís unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith: Sydney Opera House Trust v. Trilynx Pty. Ltd., WIPO Case No. D2000-1224 and Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151 or that the Complaint was brought in knowing disregard of the likelihood that the respondent possessed legitimate interests: Smart Design LLC v. Hughes, WIPO Case No. D2000-0993.
The Respondent asserts that it informed the Complainant of the Respondentís trademark rights in April in connection with another domain name dispute. Evidence of this has not been provided. This Complaint was filed on April 27, 2002. On the material before the Panel it is not possible to conclude that the Complainant was informed of the Respondentís trademark rights before it filed this Complaint. Under these circumstances a finding of reverse domain name hijacking would be inappropriate.
Pursuant to paragraphs 4(i) of the STOP and 15(d) of the STOP Rules, the Panel finds that this dispute is not within the scope of paragraph 4(a) of the STOP and accordingly the Complaint is dismissed.
Pursuant to STOP Rule 15(e)(ii), the Panel decides that no subsequent challenges under the STOP against the domain name <bluebook.biz> shall be permitted.
Alan L. Limbury
Dated: July 1, 2002
1. The certificate in relation to No. 1,904,124 in the papers (Complaint Ex. C) is incomplete, so it is not apparent whether there is a disclaimer as to the exclusive use of the words "Blue Book" in relation to that mark.