WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Fibox Oy Ab v. Ville Muilu

Case No. D2007-1429

 

1. The Parties

The Complainant is Fibox Oy Ab, Jorvas, Finland, represented by Veikko Palotie & Co., Finland.

The Respondent is Ville Muilu, Vantaa, Finland.

 

2. The Domain Name and Registrar

The disputed domain name <fibox.org> is registered with CSL Computer Service Langenbach GmbH d/b/a Joker.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2007. On September 28, 2007, the Center transmitted by email to CSL Computer Service Langenbach GmbH d/b/a Joker.com a request for registrar verification in connection with the domain name at issue. On October 1, 2007, CSL Computer Service Langenbach GmbH d/b/a Joker.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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 October 3, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 23, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 24, 2007.

The Center appointed Ms. Kristiina Harenko as the sole panelist in this matter on October 30, 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.

 

4. Factual Background

The Complainant has trademark registrations for the trademark FIBOX in numerous countries listed below:

- Finland, registration date February 22, 1993, registration number 125206, class 9;

- Australia, registration date July 1, 1993, registration number 573125, class 9;

- Austria, registration date May 14, 1992, registration number 141971, class 9;

- Benelux, registration date October 1, 1992, registration number 0511806, class 9;

- Canada, registration date June 24, 1994, registration number TMA429400, wares; enclosures for electric installations;

- China, registration date March 21, 1995, registration number 736136, class 9;

- Czech Republic, registration date February 24, 1995, registration number 183039, classes 6, 9 and 17;

- Denmark, registration date March 19, 1993, registration number VR 1993 02279, class 9;

- Estonia, registration date April 26, 2000, registration number 30911, class 9;

- Germany, registration date February 2, 1993, registration date 2029308, class 9;

- Greece, registration number 114711, class 9;

- Hong Kong, SAR of China, registration date September 28, 1995, registration number 199508183, class 9;

- Hungary, registration date November 14, 1996, registration number 140681, class 9;

- New Zealand, registration date January 27, 1995, registration number 216479, class 9;

- Poland, registration date October 19, 1995, registration number 87384, class 9;

- Singapore, registration date February 26, 1992, registration number T9201417B, class 9;

- Spain, registration number M 1688031, class 9;

- Sweden, registration number 0250290, class 9;

- Switzerland, registration date October 18, 1994, registration number P-412692, class 9;

- Turkey, registration date November 30, 1993, registration number 148531, class 9;

- United Kingdom of Great Britain and Northern Ireland, registration date February 5, 1993, registration number 1490980, class 9;

- United States of America, registration date November 7, 1995, registration number 74262868, international class 9.

The extracts from relevant trademark databases are attached to the Complaint as Annexes 6 – 27. The Complainant referred also to trademark registrations in Italy, Malaysia, Norway, Saudi Arabia, Slovenia, South Africa, Republic of Korea, Taiwan, Province of China and Thailand but no documents showing these registrations were provided.

The disputed domain name <fibox.org> was registered on May 12, 2006.

 

5. Parties’ Contentions

A. Complainant

The Complainant (Fibox Oy Ab) is one of the largest enclosure manufactures in the world. It is the market leader in thermoplastic enclosures used for protecting electrical and electronic components operating in hostile environments. The Complainant has got six manufacturing sites located in Finland, Germany and Republic of Korea, as well as several service centers located in Europe, China, Republic of Korea and the United States of America.

The term “Fibox” is the most relevant part of the Complainant’s registered business name “Fibox Oy Ab”. The Complainant has also got several subsidiary companies in Finland and in other countries, the business name of which contain the word “Fibox”.

The Complainant has registered the term “fibox” as a trademark in various countries as described above in Section 4. The FIBOX trademarks are used world wide with enclosure products manufactured by the Complainant as well as with solutions and services related to enclosures and provided by the Complainant.

The Complainant contends that the disputed domain name is identical to the trademark FIBOX and confusingly similar to the protected business name of the Complainant “Fibox Oy Ab” as well as to most of the business names of Complainant’s subsidiary companies.

The Complainant refers to the generally established principle that the suffix “.org” does not carry the domain name away from the identity or similarity.

To the Complainant’s knowledge, the Respondent has never been commonly known by the name “Fibox”. Nor has the Complainant ever assigned, granted a license, or sold the FIBOX trademark to the Respondent or otherwise authorized Respondent to use the FIBOX trademark.

The Complainant contends that the Respondent is using the disputed domain name in bad faith. Firstly, the Respondent is trying to attract visitors to other websites, “www.aamuseksi.net” (aamuseksi means in English morning sex) and “www.humane.fi” by using Complainant’s name and reputation and thus providing profitable Internet traffic to the abovementioned websites to which there are links on the website under the domain name <fibox.org>.

In violation of paragraph 4(b)(iv) of the Policy, the Respondent is trying, obviously for commercial gain, to attract visitors to an adult entertainment website, which among other things includes a web shop where visitors can buy pornographic videos, sex toys, and clothing accessories related to adult entertainment. Within the world of pornography or adult entertainment the term “Fibox” has no meaning or marketing value. Its only value to the Complainant is to attract visitors by using the Complainant’s name and reputation. It is not bona fide offering of goods and services for the Respondent to link the disputed domain name to a website that offers adult entertainment. Such usage is also apt to tarnish the FIBOX trademarks of the Complainant.

The other website linked to the website under domain name <fibox.org> does not seem to be a web shop but it is a forum for discussion with an abuse of Walt Disney characters. This is also apt to tarnish the FIBOX trademarks.

Secondly, the Respondent is trying to tarnish the FIBOX trademark and business of the Complainant by publishing disinformation of the Complainant on the website under the domain name <fibox.org>. The website contains only few pages, each of them containing hardly anything but information that is obviously intended to harm the Complainant. The printouts of the web pages are attached to the Complaint. The Complainant refers especially to the page “Haastattelut” (in English “Interviews”) where the Respondent tries to intimate that the Complainant has or has had some daunting connections to Democratic People’s Republic of Korea and that the Complainant’s ways of working are morally dubious. However, it is blatantly obvious that the “Interview” on the page is a complete fabrication and the information on that page is not true. Such disinformation especially when published on a website which contains the Complainant’s business name and trademark, is apt to tarnish the trademark and business of the Complainant.

The Respondent is using the domain name in a way that creates a likelihood of confusion concerning the source of the website. The website is designed to have almost the same color scheme as all the websites of the Complainant (e.g. “www.fibox.fi” and “www.fibox.org”). Moreover, there is no accurate information about the holder of the site on the website. Visitors cannot easily see that the website does not belong to the Complainant. The website only contains an e-mail address as contact information, as well as a vague piece of information about the copyright holder “Copyright 2005 – 2007 Fibox.org”.

The Complainant concludes that the contents of the website, as described in the Complaint and demonstrated by printouts from the website, show that the Respondent is neither using nor preparing to use the disputed domain in connection with a bona fide offering of goods and services. According to the Complainant the above mentioned also verifies that the Respondent is not making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the FIBOX trademark.

Furthermore the Complaint refers to the Finnish Act on Domain Names (228/2003) which includes provisions on Finnish country code (“.fi”) domain names.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove the following elements:

(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

Under paragraph 15(a) of the Rules, this Panel must “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”.

In view of the Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.

A. Identical or Confusingly Similar

The Complainant has based its Complaint among other things on the fact that the disputed domain name <fibox.org> is confusingly similar to its business name and auxiliary firm-names. Pursuant to paragraph 3(a)(i) the Policy is not applicable to disputes based on rights in business names or auxiliary firm-names unless the Complainant can establish common law or unregistered trademark rights in the name or auxiliary firm name.

The Complainant has evidenced by extracts from various trademark databases that the Complainant is the owner of numerous trademark registrations in several countries for FIBOX trademarks.

The disputed domain name <fibox.org> is identical to the Complainant’s trademark FIBOX. Applying the similarity test, the suffix “.org”, which indicates the gTLD in which the domain name is registered cannot be taken into consideration since otherwise a domain name would practically never be identical to a protected trademark.

The Complainant has proved the first element of paragraph 4 (a) of the Policy.

B. Rights or Legitimate Interests

In this respect the Complainant has, according to paragraph 4 (a)(ii) of the Policy, to prove that the Respondent has no rights or legitimate interests in the domain name at issue.

The Complainant has contended that the Respondent is not a licensee of, or otherwise affiliated with the Complainant. Neither is there use nor are there preparations showing the use of the domain name with a bona fide offering of goods or services. The Respondent is not commonly known by the domain name. The Respondent is not making a noncommercial use of the domain name.

To support its contentions in this respect, the Complainant has invoked a number of circumstances, supported by documentary evidence. Despite the opportunity given, the Respondent has not contested or commented on the contentions by the Complainant.

On the basis of these circumstances the Panel is satisfied that the evidence submitted by the Complainant sufficiently supports its contention that the Respondent has no rights or legitimate interests in the domain name at issue.

C. Registered and Used in Bad Faith

For the purposes of determining if the bad faith element is present, the Panel considers the circumstances of the registration and use of the domain name as set out in paragraph 4(b) of the Policy noting that this does not impose any limitation on how the registration and use of a domain name in bad faith is evidenced.

The Panel notes that the Respondent was probably aware and at least should have been aware of the existence of the Complainant’s trademarks at the time of registration of the disputed domain name. The Panel notes that the word “Fibox” does not have any meaning in the Finnish language. It is therefore not a word one would choose unless the intention is to benefit from misdirected traffic. The Respondent’s probable awareness of the Complainant’s trademarks and business is also demonstrated by the fact that the Respondent’s website to which the disputed domain name resolves includes information of the Complainant which is obviously intended to harm the Complainant. The Respondent intimates that the Complainant has or has had some daunting connections to Democratic People’s Republic of Korea and that the Complainant’s ways of working are morally dubious. Such information is apt to tarnish the trademark and business of the Complainant.

The Panel indicates that even though the Policy is not a forum to assess whether the information is legally infringing or not, it must be highlighted that damage to goodwill not supported by any evidence, is occurring via use of a domain name confusingly similar to the Complainant’s registered trademark. Such use is therefore likely to tarnish and damage the trademark irreparably. Since the Respondent is not apparently a competitor, the behavior cannot fall under the provision of paragraph 4(b) (iii) and therefore be considered primarily aimed at disrupting the business of a competitor, but can certainly be considered an additional circumstance evidencing bad faith.

Furthermore, it is apparent that the Respondent is attracting Internet users to a website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark. The website contains links to another website that contains a web shop where visitors can buy pornographic videos, sex toys, and clothing accessories related to adult entertainment. Such usage is also apt to tarnish the Complainant’s trademark and is evidence of bad faith usage.

Finally, the lack of a response to this Complaint infers that the Respondent in all likelihood would not have been able to demonstrate any good faith use of the domain name. Based on the foregoing, the Panel finds that the domain name was registered and used in bad faith.

 

7. Decision

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, <fibox.org> be transferred to the Complainant.


Kristiina Harenko
Sole Panelist

Dated: November 13, 2007