WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Stora Enso Oyj v. Alex Osipov
Case No. D2007-1511
1. The Parties
The Complainant is Stora Enso Oyj, Helsinki, Finland, represented by Valea AB, Sweden.
The Respondent is Alex Osipov, St. Petersburg, Russian Federation, represented by KONSUL Law Firm, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <emetsa.com> (the “Domain Name”) is registered with NICCO Ltd., Russian Federation (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2007 against the entity Eurobox Ltd. On October 16, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name at issue. The Center then sent two reminders of the same request, dated October 24, 2007, and October 29, 2007, respectively. On October 30, 2007, the Registrar transmitted by email to the Center its verification response whereby it informed the Center that Alex Osipov is listed as the registrant of the Domain Name, provided his contact details, and confirmed that the Policy applied to the Domain Name.
On October 31, 2007, the Center informed the Complainant that the Complaint was administratively deficient as to the identity of the Respondent and the language of the Complaint. On November 1, 2007, the Center extended until November 12, 2007 the time limit for filing of the amendment to the Complaint, and issued a statement related to the language of the administrative proceedings. Complainant was invited to react to this statement no later than November 12, 2007.
In response to the Complaint Deficiency Notification and the statement on the language of the proceedings issued by the Center, Complainant filed two amendments to the Complaint - on October 12, 2007, and on October 14, 2007, respectively. With the first amendment, Complainant requested that English be the language of the proceedings. With the second amendment, Complainant named Alex Osipov as Respondent in place of Eurobox Ltd.
The Center verified that the Complaint, together with the amendments to 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 November 15, 2007. The Notification of Complaint and Commencement of the Administrative Proceeding was sent to Respondent and to Eurobox Ltd. in both English and Russian languages. Respondent was invited to submit its comments as to the language of the administrative proceeding no later than November 22, 2007.
On November 22, 2007, Respondent objected to Complainant’s request that English be the language of the proceedings. Respondent insisted that, in the absence of an agreement between the parties, the proper language should be Russian, citing Rules, Paragraph 11. Respondent also insisted that the Complaint should be submitted by Complainant in the Russian language and formally notified to Respondent in order the administrative proceeding to be properly commenced.
On November 22, 2007, the Center notified the Parties of its decision to accept the Complaint as filed in English, to accept a Response in either English or Russian, and to appoint a Panel familiar with both languages.
In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2007. The Response was filed with the Center on December 5, 2007.
The Center appointed Assen Alexiev as the sole panelist in this matter on December 18, 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.
In relation to the language of the administrative proceeding, the Panel considered the following:
Although vigorously rejecting the request of Complainant that English be the language of proceedings, Respondent’s representative actually neither claimed, nor showed any language difficulties in acquainting with the Complainant and with commenting on it, in English, on the Policy, the Rules, and the various prior decisions issued under the Policy. Respondent did not request any extension of the time limit for submission of its Response due to language difficulties. Also, the website associated to the Domain name is in the English language. Therefore, the Panel is of the opinion that Respondent’s representative has sufficient command of the English language in order to understand the nature of the proceeding and the contentions of Complainant, and on this basis, to formulate and to present Respondent’s case in the Russian language. The Response submitted in Russian is accepted and taken into account by the Panel, as it is familiar with both English and Russian languages.
Neither of the parties would be put at a disadvantage if English is chosen as the language of the proceedings, as it is not the native language of any of them, while they both understand it. A request to the Complainant to submit its Complaint in the Russian language would cause additional and unnecessary expense and delay of the proceedings.
On this basis, and on the grounds of Rules, Paragraph 11(a), and Rules, Paragraph 10(a), (b) and (c), the Panel decided that the language of the administrative proceeding be English.
Respondent raised a procedural issue related to the filing date of the second amendment to the Complaint. The deadline fixed by the Center for the submission of the amended Complaint was October 12, 2007. The second amendment to the Complaint was filed on October 14, 2007 – after this deadline. On this basis Respondent claimed that, pursuant to Rules, Paragraph 4(b), the administrative proceeding should be deemed withdrawn. The Panel does not share this view, for the following reasons:
The logic incorporated in Rules, Paragraph 4(b), is in line with the goal defined in Rules, Paragraph 10(c) – that the administrative proceeding takes place with due expedition. The purpose of Rules, Paragraph 4(b) is to ensure that the commencement of the administrative proceeding will not be endlessly delayed by defaulting complainants, and, more generally, that Providers such as the Center will not be unnecessarily burdened by defective complaints, and will be able to shift their resources to other tasks.
Complainant’s conduct in this proceeding cannot be regarded as causing any delay of the proceedings. The initial Complaint was filed against Eurobox Ltd. which was listed as registrant of the Domain Name at the time. Therefore, the deficiency as to the name of Respondent was not a mistake of Complainant, but was caused by the transfer of the Domain Name, effected before the notification of the Complaint to Respondent. Complainant reacted several times to the Complaint Deficiency notification and the statement by the Center in relation to the language of the proceedings, by contacting the Center and submitting two consecutive amendments to the Complaint. The second amendment was filed only two days after the deadline fixed by the Center.
There is also the general rule set in Rules, Paragraph 10(a). Its purpose is not only to ensure that the administrative procedure is not delayed, but also that it is successfully completed with a decision on the merits of the case, thus achieving the main goal of the Policy – the resolution of domain name disputes.
Therefore, in the Panel’s opinion, the administrative proceeding should not be deemed withdrawn on the basis of Rules, Paragraph 4(b), and the Panel has to proceed with issuing its decision.
In relation to its jurisdiction to decide on the subject-matter of this proceeding, the Panel notes that, according to the confirmation received by the Registrar, the Policy applies to the Domain Name, so Respondent has subjected itself to the provisions of the Policy. Therefore, Respondent’s reference to the provisions of the Convention for the Protection of Human Rights and Fundamental Freedoms in no way limits the application of the Policy and the powers of the Panel under the Policy and the Rules to decide this case.
4. Factual Background
Complainant, Stora Enso Oyj is an integrated paper, packaging and forest products company, producing wood products, packaging board, and publication and fine paper. Stora Enso was established in 1998 after a merger between the Swedish company Stora and the Finnish company Enso, which resulted in one of the world’s largest forest products companies.
Complainant is the owner of the following trademarks (the “Complainant’s trademarks”):
- The figurative trademark EMETSÄ, CTM registration No. 004510608, applied for in July 22, 2005, and registered in March 20, 2007, for goods and services in classes 35, 40, and 44. This trademark consists exclusively of the letters “eMetsä” in red typeface; and
- The word trademark EMETSÄ, CTM registration No. 004510673, applied for in July 22, 2005, and registered in April 27, 2007, for goods and services in classes 35, 40, and 44.
Complainant is also the owner of the domain names <emetsa.fi>, <emetsa.eu>, <emetsa.net>, and <emetsa.info>.
The Domain Name was registered by Respondent on April 14, 2007.
5. Parties’ Contentions
In January 2004, Complainant launched a new service to forest owners called “eMetsä” “eMetsä” is a net-based service that consists of two divisions called “Information service” and “Forest owner service”. The information service provides information and updates on forest events, forest-related articles and publications. The forest owner service is the central part of “eMetsä”, providing a virtual forestry plan. The forestry plan consists of, e.g., maps and operation plans. The purpose of the net based service “eMetsä” is to simplify the running and management of a forest, especially for forest owners who are not living close to their forests. Since 2004, the sign “eMetsä” has been extensively used on the Finnish and Swedish markets.
Complainant claims that the Domain Name is identical to Complainant’s trademarks, as it wholly incorporates them. The “.com” portion of a domain name is not relevant for the purpose of determining whether the Domain Name is identical or confusingly similar to Complainant’s trademarks, and their last letter “ä” should not affect a finding of identity or confusing similarity, as technically it can only be represented by the letter “a” in the Domain Name.
Further, Complainant contends that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent is not, and has never been, authorized by the Complainant to use Complainant’s trademarks whether in connection with a company name, domain name or with the promotion and marketing of products and services. Respondent has not been commonly known by the Domain Name. The Domain Name is not the legal name of Respondent, or, to the knowledge of Complainant, of a legal entity with which Respondent is lawfully associated. Respondent has, to the knowledge of the Complainant, no registered trademark rights to the name “eMetsä”.
The Domain Name is used in connection with a website promoting “Fotos Pornograficas”, “Domain name registrations”, “Domain names” etc. The scope and mixture of the services offered by Respondent on the website at the Domain Name, and the way the services are being offered, puts under question the genuineness of Respondent’s offerings and activities under the Domain Name.
Complainant concludes that Respondent has not used the Domain Name in connection with a bona fide offering of goods and services before any notice of the dispute, and it cannot be considered as having a legitimate and non-commercial interest in the Domain Name.
According to Complainant, the Domain Name was registered and is being used in bad faith. Complainant’s trademarks have strong reputation and are widely known within the target group at the Complainant’s main markets. Complainant’s trademarks are highly distinctive and are not, to the knowledge of the Complainant, used in other contexts by other persons or enterprises. The Domain Name was registered in order to prevent the Complainant from reflecting Complainant’s trademarks in a corresponding domain name, for the purpose of disrupting the business of the Complainant. By using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site, by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site.
Complainant requests that the Domain Name be transferred to it.
Respondent states that Eurobox Ltd. was only rendering the so-called “domain by proxy” representative services in respect of the Domain Name. In case of a dispute Eurobox Ltd. immediately provided all identification data for the actual registrant to the respective registrar.
Respondent claims that, as a matter of principle, it is impossible to make a finding of identity or confusing similarity between a graphical trademark and a domain name, due to the nature of graphical trademarks, which consist of graphical elements whose distinctiveness lies in their specific visual representation. Even when a graphical trademark includes a word, its uniqueness stems not only from the word and its meaning, but also from its specific graphical expression. To claim the opposite would render meaningless the division between graphical and word marks. This is confirmed by the fact that Complainant itself decided to register not only the graphical trademark, but also a word mark, containing the word “eMetsä”. Therefore, the trademark rights of Complainant over the graphical trademark are irrelevant for the purposes of the present administrative proceeding. In relation to the word trademark “eMetsä”, Respondent claims that the spelling differences between this trademark and the Domain Name are obvious, and require no further explanation.
The popularity of Complainant’s trademark is not proven. It is only used for a specialized service aimed at forest owners in Finland and Sweden.
According to Respondent, the word “emetsä” has an easily understood meaning, and is therefore generic. There is a practice under the Policy in relation to generic words, in that respondents are found to have a legitimate interest in domain names incorporating generic words, if they describe their business or if the respective respondent extracts benefit of the generic meaning of the word.
Complainant itself became interested in the Domain Name only in September 2007. If it was really using its trademark widely, it was in a position to register the Domain Name before April 13, 2007. On November 1, 2007, Respondent offered Complainant to study the possibility for a peaceful solution of the conflict, but Complainant preferred the “forceful” solution, through the submission of its present Complaint, believing that having a trademark was sufficient basis for the expropriation of others’ property.
The Domain Name was registered on April 13, 2007 - prior to the registration of Complainant’s word trademark, which was registered on April 27, 2007. It was many times established in prior WIPO UDRP decisions, that if the respective domain name was registered prior to the trademark, the domain name registrant could not be regarded as acting in bad faith, as it could not take into account non-existent trademark rights.
Respondent alleges that the printout in Annex 6 to the Complaint represents a typical “parking” Internet webpage, which was set up before the acquisition of the Domain Name by Respondent. This webpage remained there after the acquisition only because Respondent did not pay the necessary attention to it, and because it was making preparations for the use of the Domain Name. However, this webpage is no proof that Respondent willingly set it up and was offering goods or services on it. Respondent had no connection to the “parking” webpage, and extracted no profit from it.
Respondent was really not authorized to use Complainant’s trademarks, and has no trademark, corresponding to the Domain Name. However, the existence of trademark rights is not the only possible evidence of having rights and legitimate interests in a domain name.
Respondent is not known in relation to the Domain name, and the Domain Name is not part of its name, or of the name of legal entities, related to Respondent. However, the existence of such an association is only one of the possible proofs of having rights and legitimate interests in a domain name. The lack of association between Respondent and the Domain Name is absolutely normal in a situation where Respondent is only in preparation for the use of the Domain Name. It is obvious that a certain time period is necessary for the carrying out of all activities preceding the start of the usage of the Domain Name.
Respondent contends that it has a legitimate interest in the Domain Name, as it is using the generic meaning of the word. According to Respondent, the word “metsä”, forming the distinctive part of the Domain name, in Finnish, Karelian, and other languages of the Finno-Ugor group means “forest”. The prefix “e-” is widely used in Internet and means “electronic”. Its addition to words is natural for people using the Internet (e.g. email, ebay, e-book), and does not render distinctiveness to other words. Forest Laboratories, Inc. v. Modern Empire Internet Ltd., WIPO Case No. D2007-0974: “Merely adding the generic words “e-” apparently signifying e-commerce, and “.com” at the end, is not sufficient to create a distinct domain name, and does not sufficiently distinguish the disputed domain name from the Complainant’s trademark”. For any person, fluent in Finnish, Karelian or related languages, it is obvious that the word “eforest” is in general use. A considerable part of the population of St. Petersburg and Leningrad region is of Finnish descent, and the languages in the Finno-Ugor language group are the native languages of the indigenous population of Leningrad region and Karelia. The wide spread of these languages is evidenced by the names of certain settlements in these regions.
According to Respondent, Complainant itself chose such a trademark on the basis of the meaning of the word “metsä”. Therefore, Complainant cannot claim exclusivity to the use of this word in relation to its own activity.
Respondent alleges that in relation to the growing seriousness of the ecological situation in the North-west region of the Russian Federation, and specifically in relation to the widespread illegal logging in Karelia, Respondent intends to set up a non-commercial website dedicated to this problem. It is obvious that when choosing suitable domain names for this project Respondent was focused on names whose meaning reflected the concept for the website and its chosen content (logging).
In the beginning of 2007, Respondent acquired several domain names on the secondary market, and was planning to keep one of them in the long run. All these domain names contained the word “forest” in the Russian, Finnish and English languages. Besides the Domain Name, Respondent also acquired the domain names <forestsforpeople.com>, <human-forest.com> and <lesopark.com>. The Domain Name, like the other three registered domain names, was of interest to Respondent exactly for its obvious meaning and general use. To develop its Internet project, Respondent held negotiations and consultations with private website developers, who did not wish their names to be associated to whatever conflicting situation, especially if related to their professional activities. Their wishes were taken into account by Respondent, so it is unable to present their names, or any other evidence related to the negotiations and consultations in relation to the creation of the respective website.
The legitimate interest of Respondent in the Domain Name is further confirmed by the fact that it made certain material expenses for the acquisition and registration of the Domain Name. These expenses give grounds to the conclusion that Respondent has acquired property rights over the Domain Name. In accordance with international principles and standards, the expropriation of property is possible only in exceptional circumstances. In support of its contention, Respondent cites Article 1 of the Protocol No.1 to the Convention for the Protection of Human Rights and Fundamental Freedoms1.
Therefore, Respondent requests that the relief requested by Complainant be denied.
6. Discussion and Findings
Pursuant to Policy, Paragraph 4(a), Complainant must prove each of the following to justify the transfer of the Domain Name:
(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
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Respondent has registered and is using the Domain Name in bad faith.
By Rules, Paragraph 5(b)(i), it is expected of a Respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with Rules, Paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
Therefore, the Panel reached its decision on the case on the basis of the contentions of the parties and the supporting evidence brought by them before the Panel.
A. Identical or Confusingly Similar
Complainant’s trademarks are duly registered as Community trademarks. Therefore, they benefit from a presumption of validity and compliance with the legal requirements for their registration. The legal framework applicable to Community trademarks is set in Council Regulation (EC) No. 40/94 of December 20, 1993 on the Community trade mark (CTMR). The absolute grounds for refusal are listed in CTMR, Article 72. If a Community trademark is registered, these grounds for refusal are deemed to be non-existent in all countries, members of the European Union, including Finland. Therefore, the Panel accepts that Complainant’s trademarks are valid, that they are distinctive for the products and services that they are used for and do not represent generic words or words in general use in, inter alia, the Finnish language.
As to the registration dates of the Complainant’s trademarks, the Panel notes that, in accordance with the established practice under the Policy, these dates are not taken into account for the purposes of the test of identity or confusing similarity. Therefore, the Panel will compare the Domain Name with the two Complainant’s trademarks in order to reach its decision on the issue of identity or confusing similarity.
Complainant’s figurative trademark EMETSÄ consists exclusively of the letters “eMetsä” in red typeface. Respondent’s remarks in relation to the irrelevance of this trademark for the purposes of this proceeding are not applicable. All Community trademarks have the same legal effect, regardless if composed of words or other signs. CTMR, Article 43. A main requirement to Community trademarks is that they must be signs capable of being represented graphically, and this trademark is a graphic representation of the sign “eMetsä”, made only with the use of red letters. Any person will perceive it as a word, and not as any other sign. Therefore, it is possible to compare it to the Domain Name. The word trademark EMETSÄ also consists of the letters “eMetsä” only.
As the top level domain name portion “.com” is not taken into account for the purposes of the test whether the Domain Name is identical or confusingly similar to a trademark, the relevant part of the Domain Name is the sequence “emetsa”. Comparing this sequence to Complainant’s trademarks, the Panel finds that the only differences between them are that the trademarks have a capital letter “M” and the letter “ä”, while the Domain Name contains a lowercase letter “m” and a regular letter “a”. In the Panel’s view, these differences are minor, and do not change the overall impression created by the Domain Name in comparison to the trademarks, as Internet users are likely to expect that, for technical reasons, domain names will contain no capital letters and that a special character such as “ä” will be replaced by a regular “a”.
Therefore, the Panel finds that the Domain Name is confusingly similar to Complainant’s trademarks.
B. Rights or Legitimate Interests
Complainant has contended that Respondent has no rights or legitimate interests in respect of the Domain Name, that Respondent is not authorized by the Complainant to use Complainant’s trademarks, and that it is not commonly known by the Domain Name, which is not its legal name, or the name of an entity with which Respondent is lawfully associated. Complainant has also claimed that Respondent has no registered trademark rights, and that the genuineness of Respondent’s offerings and activities under the Domain Name is questionable.
In the circumstances of this case, the Panel finds that Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name.
It is well established that once Complainant makes out a prima facie case under Policy, paragraph 4(a)(ii), the burden shifts to Respondent to rebut the showing by providing evidence of its rights or legitimate interests in the Domain Name.
Respondent has claimed that the Domain Name had a generic meaning and is in general use, so Respondent had a legitimate interest in it. The argument is that “metsä” meant “forest” in the Finno-Ugor language group, and that “e-” stood for “electronic”, so the combination signified “eforest”, therefore being generic. Notably, this argument of Respondent’s is focused on Complainant’s trademarks, and not on the Domain Name itself, so, basically, it follows that Respondent does not claim the Domain Name is itself generic and in general use. Even if we disregard this, the analysis of the Domain Name and of the website associated to it shows no reasons to accept Respondent’s allegation. There is no indication in either of them that the first letter “e” has a separate, additional meaning apart from the section “metsa”. Also, the Domain Name and the website are in no way related to forest matters, and neither the word “metsä”, nor any other word in a language of the Finno-Ugor language group is mentioned in the website. Respondent has provided no other reasons why the Domain Name should be treated as generic or as being in general use. As stated above, being registered by Complainant as a Community trademark, the sequence “eMetsä” is deemed to be distinctive and non-generic. In these circumstances, Respondent’s claim that the Domain Name is generic is not accepted, and can not serve as a basis of a finding of a legitimate interest of Respondent in the Domain Name.
Respondent has alleged that it was making preparations for the setting up of a non-commercial website dedicated to the illegal logging in the Russian North-West. This allegation is not supported by evidence other than three Whois printouts showing that Respondent has also registered the domain names <forestsforpeople.com>, <human-forest.com> and <lesopark.com>. Respondent mentions that all these domain names were of interest to it because they contained the word “forest” in different languages. Respondent does not specify which of these domain names would be used in connection with the planned website and how the Domain Name relates to illegal logging. The only conclusion that may be made on the basis of these allegations of Respondent and its domain name registrations is that Respondent has a certain interest in domain names containing the word “forest” in different languages, so probably in forest matters as well. The Panel is not convinced by Respondent’s allegations as to why it was prevented from submitting evidence for its preparations to use the Domain Name. If Respondent had started such preparations, it could have provided to Panel certain information, such as a description of the concept of the website, its goals and ways for their achievement, the structure and the planned content of the website, the topics covered, the sources of information, the planned timetable for implementation of the project, etc. Therefore, in lack of any evidence to the contrary, the Panel finds no reasons to accept Respondent’s allegation as to its purported preparations for the use of the Domain Name in relation to a non-commercial website dedicated to the illegal logging in the Russian North-West.
The Whois contact details provided by Respondent in respect of all four domain names registered by it are the same, and they proved to be incomplete, as the hard copy of the Notification of Complaint sent to Respondent by the Center was returned by the courier due to insufficient address information. The inference that can be made in this respect is that Respondent has decided not to disclose its real address. There is no explanation by Respondent of the reasons for this, although one would expect from a respondent having rights and legitimate interest in respect of a domain name to provide plausible reasons as to why it hides its location. It is notable here that Respondent, when describing the role of Eurobox Ltd. as a “domain by proxy” service provider, stated that in case of a dispute Eurobox Ltd. discloses all identification data for the actual registrant of the respective domain name.
The website at the Domain Name, as evidenced by Complainant, is a commercial website related to “domain names” and “fotos pornograficas”, with no forest matters mentioned. The Panel is not convinced by Respondent’s allegation that he was in no way related to the content of this website. Respondent claimed that he acquired the Domain Name together with several other domain names in the beginning of 2007. As a matter of fact the Domain Name was registered by Eurobox Ltd. on April 13, 2007, so it follows from Respondent’s allegation that Respondent was the beneficial owner of the Domain Name from the date of its registration. To the Panel’s view, it is not likely that the website was set up and maintained without the knowledge and approval of Respondent. On the contrary, the content of the website is an indication as to the nature of the goals and activities pursued by Respondent. If Respondent has used the Domain Name for the purposes of advertising domain name services and pornography, this is in clear contradiction with Respondent’s allegations that it planned to set up a non-commercial website serving the interests of the public.
In the light of the above, the Panel finds that Respondent’s claims are not substanstiated by evidence in the case, and Respondent has no rights or legitimate interests in the Domain Name. The second element of the test, required under the Policy, paragraph (4)(a), is therefore established.
C. Registered and Used in Bad Faith
Through its acquisition of several domain names containing the word “forest” in different languages, Respondent has demonstrated a certain interest in forest matters. The fact that this language is Finnish (and this is for the Domain Name subject of the present proceeding) shows that Respondent’s interest, whatever it may be, is targeted at the population speaking this language. Respondent’s own claims why the Domain Name should be regarded as generic show that Respondent sought a certain relation between the Domain Name and the word “metsä”.
All the above, combined with the familiarity with the Finnish language demonstrated with the allegations contained in the Response, and with the fact that Complainant is one of the world’s largest forest products companies, indicate, notably, that Respondent cannot claim to be unaware of Complainant.
Further, the likelihood Respondent to have been aware of Complainant and the likelihood Respondent to have had knowledge of Complainant and of its business and goodwill in its trademark EMETSÄ, is further increased by the fact that one of Complainant’s trademarks was registered before the Domain Name, and as is the practice of the Office for Harmonization of the Internal Market (OHIM), all Community trademark applications and registrations are published online via the CTM-ONLINE service at the official website of OHIM at “www.oami.europa.eu”, so any interested party could easily obtain the necessary information.
On the basis of its findings under the issue of rights and legitimate interests, the Panel accepts that Respondent’s purposes in acquiring the Domain Name were different from those alleged in the Response. As the website at the Domain Name shows, these purposes included, inter alia, using the Domain Name in relation to pornography.
Taken together, the above leads to the conclusion that Respondent acquired the Domain Name with knowledge of Complainant and without having rights or legitimate interests in the Domain Name. This registration was made for commercial purposes, including the offering of pornographic material and domain name services. In the Panel’s view and in lack of any evidence to the contrary, such purposes cannot be regarded as bona fide. In all likelihood, Respondent’s intentions appear to have been to extract certain commercial gain through attracting Internet users to the website at the Domain Name by creating a likelihood of confusion with Complainant and by free-riding on its goodwill. Therefore, the Panel finds that Respondent has acted in bad faith in registering and using the 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 <emetsa.com> be transferred to Complainant.
Dated: January 7, 2008
1 Article 1 of the Protocol No.1 to the Convention for the Protection of Human Rights and Fundamental Freedoms:
“No one shall be deprived of his possessions except in the public interest and subject to the conditions provided for by law and by the general principles of international law.”
2 CTMR, Article 7:
“Absolute grounds for refusal
1. The following shall not be registered:
(a) signs which do not conform to the requirements of Article 4;
(b) trade marks which are devoid of any distinctive character;
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;
(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;
3 CTMR, Article 4:
“Signs of which a Community trade mark may consist
A Community trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.”