WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wärtsilä Corporation v. Öckeröborgen IT AB
Case No. D2017-1354
1. The Parties
The Complainant is Wärtsilä Corporation of Vaasa, Finland, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
The Respondent is Öckeröborgen IT AB of Öckerö, Sweden.
2. The Domain Names and Registrar
The disputed domain names <wartsilaparts.com> and <wärtsiläparts.com> are registered with Ascio Technologies Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2017. On July 17, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 19, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 10, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 11, 2017.
The Center appointed Knud Wallberg as the sole panelist in this matter on August 16, 2017. 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, Wärtsilä Corporation, is a Finnish corporation in advanced technologies and complete lifecycle solutions for the marine and energy markets. Founded in 1834, the Complainant operates its business in over 70 countries and employs approximately 18,000 employees. The Complainant is a global supplier of flexible base-load power plants operating on various gaseous and liquid fuels.
The Complainant is owner of the WÄRTSILÄ and the WARTSILA trademarks which are registered and used for various goods and services in particular within the marine and energy sectors. The trademarks are registered in a number of jurisdictions including in the European Union under registration number 000838466, registered on February 21, 2000, for WÄRTSILÄ, and number 011765294 registered on September 18, 2013, for WARTSILA, both of which registrations cover Sweden where the Respondent resides.
The Complainant’s official website for the brand Wärtsilä is “www.wartsila.com”
The Complainant has sent a cease-and-desist letter to the Registrant, as well as a follow-up email, without receiving any response from the Respondent.
There is no information available about the Respondent except for the information provided for and the allegations made in the Complaint.
The disputed domain names were registered on July 25, 2014, and both redirect to an active website at “www.marinepartseurope.com”, offering products for sale competing with those of the Complainant.
5. Parties’ Contentions
The Complainant submits that the disputed domain names <wartsilaparts.com> and the internationalized version <wärtsiläparts.com> are confusingly similar to the WARTSILA and WÄRTSILÄ trademarks respectively. The disputed domain names incorporate the Complainant’s trademarks in their entirety with the addition of the word “parts” and the generic Top-Level Domain (“gTLD”) “.com”.
The Complainant submits that the Respondent lacks rights and any legitimate interests in the disputed domain names. The Respondent is thus not affiliated with the Complainant. The Respondent has not registered any trademark for the terms “wärtsilä” or “wartsila” nor is the Respondent commonly known by the disputed domain names. Further, the Respondent is not making noncommercial or fair use of the disputed domain names.
Finally, the Complainant submits that the Respondent has both registered and used the disputed domain names in bad faith. The Respondent uses the disputed domain names to intentionally attract users to its own website, on which the Respondent sells goods that are similar to those of the Complainant. The Respondent will thus make a commercial gain if customers, who were misdirected to the Respondent’s website buy its goods, instead of the Complainant’s goods.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules the panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain names registered by the Respondent are identical or confusingly similar to a 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 names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
A. Identical or confusingly similar
The Panel finds that the disputed domain names <wartsilaparts.com> and <wärtsiläparts.com> are confusingly similar (in the sense of the Policy) to the Complainant’s registered trademarks WARTSILA and WÄRTSILÄ. The disputed domain names incorporate the said registrations in full with the addition of the descriptive term “parts”. The gTLD “.com” does not dispel a finding of confusing similarity as it is disregarded under the first element confusing similarity test, see section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Accordingly, the Panel finds that Policy paragraph 4(a)(i) has been satisfied.
B. Rights or legitimate interests
According to the Complaint, the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the mark. Under the circumstances present in this case, the burden of producing evidence of any rights or legitimate interests in the disputed domain names shifts to the Respondent.
The Panel recognizes that there may be some limited situations where the registration and use of a domain name that specifically refers to and incorporates the trademark of another entity may serve legitimate purposes. As it is stated in section 2.8.1 of the WIPO Overview 3.0.
“Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the ‘Oki Data test’, the following cumulative requirements will be applied in the specific conditions of a UDRP case:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.
The Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trademark.”1
In this case, the Respondent is not an authorized dealer or reseller of the Complainant’s products and services. Moreover, the disputed domain names are used to redirect Internet users to a website that is controlled by the Respondent, namely “www.marinepartseurope.com”, and on which products and services that are in competition with some of the Complainant’s products and services are offered. The Respondent does thus clearly not meet the above outlined requirements under the Oki Data principles.
In the circumstances present here, the Respondent’s registration and use of the disputed domain names indicates its lack of rights or legitimate interests therein, and consequently the prerequisites in the Policy, paragraph 4(a)(ii) are also considered fulfilled.
C. Registered and used in bad faith
Paragraph 4(a)(iii) of the Policy further provides the requirement to prove registration and use in bad faith. Paragraph 4(b) regulates, by way of example, the kind of evidence that may satisfy the same.
Given the circumstances of the case and in particular the evidence on record of the use of disputed domain names, it is inconceivable to the Panel that the Respondent registered the disputed domain names without prior knowledge of the Complainant and the Complainant’s marks. Further, due to the nature of the Respondent’s business the Panel finds that the Respondent could not have been unaware of the fact that it chose domain names which could attract Internet users in a manner that is likely to create confusion for such users.
The Panel therefore finds that the disputed domain names were registered in bad faith.
As explained above the disputed domain names are used to redirect Internet users to the Respondent’s website “www.marinepartseurope.com” on which it offers products and services that are in competition with some of the products and services that are offered by the Complainant. It is thus evident that the Respondent is using the disputed domain names in a way that intentionally attempts to attract, for commercial gain, Internet users to the Respondent’s own website by creating a likelihood of confusion as to the affiliation or endorsement of the website by the Complainant, just as the registration and use is liable to disrupt the business of the Complainant.
Bearing these facts and the facts mentioned above the Panel finds that the disputed domain name has been registered and is being used in bad faith, cf. paragraph 4(a)(iii) and 4(b) of the Policy.
Consequently, all the prerequisites for cancellation or transfer of the disputed domain names according to paragraph 4(a) of the Policy are fulfilled.
The Complainant has requested the Panel that the disputed domain names be transferred to it.
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 names, <wartsilaparts.com> and <wärtsiläparts.com> be transferred to the Complainant.
Date: August 28, 2017