WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rautaruukki Oyj v. Kobe Hoxha, FrameCAD Solutions
Case No. DCO2010-0011
1. The Parties
Complainant is Rautaruukki Oyj of Helsinki, Finland, represented by Benjon Oy, Finland.
Respondent is Kobe Hoxha, FrameCAD Solutions of Auckland, New Zealand.
2. The Domain Name and Registrar
The disputed domain name <ruukki.co> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2010. On August 27, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On August 27, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent FrameCAD Solutions 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 31, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 20, 2010. Respondent had submitted a communication to the Center on August 31, 2010, before the formal commencement of the proceedings. After the commencement, Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 21, 2010. Subsequently, an employee of Respondent FrameCAD Solutions submitted communications to the Center on September 22, 2010 and September 23, 2010, respectively, from an email address with the same extension as the one in the publicly available WhoIs information for the disputed domain name and Respondent Kobe Hoxha submitted an email communication to the Center on September 23, 2010.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on September 28, 2010. 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
Complainant is a company that supplies metal-based components, systems and integrated systems to the engineering industries. Complainant has operations in at least twenty-five countries and employs nearly 15,000 people. Net sales in 2009 totaled EUR 1.9 billion. According to Complainant’s own website, associated with its domain name <ruukki.com>, “The Corporation uses the marketing name Ruukki”.
Complainant has obtained several trademark registrations for the mark RUUKKI globally. These date from at least 2004. For example, Complainant obtained an international trademark registration for RUUKKI + design, no. 850693 (issued 2004); a trademark registration in Finland for RUUKKI + design, no. 239398 (issued 2007); and a trademark registration in the United States for RUUKKI, no. 3557695 (issued 2009), among others.
The disputed domain name <ruukki.co> was registered on July 25, 2010. Respondents have no affiliation with Complainant. Respondents have used the disputed domain name to redirect to the website of Respondent FrameCAD Solutions, a competitor of Complainant. Complainant has not authorized this link, nor the use of its trademarks therewith.
After the Center received the Complaint in this proceeding, Respondent Kobe Hoxha offered to sell the disputed domain name to Complainant for EUR 5,000.
5. Parties’ Contentions
Complainant contends that (i) <ruukki.co> is identical or confusingly similar to Complainant’s trademarks; (ii) Respondents have no rights or legitimate interests in the disputed domain name; and (iii) Respondents registered and are using the disputed domain name in bad faith.
Respondents did not file a substantive reply to Complainant’s contentions in this proceeding, nor did Respondents file a timely response.
On August 31, 2010, before the Complaint was formally notified, Respondent Kobe Hoxha sent the following email message to Complainant’s representative and the Center in this matter:
“I apologize for not getting back to you on this promptly. I have just come back from overseas and I am still catching up with my emails. My manager and I agreed we are happy to release the domain to you for a total sum of EUR 5,000 for our reimbursement.
Neither Respondent sent a reply during the time designated by the Center, and they were notified of their default. Then on September 22 and September 23, 2010, the Center received further email messages from Respondent Kobe Hoxha and from another employee of Respondent FrameCAD Solutions requesting further information, which the Center provided. The Panel notes that according to his email signature, Kobe Hoxha is “Business Integration Manager” of FrameCAD Solutions, and that, Respondents are therefore directly linked to one another.
6. Discussion and Findings
A. Identical or Confusingly Similar
This Panel must first determine whether <ruukki.co> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates Complainant’s registered trademark RUUKKI. Accordingly, consumers would expect to find information offered by Complainant on the website to which the disputed domain name refers.
Since the registrar confirmed that Respondent’s domain name registration agreement is covered by the UDRP, there is really no question that the “.co” top level domain name is subject to the UDRP just as though it were a “.com” top level domain name. The Panel indeed finds the disputed domain name to be no less confusing than a “.com” top level domain name, and instead finds that many consumers looking for Complainant’s website at “www.ruukki.com” might accidentally leave off the letter “m” at the end and instead find Respondent’s website at “www.ruukki.co”.
This Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain names at issue in a UDRP dispute. For example, paragraph (4)(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that the respondent has been “commonly known by the domain name”; or (iii) “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
Respondents did not provide a substantive reply to the Complaint, however, and no evidence has been presented to this Panel that might support a claim of Respondents’ rights or legitimate interests in the domain name. Rather, as mentioned in Section 4 of this Panel’s decision, Respondents have used the disputed domain name to divert Internet users to their own website at “www.framecad.com”, which is unaffiliated with Complainant or Complainant’s services.
Therefore, this Panel finds that Complainant has provided sufficient evidence of Respondents’ lack of “rights or legitimate interests” in accordance with paragraph (4)(a)(ii) of the Policy which Respondents have not rebutted.
C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that domain names were registered and used in bad faith. For example, paragraph (4)(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] web site or location”. As noted in Section 4 of this Panel’s decision, Respondents have used the disputed domain name to redirect to the website of Respondent FrameCAD Solutions, a competitor of Complainant. Complainant has not authorized this, nor the use of its trademarks therewith. In so doing, Respondents are trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondents’ own commercial gain. This evidences bad faith by Respondents.
Furthermore, Complainant has evidenced that Respondents have “registered or acquired the domain name primarily for the purpose of selling for valuable consideration in excess of documented out-of-pocket costs”, in a showing of bad faith as contemplated by paragraph (4)(b)(i) of the Policy. In particular, after this proceeding commenced, Respondent Kobe Hoxha sent an email message to Complaint’s representative and the Center in this matter. In the message, Respondent, identifying himself as the “Business Integration Manager” of FrameCAD Solutions, offered to sell the disputed domain name to Complainant for EUR 5,000.
For these reasons, this Panel finds that Respondents registered and used the disputed domain name in bad faith in accordance with paragraph (4)(a)(iii) of the Policy.
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 <ruukki.co> be transferred to Complainant.
Dated: October 6, 2010