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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fiskars Corporation v. Domenic Carosa, Domain Folio 1 Pty Ltd

Case No. DAU2015-0025

1. The Parties

The Complainant is Fiskars Corporation of Helsinki, Finland, represented by Crowell & Moring, LLP, Belgium.

The Respondent is Domenic Carosa, Domain Folio 1 Pty Ltd of Richmond, Victoria, Australia.

2. The Domain Name and Registrar

The disputed domain name <fiskars.com.au> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2015. On July 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 3, 2015, the Registrar 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 .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 July 10, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 31, 2015.

The Center appointed Fleur Hinton as the sole panelist in this matter on August 5, 2015. 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 is a Finnish company with a substantial worldwide reputation in hand tools. It has been in business since 1649 and operates in 60 countries. Its trademark FISKARS is used in respect of gardening and home products. It is particularly well-known for its orange scissors which it started making in the late 60s.

The Complainant is the owner of Australian trademark FISKARS, registered September 11, 1974 in classes 6, 7, 8, 9, 11, 12, 16, 17, 19, 20, 21, 25, 27, 35, 37 and 41. The Complainant promotes its goods internationally with extensive marketing which includes its websites “www.fiskars.com” (including “www.au.fiskars.com”), “www.fiskarsgroup.com” and “www.fiskars.eu”.

According to the WhoIs records, the disputed domain name <fiskars.com.au> was transferred to the Respondent between September 9, 2009 and April 11, 2011. The website at the disputed domain name displays “pay-per-click” links to other websites which offer hand tools and other goods similar to those of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical with or confusingly similar to its trademark. The ground is that the disputed domain name incorporates the entirety of the Complainant’s trademark and that the addition of the country-code Top-Level Domain (“ccTLD”) “.com.au” is irrelevant when the comparison is being made. It cites in support of this argument several .auDRP decisions including Ralph Anderl v. Yang Xia / Krause Adrian Scott, WIPO Case No. DAU2013-0008 and BT Financial Group Pty Limited v. Basketball Times Pty Ltd, WIPO Case No. DAU2004-0001.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It says that under paragraph 4(a)(ii) of the Policy, the Complainant may make a prima facie case that the Respondent has no such rights or legitimate interests, and once that has occurred, the onus of proof shifts to the Respondent. Then the Respondent must show that it does have such rights or legitimate interests. The Complainant refers to several cases including L’Oreal Australia Pty v. Namewise Pty Ltd / Nicholas Bolton, WIPO Case No. DAU2013-0009; and Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. DAU2013-0009. The Complainant says that the Respondent is not commonly known by the disputed domain name. Further, the Respondent has not been authorized by the Complainant to use its trademark and the Respondent’s use of it in conjunction with terms related to its goods in links on the website at the disputed domain name, such as “Fiskars Garden Tools” does not constitute a legitimate or fair use.

The Complainant also argues that the Respondent registered and is subsequently using the disputed domain name in bad faith. To satisfy this criterion the Complainant must prove on the balance of probabilities that the disputed domain name was registered in bad faith or that it is being used in bad faith. The Complainant contends that its trademark is so well-known that the Respondent must have been aware of it. Further, the Respondent could have found out about the Complainant’s ownership of the trademark by doing a simple trademark search and a search on the Internet prior to registering the disputed domain name. The Complainant argues that the Respondent is using the disputed domain name in bad faith because it is preventing the Complainant from registering its own trademark as a corresponding domain name. This affects the Complainant’s business. In addition the disputed domain name resolves to a parking page which contains sponsored links to other websites which sell products similar to the Complainant’s products. This causes confusion as to the origin of the Complainant’s products. Further, the provision of “click through” links to other websites demonstrates that the Respondent’s purpose in using the disputed domain name is to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website and the products that are offered for sale. This too is a use in bad faith.

B. Respondent

The Respondent did reply to the Complainant’s contentions.

6. Discussion and Findings

In order to come to a decision in this matter the Panel must decide whether the Complainant has established a case in accordance with paragraph 4(a) of the Policy. Therefore, the Complainant must establish:

(i) that the disputed domain name is identical or confusingly similar to a name, 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 disputed domain name; and

(iii) that the disputed domain name has been registered or subsequently used in bad faith.

A. Identical or Confusingly Similar

The Panel agrees with the Complainant that the disputed domain name incorporates the Complainant’s trademark in its entirety. It is well established that ccTLD suffixes such as “.com.au” are generally irrelevant when making this comparison. Therefore the Panel finds that the disputed domain name is identical with the disputed domain name.

B. Rights or Legitimate Interests

In order to satisfy this criterion, the complainant must establish on the balance of probabilities that the respondent has no rights or legitimate interests. In L’Oreal Australia Pty v. Namewise Pty Ltd / Nicholas Bolton, WIPO Case No. DAU2013-0009, the panel said in this regard, “If a complainant shows that prima facie the respondent has no rights or legitimate interests, the onus reverts to the respondent to displace that presumption” Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

Paragraph 4(c) of the Policy sets out a non-exhaustive list of criteria upon which the Respondent may rely in order to establish rights or legitimate interests. Included within that list are those which the Complainant submits that the Respondent does not satisfy. The Respondent is apparently not known by the disputed domain name. The Respondent has not been authorized by the Complainant to use the Complainant’s trademark either as part of the disputed domain name or otherwise. In the present case the Respondent is not directly offering products for sale through the disputed domain name.. The Respondent uses the disputed domain name to display pay-per-click links. In Freelife International Holdings, LLC and Freelife International Australia Pty Ltd. v. Nick Nastevski dba Health Doctor, WIPO Case No. DAU2012-0017 the panel said, “There is no evidence that the Respondent is commonly known by the Domain Names or any similar names. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services or for a legitimate non-commercial use. Rather it appears that the Respondent is using the Domain Names to link to various third party websites that consist of a series of pay-per-click advertising links to third party sites that promote products, services and companies some of which are in competition with the Complainant’s. Such use is not a bona fide offering of goods or services.”

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered or Subsequently Used in Bad Faith

Paragraph 4(b) of the Policy sets out four situations which may be indicative of registration or use in bad faith. Of these, the most relevant in the present situation is paragraph 4(b)(iv) which says that “by using the domain name, you (the respondent) have intentionally attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location”. The Panel finds that by displaying pay-per-click links on the website at the disputed domain name the Complainant has demonstrated that the Respondent has used the disputed domain name in bad faith.

In addition, in Google Inc. v. Dmitri Rytsk, WIPO Case No. DAU2007-0004, the panel referred to a general type of bad faith; “The Complainant does not rely specifically on these criteria, but rather on a general notion of bad faith which it is entitled to do. It contends that it can be concluded that the Respondent intended to register or use the domain name in bad faith because the GOOGLE trademark is so distinctive that the Respondent must have intended to ‘trade off’ the Complainant’s rights in that mark. Further, the Complainant says that it is significant that the Respondent is using his domain name and website to offer the same services as the Complainant, thus increasing the chances of confusion.”

The Complainant has argued that the Respondent must have known of the Complainant’s trademark because it is well-known all over the world. The Panel finds that it is sufficiently distinctive for the purposes of the proceeding to support a finding that the disputed domain name was registered 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 disputed domain name <fiskars.com.au> be transferred to the Complainant.

Fleur Hinton
Sole Panelist
Date: August 7, 2015

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