WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sponda Plc v. Motohisa Ohno
Case No. D2007-0579
1. The Parties
The Complainant is Sponda Plc, Helsinki, Finland, represented by Heinonen & Co., Attorneys-at-Law Ltd., Finland.
The Respondent is Motohisa Ohno, Tokyo, Japan, represented by himself.
2. The Domain Name and Registrar
The disputed domain name <sponda.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2007. On April 18, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On April 19, 2007, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing registrant’s contact details. 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 April 20, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2007. The Response was filed with the Center on May 10, 2007.
The Center appointed Gary J. Nelson as the sole panelist in this matter on May 25, 2007. 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.
On June 6, 2007, the Center notified the Panel that a response had been received and that a hardcopy was being forwarded.
4. Factual Background
Complainant is a large real estate company operating in Finland and is listed on the Helsinki Stock Exchange. Complainant owns pending trademark applications for the SPONDA trademark in Finland.
The <sponda.com> domain name was registered by the Respondent on or about September 18, 2002.
5. Parties’ Contentions
Complainant and/or its predecessor in interest is a Finnish real estate investment company founded by the Bank of Finland in 1991. Complainant is the largest real estate company listed on the Helsinki Stock Exchange, and enjoys a fair value property portfolio worth EUR 2.45 billion, as of December 31, 2006.
Complainant focuses on five real estate operations: (1) Office and Retail Properties; (2) Logistics Properties; (3) Property Development; (4) Real Estate Funds; and (5) Russia and Baltic State real estate.
Complainant has been using the SPONDA trademark for real estate related services for more ten years. In Finland, trademark owners can obtain trademark rights through use of the mark in question, prior to the issuance of a formal trademark registration certificate. Complainant owns a pending Finnish trademark application for SPONDA for real estate services, along with a pending International Application (Madrid) designating the European Community, Russia, Norway and Iceland.
The disputed domain name is identical and confusingly similar to the SPONDA trademark in which the Complainant has rights, and the establishment of Complainant’s trademark pre-dates the registration of the contested domain name by Respondent.
Respondent has no rights or legitimate interests in the contested domain name.
Respondent registered and is using the contested domain name in bad faith.
Respondent claims the word “sponda” is a generic term and, therefore, anyone has a right to register this term as a domain name.
Respondent claims he has a legitimate right or interests in owning the <sponda.com> domain name and that he did not register and is not using the <sponda.com> domain name in bad faith.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) The domain name in issue is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) The Respondent has no right or legitimate interest in the contested domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds Complainant has established common law trademark rights in SPONDA for real estate services in Finland.
A common law mark is established when a complainant’s goods or services become distinctive through the acquisition of secondary meaning. Complainant has established secondary meaning in SPONDA through its extensive use and promotion of this mark beginning at least as early as 1991. Evidence of record has established that Complainant has developed and maintains a strong presence in Finland. See Keppel TatLee Banck Limited v. Lars Taylor, WIPO Case No. D2001-0168 (“On account of long and substantial use of the said name (<keppelbank.com>) in connection with its banking business, it has acquired rights under the common law”).
Furthermore, Respondent acknowledges that Complainant has established trademark rights in SPONDA.
The contested domain name, <sponda.com> is identical to Complainant’s SPONDA trademark. The addition of a generic top-level domain name such as “.com” is insufficient to over come a legitimate claim of confusing similarity. See Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409 (finding that “[n]either the addition of an ordinary descriptive word...nor the suffix “.com” detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY”). Accordingly, the Panel finds the <sponda.com> domain name to be confusingly similar to Complainant’s SPONDA trademark.
Moreover, Respondent has admitted that the <sponda.com> domain name is confusingly similar to the SPONDA trademark.
Complainant has proven the requirement of Policy, paragraph 4(a)(i) in regard to the contested domain name.
B. Rights or Legitimate Interests
The Panel finds Respondent does not have any right or legitimate interest in the contested domain name.
Complainant alleges, and Respondent does not deny, that the website corresponding to the <sponda.com> domain name contained a link to one of Complainant’s direct Finnish competitors and that when an Internet User clicks through to reach the competitor’s website, Respondent receives income. Accordingly, the Panel concludes that Respondent’s use of this domain name, which is confusingly similar to the Complainant’s SPONDA trademark, and which resolves to a website presenting click-through opportunities to entities offering services competing directly with services offered by Complainant, is not a bona fide offering of goods and services pursuant to Policy, paragraph 4(c)(iii). See America Online, Inc. v. Fu, WIPO Case No. D2000-1374 (“it would be unconscionable to find […] a bona fide offering of services in a respondent’s operation of [a] web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business”).
Also, Respondent does not claim to have secured a license to use the SPONDA trademark, and Respondent is not commonly known by the name “sponda.” In Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interest could be found where (1) respondent is not a licensee of complainant; (2) complainant’s rights in its related trademarks precede respondent’s registration of the contested domain name; and (3) respondent is not commonly known by the domain name in question. The Panel notes that all three of these conditions apply in the present case to the analysis of the disputed <sponda.com> domain name.
Complainant has proven the requirement of Policy, Paragraph 4(a)(ii) for the contested domain name and Respondent has failed to prove it has rights or legitimate interests in this domain name.
C. Registered and Used in Bad Faith
The Panel finds the Respondent registered and is using the contested domain name in bad faith.
The Panel finds that Respondent registered the <sponda.com> domain name in order to prevent Complainant, the owner of the SPONDA trademark, from reflecting the mark in a corresponding domain name, and that Respondent has engaged in a pattern of this type of conduct.
Respondent admits he has routinely registered domain names corresponding to trademarks owned by others. For example, Respondent admits to having incorporating the trademarks of others into the following domain names:
<spandauballet.com> “a great 80s band.”
<trevorhorn.com> “a great artist/producer.”
<pyroil.com> “a brand of Noma corporation.”
<audreyhepburn.net> “a great actress, my wife likes her.”
Respondent does not deny that he registered the following domain names, which incorporated the trademarks of others:
Moreover, prior WIPO UDRP panels have found Respondent has engaged in predatory domain name registration activity. See Prestige Brands Holdings, Inc., and Prestige Brands International, Inc. v. The domain is not for sale/Motohisa Ohno, WIPO Case No. D2006-0608; Cloer Elektrogeräte GmbH v. Motohisa Ohno, WIPO Case No. D2006-0026.
Complainant has proven the requirement of Policy, paragraph 4(a)(iii) in regard to the contested domain name.
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 <sponda.com> be transferred to the Complainant.
Gary J. Nelson
Date: June 8, 2007