WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Iittala Oy Ab and Nuutajärvi village v. Sergey Fedorov
Case No. D2004-0773
1. The Parties
The Complainants are Iittala Oy Ab, a company incorporated under the law of Finland with an address in Hämeentie, Helsinki, Finland, and the Nuutajärvi village of the Municipality of Urjala in Finland both represented by Heinonen & Co., Attorneys-at-Law Ltd., Finland.
The Respondent is Sergey Fedorov, of Moscow, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <nuutajarvi.net> is registered with Parava Networks, Inc. dba RegistrateYa.com & nAAme.com of Houston, Texas, United States of America.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2004. On September 24, 2004, the Center transmitted by email to Parava Networks, Inc. dba RegistrateYa.com & nAAme.com a request for registrar verification in connection with the domain name at issue. On September 24, 2004, Parava Networks, Inc. dba RegistrateYa.com & nAAme.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 28, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was October 18, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 20, 2004.
The Center appointed Zoltán Takács as the Sole Panelist in this matter on October 25, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The language of this proceeding is English.
4. Factual Background
Nuutajärvi is the name of the village located in the Municipality of Urjala in Finland, first mentioned in documentation in the fifteenth century. The village’s most famous attraction is the glassworks founded in 1793, being Finland’s oldest glass factory and widely known as the Nuutarjärvi Glass Village. In addition to the glassworks, Nuutarjärvi village also hosts the Nuutarjärvi Glass Museum and every year approximately 100,000 tourists visit the village and the museum.
Iittala Oy Ab owns the Finnish trademark registration No. 84323 “NUUTÄJARVI 1793” (stylized) for glassware goods of International Class 21 with priority date of March 27, 1980. The trademark was registered on February 21, 1983.
Iittala Oy Ab also owns the following domain names: <nuutajarvi.com> registered on January 23, 1998 and <nuutajarvi.fi> obtained on April 20, 1999.
The disputed domain name was initially obtained and registered on November 30, 1999 by an entity called AS Glass Nuutarjavi.
The disputed domain name was transferred to the Respondent on February 15, 2004, and is automatically auto-forwarded to a website at “www.allpornsites.net/mature”, a site of explicit pornographic content.
Although the Whois database lists “sdf fdgg” as the owner of the disputed domain name, in its verification of September 24, 2004, the Registrar confirmed the real identity of the domain name owner, as Sergey Fedorov.
The Municipality of Urjala and the village called Nuutajärvi consented to the transfer of the disputed domain name to Iittala Oy Ab, in the event that the WIPO Panel orders the transfer of the <nuutarjarvi.net> domain name.
5. Parties’ Contentions
Identical or Confusingly Similar
Complainants claim that the disputed domain name <nuutajarvi.net> is confusingly similar to Iittala Oy Ab’s Finnish trademark registration No. 84323 “NUUTÄJARVI 1793” (stylized), since the disputed domain name and the trademark differ only in elements that generally do not have a distinctive character, in this case the elements to be taken into consideration are the date of establishment of the NUUTÄJARVI Glass Factory, the letter “ä” and the generic top level domain “.net”.
Complainants further allege that Iittala Oy Ab has acquired trademark rights in the Nuutajärvi name also through continuous commercial use for more than two decades.
Rights or Legitimate Interests
The disputed domain name was originally acquired and owned by a Finnish glass bower trading under the name AS Glass Solapuro, who apparently attempted to sell the domain name to Iittala Oy Ab at the beginning of 2003 for a sum of 100,000 Euro. Iittala Oy Ab refused to pay the requested price, upon which Mr. Solapuro made a reduced offer to sell for 10,000 Euro at the end of 2003. Iittala Oy Ab also rejected this offer. Shortly after this Mr. Solapuro transferred the disputed domain name to the current registrant, who operates a pornographic website under the disputed domain name. Complainants contend that neither the original owner nor the Respondent had rights or legitimate interests in the disputed domain name.
Registered and Used in Bad Faith
Complainants allege that the domain name <nuutajarvi.net> has been registered to prevent Iittala Oy Ab from reflecting its corresponding “NUUTAJÄRVI” trademark and Nuutajärvi village from reflecting its name in a corresponding domain name. Further, the original owner tried to extort compensation from Iittala Oy Ab for the transfer of the domain name greatly exceeding the costs of registration and maintenance of the domain name, and when unsuccessful, transferred the domain name to the Respondent who runs a hard core pornographic website under the disputed domain name. Complainants believe that the original registrant and owner of the disputed domain name transferred the name to the Respondent to harm the Complainants and their business.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
The Policy adopted by Internet Corporation for Assigned Names and Numbers on August 26, 1999, has been designed to curb abusive domain name registrations. In order to succeed in an administrative proceeding initiated under the Policy, complainants are required to show without exception the following elements:
4(a)(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
4(a)(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
4(a)(iii) the Respondent registered and is using the domain name in bad faith.
A. Identical or Confusingly Similar
Under this paragraph, there are two requirements that a Complainant must establish; firstly that it has rights in a trade or service mark, and secondly that the domain name is identical or confusingly similar to the mark.
The validity of the Finnish trademark registration No. 84323 “NUUTAJÄRVI 1793” (stylized) with a priority date of February 21, 1983, is sufficient for the Panel to find the first requirement of Paragraph 4(a)(i) of the Policy met, that is that Iittala Oy Ab, one of the Complainants has corresponding rights in a mark confusingly similar to the disputed domain name. In consequence of this the Panel did not go into examining the alleged “common-law” rights of either of the Complainants in the “Nuutajärvi” mark, nor has he done so in considering the Nuutajärvi village’s name rights as to a geographical indication.
Regarding the other requirement of Paragraph 4(a)(i), namely confusing similarity of the domain name to the above-identified trademark of Iittala Oy Ab, the Panel applied a comparison test common in the trademark law. Evidently, the distinctive part of the domain name, the verbal element “nuutajarvi” would in most jurisdictions be considered confusingly similar to the highly distinctive part of the trademark in which one of the Complainants has rights, that is to “NUUTAJÄRVI”.
The Panel finds that the Complainants have established the element of Paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
As a result of the Respondent’s default its contentions are not expressed. It is noted that the Complainants must make out a case under this element.
The Panel finds that the Complainants submitted a full and persuasive submission. On this point the Panel looked into the possibility that either the original registrant or the Respondent have or had rights or legitimate interests in the disputed domain name.
The Complainants assert that the Respondent has no rights or legitimate interest in the domain name, as required under Paragraph 4(a)(ii) of the Policy.
The Respondent is apparently an individual domiciled in Russia, operating, or allowing automatic linkage of the disputed domain name to a pornographic website. There is no evidence, or even presumption, which would in any way connect the Respondent to the name of the village of Nuutajärvi, in which one of the Complainants has trademark rights. The name in question does not appear to have any meaning in any language but Finnish.
The Panel analyzed whether any of the circumstances provided in Paragraph 4(c) of the Policy, or any other possibly applicable circumstances might apply, but could not locate any circumstances in favor of the Respondent to that end and therefore finds that the requirements of Paragraph 4(a)(ii) of the Policy have been met. If it were otherwise, it would be reasonable to expect that the Respondent would make reference to and/or try to establish his, or the original registrant’s rights or legitimate interests in the domain name at issue.C. Registered and Used in Bad Faith
A Finnish individual from Nuutajärvi, who was doing business in the glass making industry, originally registered the disputed domain name. The Panel stresses the importance of this because glassmaking has been practiced in the village of Nuutajärvi for more than 200 years, with Iittala Oy Ab being Finland’s biggest glassware manufacturer, producing its products in Nuutajärvi.
In Sydney Opera House Trust v. Trilynx Pty. Limited, WIPO Case No. D2000-1224 a finding of bad faith was made where the respondent “should have known” of the registration and use of the complainant’s trademark before it registered the disputed domain name. The Panel notes that the Complainants have made a number of references to the original domain name owner’s attempts to sell the disputed domain name to Iittala Oy Ab for compensation exceeding any possible out-of-pocket expenses directly related to the domain name, which if proven would clearly indicate that the circumstances outlined in Paragraph 4(b)(i) of the Policy are present. Even though the Complainants did not submit evidence in this regard, the Panel comes to the conclusion of bad faith registration based upon overall assessment of circumstances in relation to acquisition of the domain name by the original owner and the subsequent transfer to the current Respondent. Notably, as a glass bower from, or closely connected to Nuutajärvi village, the original owner should have known for the trademark registration in place for Iittala Oy Ab at the time of filing the domain name application, and also for the wide use of the mark by Iittala Oy Ab in Finland, by virtue of which use Iittala Oy Ab obtained trademark rights in the Nuutajärvi mark even if it were not registered by the National Board of Patents and Registrations of Finland. Furthermore, the transfer of the Domain name occurred in circumstances that suggest that bad faith may have been involved. The Policy does not limit the circumstance in relation to applicability of Paragraph 4(b) for the purpose of Paragraph 4(a)(iii), which makes the Panel convinced that the above circumstances sufficiently prove bad faith registration.
Paragraph 4(a)(iii) of the Policy requires not only bad faith registration but also bad faith use of the domain name in order that a complaint is successful.
Nuutajärvi glassworks and the glass museum are both very popular tourist attraction in Finland, and approximately 100,000 visitors per year to the Complainant’s website indicates that in the on-line environment a fair number of Internet users conduct searches on the word “Nuutajärvi”. It is not hard to presume that a high number of users would type “nuutajarvi” in either of the generic top-level domains, and in case of “.net” that would immediately shift them onto the website run by the Respondent.
For the purpose of Paragraph 4(a)(iii), use of the domain name with intent to attempt to attract, for commercial gain, Internet users to the disputed domain name shall be evidence of use of the domain name in bad faith. The popularity of the Nuutajärvi village, the glassworks and the glass museum commonly known under “Nuutajärvi” in all probability do result in high number of searches, attempts to get information and/or access to “Nuutajärvi” related, affiliated websites. The Respondent’s website is explicitly pornographic and its use generates income. Use of the disputed domain name, which has no connection whatsoever to the Respondent and his business this Panel views as evident attempt to divert and attract for commercial gain people interested in Nuutajärvi.
In Toronto Convention & Visitors Association v. This Domain is For Sale/Email Your Offers, WIPO Case No. D2001-1463 the panel observed the following: “the fact that the site to which the dispute domain name resolves is a pornographic site carries with it two consequences. First, (….) it is making a misleading and deceptive claim to association. Secondly, and arguably more seriously, some persons will clearly be misled into thinking that there may be an association, but an association with which the Complainant) makes and would prefer to make no claims. The proliferation of pornographic websites on the Internet is completely beyond the scope of the UDRP. Nevertheless, Complainants who operate a bona fide business or service are entitled in appropriate circumstances to rely upon the UDRP as protecting their interests if they have been established and to object to their reputation and goodwill being associated with pornographic websites”. This the Panel finds applicable to this case.
The Panel therefore finds the Respondent’s activity falling into exemplar of Paragraph 4.b.(iv) of the Policy and requirement of Paragraph 4(a)(iii) of the Policy fulfilled.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <nuutajarvi.net> be transferred to the first-named Complainant Iittala Oy Ab.
Dated: November 8, 2004