WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Artek oy ab v. Ilia Tchoudinov

Case No. D2013-0003

1. The Parties

The Complainant is Artek oy ab of Helsinki, Finland, represented by Attorneys-at-Law Juridia Ltd., Finland.

The Respondent is Ilia Tchoudinov, Mississauga, Canada, self-represented.

2. The Domain Name and Registrar

The disputed domain name <artek.com> is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 2, 2013. On January 3 and 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 10, 2013, 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 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 January 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2013. On January 23, 2013, the Respondent sent an email communication to the Center. The formal Response was filed with the Center on January 24, 2013.

The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on February 1, 2013. 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 limited liability company founded in 1935 by four young idealists, Alvar and Aino Aalto, Maire Gullichsen and Nils-Gustav Hahl. The business idea of the company was “to sell furniture and to promote a modern culture of habitation by exhibitions and other educational means.” The Complainant has continuously used the sign “artek” in business since it was founded. The Complainant’s business is known worldwide as an innovative contributor to modern design and furniture, building on the heritage of the famous architect and designer Alvar Aalto. The Complainant is the owner of numerous registered trademarks globally for the word mark ARTEK including Canadian trademark no. TMA544135 filed on May 2, 1997 and registered on April 25, 2001; European Community trademark no. 518795 filed on April 16, 1997 and registered on February 4, 2000; and United Kingdom of Great Britain and Northern Ireland trademark no. 1192316 filed and registered on March 17, 1983.

The Respondent is a software developer presently based in Canada and is the owner of a software development company. The Respondent’s country of origin is Russian Federation. The Respondent states that he was a member of the “Young Pioneer Organization of the Soviet Union” (boy scouts) as a child.

“Artek” (in Cyrillic, “Арте́к”) is the name of a famous former Young Pioneer camp in Ukraine, originally established in 1925 as a vacation or summer camp for “Young Pioneers of the Soviet Union”. Today, Camp Artek is an international children’s center engaged in the provision of educational camps for disadvantaged and gifted children. The Respondent states that he sent his son to Camp Artek in 2007 and provides an associated group photograph.

The WhoIs in respect of the disputed domain name lists its creation date as November 23, 1998. On September 19, 2010, the Respondent purchased the disputed domain name from the previous registrant for the sum of USD 2,500. An entry from the “Wayback Machine” shows that on or before May 1, 2011, the Respondent posted two YouTube-hosted videos on the homepage associated with the disputed domain name, the first regarding Camp Artek in 1940 and the second being congratulations offered by Russian astronauts to Camp Artek on its 60th anniversary in 1985. On August 20, 2011 the website associated with the disputed domain name was hacked and the Respondent took it down. The Respondent says that he has continued to develop the said website on a local computer.

On November 29, 2011, April 29, 2012 and August 7, 2012, the Respondent received unsolicited offers from third parties to purchase the disputed domain name. On April 23, 2012, the Respondent received an unsolicited offer to purchase the disputed domain name from the Complainant’s representative (although the email concerned did not disclose the Complainant’s interest). The Respondent ignored all of the said approaches however posted a notice on the website associated with the disputed domain name stating “Artek.com / This domain is not for sale”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical to a trademark in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

The Complainant asserts that the disputed domain name is identical both to the Complainant’s registered trademarks and to the Complainant’s company name. The Complainant notes that according to Finnish law, it has the exclusive right to its company name in Finland. The Complainant also points out that it is the registrant of various domain names containing its ARTEK trademark. The Complainant produces Canadian publications discussing the Complainant’s work to demonstrate that it is well-known in Canada.

The Complainant submits that it has not licensed or otherwise permitted the Respondent to use any of its trademarks or company names or to apply for or use any domain name incorporating any of those marks. The Complainant also states that to the best of its knowledge, the Respondent does not own any registered trademarks or company names in Canada, the United States of America (“USA”) or Finland. The Complainant notes that there are three company registrations disclosed by a search of the Industry Canada database, two of which are dissolved, and the third, Artek Welding & Automation Inc., does not appear to have any link to the Respondent.

The Complainant notes that the disputed domain name does not resolve to an active website and does not have any actual content apart from the comment “This domain is not for sale”. The Complainant produces an extract from an online dictionary to demonstrate that the word “artek” does not have any meaning in English. The Complainant states that it has no knowledge of whether the Respondent has been in any way or anywhere commonly known by the disputed domain name.

The Complainant asserts that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and that, prima facie, the incorporation of the Complainant’s trademark in the disputed domain name supports the conclusion that the Respondent does not have a legitimate interest in the disputed domain name. The Respondent notes that its trademark ARTEK is an invented word and that it is not one that traders would legitimately choose unless seeking to create an impression of an association with the Complainant. The Complainant notes that prior to the issuing of the Complaint it attempted to contact the Respondent via the contact details in the WhoIs but that such attempts failed.

The Complainant cites Article 4 of Joint Recommendation Concerning Provisions on the Protection of Marks and Other Industrial Property Rights in Signs on the Internet adopted by the World Intellectual Property Organization as authority for the proposition that any relevant circumstance shall be considered in determining whether a sign was used in bad faith and in particular whether the person who used the sign had knowledge of a right in an identical or similar sign belonging to another or could not have reasonably been unaware of that right at the time that person first used the sign. The Complainant asserts that it is not plausible that the Respondent could legitimately have chosen the disputed domain name in light of the Complainant’s numerous trademark registrations and company name, and given that the mark ARTEK is an invented word. The Complainant notes that its Canadian trademark was filed prior to the registration of the disputed domain name.

The Complainant submits that the circumstances indicate that the disputed domain name was registered primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant or to a competitor of the Complainant. The Complainant asserts that the disputed domain name was also used in bad faith because in 2007 the website associated with the disputed domain name provided links which were in direct competition with the Complainant’s business. The Complainant contends that this constitutes an intentional attempt to attract more visitors to the Respondent’s website by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement thereof.

The Complainant asserts that inactivity or passive holding of a domain name including sporadic or intermittent use can, under certain circumstances, evidence bad faith use of that domain name. The Complainant contends that the sporadic and intermittent use of the disputed domain name in the present case combined with the Respondent’s failure to respond to the Complainant’s inquiries and the widely spread reputation of the Complainant’s trademarks intensifies the conclusion of bad faith by virtue of passive holding.

B. Respondent

The Respondent asserts that he has neither registered nor used the disputed domain name in bad faith. The Respondent states that according to the online encyclopaedia “en.wikipedia.org” the word “artek” can refer to an Arctic Technology Center, to the Young Pioneer camp noted in the Factual Background section above, or to the Complainant. The Respondent states that every Russian child knows “artek” as the famous recreational camp. The Respondent notes that he is the father of four children and states that he sent his eldest son to Camp Artek in the summer of 2007. The Respondent produces an email said to be from the camp and providing the summer 2007 pricing (although this appears to be in Russian or Ukranian and has been filed without a translation) together with the group photograph noted in the Factual Background section above.

With regard to the allegations of bad faith use of the disputed domain name in 2007, the Respondent asserts that he did not own the disputed domain name during that period. The Respondent states that he purchased the disputed domain name in 2010 to use for an educational project oriented towards Russian-speaking people around the world. The Respondent notes that he has been developing the project on his local computer for two years.

The Respondent provides details of his software development company and states that it is not a competitor of the Complainant. The Respondent states that he has no intention to sell furniture, nor is he using the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion with the Complainant as to source, sponsorship, affiliation or endorsement of the said website.

The Respondent states that the disputed domain name is not passively held and provides links to the “Wayback Machine” showing the publication of the videos on the website associated with the disputed domain name after the date of the Respondent’s acquisition thereof, as noted in the Factual Background section above. The Respondent submits that his website was hacked and the content destroyed on August 20, 2011. The Respondent produces evidence of his support ticket raised with his web hosting service provider on the said date together with the provider’s report regarding the loss of content.

The Respondent asserts that the Complainant does not have exclusive trademark rights regarding ARTEK as a children’s center or educational activity and is unlikely to obtain such rights. The Respondent notes that the Complainant does not have exclusive rights to the mark ARTEK in Canada or the USA in areas other than furniture or lighting. The Respondent provides extracts from the trademark registers of the USA and Canada to demonstrate that not all marks containing the word “artek” are registered to the Complainant.

The Respondent contends that many children have visited Camp Artek since 1925 and have founded their own businesses with similar names later in life. The Respondent states that the number of such businesses have grown over the years and says that there are 1275 registered businesses worldwide using the “artek” name. The Respondent adds that there are numerous third parties providing goods or services in relation to the word or place “Artek” and provides a Google search in support of this assertion.

The Respondent contends that he had no intention of selling the disputed domain name to the Complainant or a competitor and that he published the “Not for sale” sign on the associated website after receiving requests to sell the disputed domain name.

The Respondent states that the origin of the word “artek” is a geographic name to which the Complainant has no rights. The Respondent states that Camp Artek was named after the place and river where it is situated in the Gurzuf settlement on the southern coast of the Crimea, Ukraine. The Respondent submits that the origin of the place name is uncertain but as with many such names has a number of interpretations including “bear” or “special”. The Respondent goes on to provide details of the use of the name “artek” in connection with the camp as outlined in the Factual Background section above. The Respondent uses this information to illustrate that the popularity of the camp went far beyond the borders of the former Union of Soviet Socialist Republics (“USSR”). The Respondent also notes that Camp Artek is the scene of many works of art and poems. The Respondent concludes that the word “artek” means “sweet childhood memories” for many generations of people from the former USSR and further afield.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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 Panel is satisfied that the Complainant has rights in the various registered trademarks which it cites in respect of the word mark ARTEK. On a comparison with the disputed domain name, and disregarding the top level domain “.com” on the basis that this is required for technical reasons only and is wholly generic, the Panel finds that the disputed domain name is identical to the Complainant’s trademark.

Accordingly, the requirements of paragraph 4(a)(i) of the Policy have been satisfied.

B. Rights or Legitimate Interests

The requirements of paragraph 4(a) of the Policy are conjunctive. A consequence of this is that failure on the part of a complainant to demonstrate one element of the Policy, including that the disputed domain name has been registered and is being used in bad faith, will result in failure of the complaint in its entirety. Accordingly, in light of the Panel’s finding under the next head, it is unnecessary for the Panel to address the issue of the Respondent’s rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location”.

On this topic, the Complainant notes first that the Respondent is a subsequent acquirer of the disputed domain name and that as such, the Respondent’s acquisition should be treated as a registration for the purposes of the Policy. This question has previously been considered by panels in cases under the Policy and is now the subject of paragraph 3.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) which provides the consensus view as follows:

“While the transfer of a domain name to a third party does amount to a new registration, a mere renewal of a domain name has not generally been treated as a new registration for the purpose of assessing bad faith. Registration in bad faith must normally occur at the time the current registrant took possession of the domain name.”

In the present case, the Respondent has demonstrated to the Panel’s satisfaction that the Respondent acquired the disputed domain name on or about September 19, 2010 and accordingly this is the date on which the question of registration in bad faith should be assessed, notwithstanding the fact that the disputed domain name was originally created on November 23, 1998.

The essence of the Complainant’s case on this topic is first that the disputed domain name was registered in bad faith because the Respondent primarily intended to sell it to the Complainant or to the Complainant’s competitor, secondly that the disputed domain name has been passively held, and thirdly that the disputed domain name has been used in connection with pay-per-click advertising which targeted the Complainant’s trademark.

In the Panel’s view, the Complainant’s screenshot of the website associated with the disputed domain name dated June 23, 2007, showing pay-per-click advertisements targeting the Complainant, must be disregarded for the purposes of the Panel’s assessment of bad faith on the basis that it pre-dates the Respondent’s ownership of the disputed domain name. Accordingly, there remains the question of the Respondent’s intentions regarding a sale of the disputed domain name and the alleged passive holding thereof.

With regard to the Complainant’s case that the Respondent registered the disputed domain name with intent to sell it to the Complainant, the Panel notes that the Complainant has not produced any evidence that the disputed domain name was ever offered for sale by the Respondent either to the Complainant or to any third party. It is clear from the material that the Respondent has presented that he has received no less than four unsolicited approaches regarding a possible sale and has ignored all of these. Furthermore, there is no evidence in the record that the Respondent ever listed the disputed domain name for sale either on the website associated with the disputed domain name or on online domain name marketplaces. For his part, the Respondent vehemently denies registering the disputed domain name with intent to sell it to anyone, whether the Complainant or otherwise. The Respondent also produces evidence that he placed the “not for sale” notice on his website in response to the various inquiries. Finally, the Respondent produces some limited evidence that his acquisition of the disputed domain name relates to its association with the famous Camp Artek which the Respondent says both he and his son attended. In all of these circumstances the Panel considers that the Complainant has failed to prove on the balance of probabilities that the Respondent intended to sell the disputed domain name to the Complainant.

With regard to the Complainant’s case of passive holding, the Complainant makes reference to the widely cited case under the Policy of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and the case of Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Paragraph 3.2 of the WIPO Overview 2.0 provides the consensus view of panels on this subject as follows:-

“With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use, or of the mere “parking” by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals).”

In the present case, the disputed domain name is not exactly passively held although its use since acquisition by the Respondent could be described as at best intermittent. Considering the examples of cumulative circumstances given in paragraph 3.2 of the WIPO Overview 2.0, the Complainant’s trademark is certainly well-known, however the Respondent has filed a fulsome response, the essence of which is that it is his association with Camp Artek which motivated his acquisition of the disputed domain name and not the Complainant’s trademark. The Respondent does not deny that the use of the disputed domain name has been intermittent since he acquired it however he has explained this by reference to the hacking incident of August 2011, regarding which he provides supporting evidence. While the Respondent may not have replied to the Complainant’s inquiry regarding a possible sale of the disputed domain name, there is no indication on the record that the Respondent has taken any steps to conceal his identity.

With regard to the circumstances surrounding the registration of the disputed domain name, the Respondent has demonstrated by reference to the “Wayback Machine” that his original use of the disputed domain name was to publish videos hosted by YouTube which relate to Camp Artek. The Respondent has also provided some limited evidence (the price list and camp photograph) that he may have a personal connection to Camp Artek. The Panel would have preferred to see some further evidence from the Respondent regarding the preparations which the Respondent says that he has made since the hacking incident to develop his website on a local computer however on balance is satisfied that the Respondent’s answer to the case of passive holding is sufficient without the provision of this additional material. That said, the Respondent would do well to remember that the Complainant is likely to be watching closely when the website associated with the disputed domain name is finally published. Should it turn out not to be an educational project relating to Camp Artek but rather something targeting the Complainant’s rights in its ARTEK trademark, this may be considered sufficient to entitle the Complainant to a refiling of the Complaint (on the subject of which, see paragraph 4.4 of the WIPO Overview 2.0).

In the circumstances of the present case, however, the Panel finds that the Complainant has failed to prove on the balance of probabilities that the disputed domain name was registered and used in bad faith and thus that the requirements of paragraph 4(a)(iii) of the Policy have not been satisfied.

7. Decision

For the foregoing reasons, the Complaint is denied.

Andrew D. S. Lothian
Sole Panelist
Date: February 15, 2013