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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Marimekko Oyj v. DomainJet, Inc.

Case No. D2010-1910

1. The Parties

The Complainant is Marimekko Oyj of Helsinki, Finland represented by Benjon Oy, Finland.

The Respondent is DomainJet, Inc. of Jiangsu, China.

2. The Domain Name and Registrar

The disputed domain name <marimekkobags.com> is registered with Melbourne IT Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2010. On November 9, 2010, the Center transmitted by email to Melbourne IT Ltd., a request for registrar verification in connection with the disputed domain name. On November 17, 2010, Melbourne IT Ltd. 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 17, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 7, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 9, 2010.

The Center appointed Rodrigo Velasco Santelices as the sole panelist in this matter on December 15, 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

The Complainant Marimekko Oyj is a leading Finnish textile and clothing Design Company that was established in 1951.

The Complainant 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 exclusive rights to the trademark MARIMEKKO.

The Complainant owns and operates websites under the domain names <marimekko.com> and <marimekko.fi>. They also own the domain name <marisnewbags.com>.

The disputed domain name <marimekkobags.com> was registered on September 6, 2010.

There is no information available about the Respondent except for that contained in the Complaint and in the Registrar’s records, which essentially provides only the name and contact details of the Respondent.

The facts mentioned above have been established on the basis of the Complaint and documents attached thereto in accordance with paragraph 3(b)(xv) of the Rules.

5. Parties’ Contentions

A. Complainant

The Complainant states that the disputed domain name <marimekkobags.com> consists of the distinctive trademark MARIMEKKO and non-distinctive word “bags”. The meaning of the word “bags” is obvious and it only gives impression of MARIMEKKO bags manufactured by the Complainant. The similarity between the trademark MARIMEKKO and the domain name <marimekkobags.com> is hence very clear.

According to the Complainant’s information and belief, the Respondent does not have rights or legitimate interests in the domain name and has not registered it as a trademark, service mark or company name anywhere in the world. The Respondent has not used the mark for offering of goods or services and the Respondent is not commonly known by the name “Marimekko”. The Complainant has not licensed or otherwise permitted the Respondent to use the trademark MARIMEKKO. There is no relationship between the Complainant and the Respondent.

The Complainant states that paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith. One of them is item (i) the Respondent is in bad faith if it 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 trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out of pocket costs directly related to the domain name. In this case, the Respondent has requested the sum of € 2000 that exceeds out-of-pocket costs significantly.

The Complainant states that the disputed domain name <marimekkobags.com> has been registered and used in bad faith in accordance to paragraph 4(b)(iv) of the Policy because the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s 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. The disputed domain name is in use at the moment. The Complainant has attached print outs of such website (Annex 9.), the trademark MARIMEKKO is mentioned and therefore being used on the website and there are also links to the websites of the Complainant’s competitors.

B. Respondent

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

6. Discussion and Findings

In accordance with Paragraph 4(a) of the Policy, the Complainant must prove that each of the three elements is present:

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

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

A. Identical or Confusingly Similar

This first element requires that the Complainant demonstrate that (1) it has trademark rights and (2) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

The Panel finds that the Complainant has established that it is the owner of the registered trademark MARIMEKKO based on the evidence provided in the Complaint.

The disputed domain name consists of two different words, one consisting of the Complainant’s registered trademark and the other of the generic term “bags”. The Panel considers that the addition of the generic denomination, especially when added to a famous trademark is not sufficient to avoid confusion, especially when the generic word added to the trademark consists of an item that is manufactured by the complainant.

The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The second element requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

By the terms used in paragraph 4(a) of the Policy, it is clear that the overall burden of proof is on the Complainant; however, the Policy provides the Respondent means to demonstrate its rights to and legitimate interests in the domain name in responding to a Complaint. If the Respondent does not make use of these means and the Complainant has established a prima facie case under subparagraph 4(a)(ii), the burden is shifted to the Respondent to prove the contrary.

The Complainant asserts that the Respondent does not have rights or legitimate interests in the disputed domain name and has not registered it as a trademark, service mark or company name anywhere in the world. The Respondent has not used the mark for a bona fide offering of goods or services and the Respondent is not commonly known by the name “Marimekko”. The Complainant has not licensed or otherwise permitted the Respondent to use the trademark MARIMEKKO. There is no relationship between the Complainant and the Respondent.

The Respondent has not provided a response to the allegations set forth by the Complainant, though given the opportunity.

There is no evidence in the case file demonstrating that the Respondent might have rights or legitimate interest in the disputed domain name.

In the absence of a Response, this Administrative Panel is satisfied that the Complainant has satisfied the second element, paragraph 4(a) of the Policy and has established that the Respondent has no rights or legitimate interest in the disputed domain name.

C. Registered and Used in Bad Faith

This third element requires that the Complainant demonstrate that (1) the disputed domain name has been registered in bad faith and (2) is being used in bad faith.

Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.

The disputed domain name is composed of two words, “Marimekko” and “bags”. The first is a registered trademark owned by the Complainant; the second is a generic term.

The Complainant has stated that Marimekko manufactures not only clothing items but also accessories such as bags. Therefore, it is difficult to believe that the juxtaposition of these two terms in the disputed domain name is a mere coincidence, taking into consideration that the Respondent’s website is active and refers to handbags, Finnish designs (place of origin the Complainant) and provides links to competitor’s websites. Therefore, one can reasonably conclude that the Respondent had knowledge of the existence of the products manufactured by the Complainant, demonstrating bad faith registration.

The Panel considers that by registering a domain name corresponding to a widely known trademark, the Respondent has intentionally tried to divert Internet users to its webpage, for commercial gain. This behavior constitutes bad faith use and may tarnish the Complainant’s reputation by, among other things, attracting Internet users to a webpage that appears to be endorsed by the Complainant.

The above can only lead the Panel to conclude that the Respondent is attempting to attract, for commercial gain, Internet users to its website, 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 of the services provided on the website.

Moreover, the Complainant sent a letter to the Respondent informing him of Complainant’s rights and requesting the transfer of the disputed domain name. The Respondent provided a response stating that “we could transfer it to your client under € 2000”.

In view of the evidence provided, it is clear that the Respondent has purposely demanded an amount far more that its out-of -pocket costs for registration. Registering a domain name for the purpose of selling or transferring the domain name for excessive consideration is evidence of bad faith registration and use under paragraph 4(b)(i) of the Policy.

Therefore, in accordance with paragraph 4(b)(i) and (iv) of the Policy, the above findings lead to the conclusion that the disputed domain name has been 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 disputed domain name, <marimekkobags.com> be transferred to the Complainant.

Rodrigo Velasco Santelices
Sole Panelist
Dated: December 30, 2010

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