WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Marimekko Oyj v. Matthew Irving
Case No. D2011-1380
1. The Parties
The Complainant is Marimekko Oyj of Helsinki, Finland, represented by Benjon Oy, Finland.
The Respondent is Matthew Irving of Southport, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <marimekkowallhangings.com> is registered with Easyspace.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 15, 2011. On August 15, 2011, the Center transmitted by email to Easyspace a request for registrar verification in connection with the disputed domain name. On August 15, 2011, Easyspace 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” or “UDRP”), 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 16, 2011. In accordance with paragraph 5(a) of the Rules, the due date for Response was September 5, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 6, 2011.
The Center appointed Brigitte Joppich as the sole panelist in this matter on September 16, 2011. 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant is a leading Finnish textile and clothing design company that was established in 1951. The company designs, manufactures, and markets high-quality clothing, interior decoration textiles, bags and other accessories under the MARIMEKKO brand, both in Finland and abroad.
The Complainant owns numerous trademark registrations including the mark MARIMEKKO, inter alia Community trademark registration no. 8528739 MARIKEMMO, no. 6997712 “marimekko”, and no. 307496 MARIMEKKO, the latter with priority of June 4, 1996 (hereinafter referred to as the “MARIMEKKO Marks”). The Complainant’s MARIMEKKO Marks are trademarks “with a reputation” in Finland under the Finnish Trademarks Act with regard to products in classes 24 and 25. Furthermore, an earlier UDRP panel recognized that the MARIMEKKO Marks are “widely known” (cf. Marimekko Oyj v. DomainJet, Inc., WIPO Case No. D2010-1910). The Complainant owns and operates websites under different domain names including <marimekko.com> and <marimekko.fi>.
The disputed domain name was registered on October 3, 2005, and is used in connection with a website offering the Complainant’s products for sale.
The Complainant contacted the Respondent on December 22, 2010, and on June 8, 2010, respectively, informing the Respondent of the Complainant’s rights and requesting the Respondent to cease and desist using the MARIMEKKO Marks on the website and in marketing material as well as to cease and desist using the Complainant’s designs as pictures on the website available at the disputed domain name. The Respondent did not answer the Complainant’s letters but asked the Complainant to resend its first letter on January 10, 2011.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The disputed domain name is confusingly similar to the Complainant’s MARIMEKKO Marks as it consists of the distinctive trademark MARIMEKKO and the non-distinctive words “wall hangings” merely describing one of the Complainant’s products.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name, as the Respondent has not registered MARIMEKKO as a trademark, service mark or company name anywhere in the world, as the Respondent has not used the mark for offering any goods or services, as the Respondent is not commonly known by the name MARIMEKKO, as the Complainant has not licensed or otherwise permitted the Respondent to use the trademark MARIMEKKO, and as there is no relationship between the Complainant and the Respondent.
(3) The disputed domain name was registered and is being used in bad faith. The Complainant contends that the Respondent registered and used the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy and that the Respondent’s registration and use of the disputed domain name causes confusion. The Complainant argues that the Respondent is aware of the Complainant’s trademark rights, that the Respondent’s use of the MARIMEKKO Marks and the Complainant’s designs constitutes trademark and design infringements, that the disputed domain name and the content on the website infringes the Complainant’s copyright, that use of the disputed domain name by offering wall hangings for sale on the website would automatically constitute a trademark infringement and that the Respondent does not mention that there is no relationship between the website and the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant’s widely-known MARIMEKKO Marks in which the Complainant has exclusive rights and is confusingly similar to such marks.
The additional words “wall” and “hangings” in the disputed domain name are merely generic and describe one of the Complainant’s products. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words, such as “wall” or “hangings” (cf. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) at paragraph 1.9 with further references).
Furthermore, it is also well established that the specific top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).
Therefore, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the domain name, it is the consensus view among panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent's rights or legitimate interests in the domain name will then shift to the respondent.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent did not deny these assertions in any way.
Based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent either. In particular, the Respondent’s use is no bona fide use under the Policy. The Panel acknowledges that a reseller can make a bona fide offering of goods and services and thus have a legitimate interest in a domain name if the use fits certain requirements, including the actual offering of goods, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder (cf. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Mariah Boats, Inc. v. Shoreline Marina, LLC, NAF Claim No. 94392; Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774; Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095). According to the documents available to the Panel, the Respondent has at least failed to disclose its relationship to the Complainant and therefore, the Respondent’s use of the disputed domain name does not meet the criteria set out in Oki Data Americas, Inc. v. ASD, Inc., supra.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which can be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out of pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The Panel is satisfied that the Respondent, who seems to be a retailer of some of the Complainant’s products, registered the disputed domain name with full knowledge of the Complainant and its rights in the MARIMEKKO Marks. The disputed domain name is composed of the Complainant’s mark MARIMEKKO and the additional words “wall” and “hangings”, which describe one of the Complainant’s products. Based on the fact that the Complainant’s MARIMEKKO Marks are highly distinctive with regard to such products, longstanding and widely-known, it is inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant and its rights in the MARIMEKKO Marks.
As to bad faith use, by fully incorporating the MARIMEKKO Marks into the disputed domain name and by using such domain name in connection with a website offering the Complainant’s products for sale without accurately and prominently disclosing the Respondent’s relationship with the Complainant, the Respondent is misleading Internet users into thinking that the his business is in some way connected to, sponsored by or affiliated with the Complainant or that his business or his activities are approved or endorsed by the Complainant. The Respondent therefore was, in all likelihood, trying to divert traffic intended for the Complainant’s website to its own for commercial gain as set out under paragraph 4(b)(iv) of the Policy. The Panel is therefore satisfied that the Respondent has also used the disputed domain name in bad faith.
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <marimekkowallhangings.com> be transferred to the Complainant.
Dated: September 28, 2011