WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Myriel Aviation SA v. Olli Jokinen
Case No. D2018-0828
1. The Parties
The Complainant is Myriel Aviation SA of Luxembourg, self-represented.
The Respondent is Olli Jokinen of Helsinki, Finland, self-represented.
2. The Domain Name and Registrar
The Disputed Domain Name <sailmate.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2018. On April 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names <sailmate.com> and <sailmate.org>. On April 13, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Complainant filed an amended Complaint on April 13, 2018.
The Center verified that the Complaint together with the amended 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 April 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 7, 2018. The Response was filed with the Center on April 27, 2018. The Respondent also sent an email communication on April 13, 2018.
Further to the Response, the Complainant submitted a supplemental filing on April 29, 2018, in which it requested to withdraw the Disputed Domain Name <sailmate.org>. The Center invited the Respondent to comment on the Complainant’s request on May 3, 2018. The Respondent confirmed its consent to the Complainant’s withdrawal request on May 4, 2018. The Center notified the Parties of the withdrawal of the Disputed Domain Name <sailmate.org> on the same day.
The Center appointed Nick J. Gardner as the sole panelist in this matter on May 14, 2018. 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.
On May 19, 2018 the Complainant sent a further email to the Center which reads as follows:
“We understand that the Panel is not required to take into account further communication from the parties.
Nevertheless, in case the Panel may consider it, we bring to your attention an important new fact: as stated in our email of April 29th, we were aware that the application name of Nautics Oy was in the past named ‘Nautics Sailmate’ on Android Google Play Store, as for all other stores (Apple, Windows), even if it is now named ‘Sailmate’ on this Store (our statement was: ‘the Nautics Oy company is using mainly ‘Nautics Sailmate’ (and not ‘Sailmate’) in the market, both as application names (App Store, Windows) and its web title (excepted for Android app, which seems to have been also previously named ‘Nautics Sailmate’)’
We obtained the proof this change of name from ‘Nautics Sailmate’ to ‘Sailmate’ on the Android Play Store has been performed after November 14th, 2016, as screenshot from web.archive.org demonstrates the app was still named ‘Nautics Sailmate’ at this time (attached), as shown by URL: https://web.archive.org/web/20161114095328/https://play.google.com/store/apps/details?id=fi.nautics.sailmate
This change of application name to ‘Sailmate’ infringes our trademark, as our Sailmate trademark has been filed on February 11th, 2016 and was registered on May 25th, 2016. We have raised the matter to Google Play and requested the application name to be changed back to ‘Nautics Sailmate’ to avoid infringing with our trademark.
We raise this matter to the Panel, as the Respondent was using the fact its application was named ‘Sailmate’ on Google Play to defend his right to use this name.”
4. Factual Background
The Complainant is a Luxembourg company which has developed a software navigation product for boat owners which it markets under the name “sailmate”. This software is marketed as an app available on Apple’s well-known appstore. The Complainant owns the European Union trademark no. 015100977 registered on May 25, 2016 for the word SAILMATE in classes 9, 38 and 42. The Panel has been provided with no other information about the Complainant and its business.
The Disputed Domain Name was originally registered by a third party but does not seem to have been used prior to January 2018. At or around that time it was offered for sale by its then owner, via “www.afternic.com” for USD 4,990. The Complainant made an offer to purchase the Disputed Domain Name on January 29, 2018 for USD 3,500. That offer was not accepted. Shortly thereafter (on March 5, 2018) the Respondent purchased the Disputed Domain Name. It is now redirected to a website (the “Respondent’s Website”) at “www.sailmate.fi” which promotes boating software called Nautics Sailmate produced by a Finnish company called Nautics Oy. This software is marketed under this name on Apple’s appstore.
On March 18, 2018, Nautics Oy emailed the Complainant in the following terms: “Nautics Oy has developed a navigational and boating app called ‘Sailmate’. It has been in the local market in Finland for six years. Now we wanted to register the app name as an auxiliary business name to safeguard the freedom to operate in the local market. But because Myriel S.A. has registered ‘Sailmate’ as a trademark, Nautics Oy would need your consent to have the same name registered as an auxiliary company name in Finland.” Subsequent correspondence took place in which the Complainant indicated it would agree to this in return for a transfer of the Disputed Domain Name. No agreement was reached.
5. Parties’ Contentions
The Complainant says the Disputed Domain Name is identical to its SAILMATE trademark.
The Complainant says that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and does not own a trademark for SAILMATE. It queries his connection with the Finnish company Nautics Oy but says in any event that company’s product is known as “Nautics Sailmate”, not “Sailmate”.
The Complainant says that the Disputed Domain Name was registered in bad faith as the Respondent clearly knew of the Complainant. It relies on the Respondent’s email of March 18, 2018 (above).
The Respondent explains that he (Olli Jokinen) is a founder and currently the largest shareholder of Nautics Oy. He has worked for the company through the history of the company, and serves as the Chief Technology Officer of Nautics Oy. He says the Disputed Domain Name was registered in his name as the company does not have corporate credit cards and he registered it with his credit card.
The Respondent accepts that the Complainant has a registered trademark in respect of SAILMATE and that the Disputed Domain Name is identical to this trademark.
The Respondent says that Nautics Oy was established in 2009 to develop commercial software services with an initial focus on the boating market. From the founding of the company its business plan has been to develop and establish the service first in the local market in Finland and then expand to international markets.
The Respondent says Nautics Oy’s first Sailmate service was launched on June 1, 2010. The first service was a web-based sea chart routing tool for leisure boaters. The service was successful and gained a growing number of users. The Respondent says that Nautics Oy has therefore been commonly known by the Disputed Domain Name since June 2010. In 2013 the Respondent issued mobile applications, which are compliant with the web service. The first app was available in Apple’s appstore on May 17, 2013. Its name was chosen as “Nautics Sailmate”, because this name was believed to better respond to searches in the appstore. Android and Windows versions were launched a few weeks later in respective stores. Based on the search experience in the Apple store, the Android service was named as “Sailmate”, but Windows continued to use “Nautics Sailmate”.
The Respondent says its apps have been very successful. Currently the Sailmate service has over 50,000 users, and the brand is well-known and recognized in the boating market in Finland. It says that the majority of the users are local, but the number of international visitor users is growing.
The Respondent says it has worked to get all relevant domain names for its use to support the Sailmate business in international scale. Currently the Respondent has the following Sailmate-related domain names:
<sailmate.fi> (November 27, 2009)
<sailmate.se> (July 27, 2013)
<sailmate.it> (July 27, 2013)
<sailmate.ru> (February 13, 2016)
<sailmate.org> (February 13, 2016)
<sailmate.info> (February 13, 2016)
<sailmate.biz> (February 13, 2016)
<sailmate.com> (March 5, 2018)
The Respondent says it tried to register other national domains, but some of them were being used for other purposes, e.g. <sailmate.de> promotes a sail adjustment device, and <sailmate.nl> promotes consultancy services.
The Respondent says Nautics Oy tried to obtain the Disputed Domain Name <sailmate.com> for the first time in July 2013. The Disputed Domain Name had been created in 2001 but it was neither used nor available at the time. Nautics Oy made a back order for <sailmate.com> with a monitoring service on July 27, 2013. On February 15, 2018 it received a Domain Status Notification about a change of registrar of <sailmate.com>. Nautics Oy decided to make an offer, and after a counteroffer Olli Jokinen, representing Nautics Oy registered the Disputed Domain Name on March 5, 2018.
The Respondent says that Nautics Oy first used the Disputed Domain Name on March 5, 2018, redirecting web traffic to its existing home page. He says it uses all its “sailmate” domain names in this way.
The Respondent says that Nautics Oy wished to add an “auxiliary company name” to its corporate registration in Finland. This application was added to a filing to the Finnish Patent and Registration Office, which was processed by the Office on March 13, 2018. It says that, the auxiliary company name application was rejected due to the existing registered European Union trademark of the Complainant. The Respondent received the notification of rejection by mail on March 15, 2018. This was the first time he knew of the Complainant’s trademark. This was what led to the March 18, 2018 email described above as the consent of the trademark owner would have allowed the application to proceed.
The Respondent says that the Complainant’s “sailmate” service was launched very recently, and it lacks significant content. The Respondent says this service of the Complainant is not a competitor of the “Sailmate” service of Nautics Oy. It says there exists no likelihood confusion in the relevant public between the products and/or services of the Complainant and those of Nautics Oy.
The Respondent has provided documentary evidence confirming the sequence of events described above and the relevant dates.
6. Discussion and Findings
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in respect of the Disputed Domain Name that:
(i) the Disputed Domain Name is identical with 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 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 Complainant has established that it owns a registered trademark for SAILMATE. The Panel holds that the Disputed Domain Name is identical to the SAILMATE trademark. It is well established that generally the generic Top-Level Domain (“gTLD”) of a disputed domain name (in this case “.com”) may be ignored for the purpose of determining whether the disputed domain name is identical or confusingly similar – see, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429. Accordingly the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to the Respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a 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.
The Panel finds there is clear evidence that paragraph 4(c)(i) of the Policy applies in this case. The Panel considers that nothing turns on the distinction between the Respondent and his company Nautics Oy which can be considered to be identical for these purposes. The term “sailmate” comprises two ordinary English words, “sail” and “mate”. The Panel considers these could readily be independently derived by a person developing a software product associated with boating, particularly given that the word “sail” is commonly used in English (i) as a noun in relation to the fabric structure used to catch the wind in a wind propelled boat (ii) as a verb (to sail) to refer to the act of travelling by boat; and the word “mate” is commonly used in English (i) as a noun which is a colloquial term for a friend or companion, and (ii) as a noun which is a position or rank occupied by an experienced seaman on a vessel who supervises the vessel’s crew and reports to its more senior officers.
The filed evidence clearly establishes that this is a case where the Respondent’s company independently chose the Sailmate name for its product. As it happens there is no real evidence as to how or when the Complainant chose the same name for its product, but it seems likely it was well after Nautics Oy had adopted the name. As is apparent from the list of “sailmate” domain names the Respondent (or Nautics Oy) has registered, Nautics Oy has been developing its “sailmate” business since 2009. It appears that its product is sometimes referred to as “Nautics Sailmate” and at other times just as “sailmate”. The Panel considers that the existence of the other “sailmate” domain names identified above clearly counter the Complainant’s argument that the Respondent’s product is called “Nautics Sailmate” and establish that his company has used a “name corresponding to the domain name” in connection with its business.
In the light of this finding the Panel does not need to consider the Respondent’s further argument that he has been commonly known by the “Sailmate” name.
For completeness the Panel would add that there is nothing in the Complainant’s email to the Center of May 19, 2018 that alters this analysis. The Panel does not consider it matters whether the Respondent’s company marketed its product on the Android appstore as “Nautics Sailmate” or “Sailmate”. The evidence shows that it has been using the term “sailmate” on its own in various other domain names to market its product since long before any notice of the Complainant’s trademark and indeed before that trademark existed. It has accordingly shown that before any notice to the Respondent of the dispute it has used a name corresponding to the domain name in connection with a bona fide offering of goods or services.
Accordingly the Complainant has failed to establish that the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
Whilst the Panel’s finding under (B) above is sufficient to enable a conclusion to be reached in relation to this Complaint, the Panel also finds that there is no evidence to suggest that the Disputed Domain Name has been registered and used in bad faith. In summary the weight of the evidence suggests that the Respondent’s company’s use of the term “sailmate” significantly predates the Complainant’s use of the same term. When the Disputed Domain Name came on the market the Respondent was therefore perfectly entitled to acquire it.
As appears from the factual account above it would appear that the Complainant had the opportunity to purchase the Disputed Domain Name from its previous owner but was not prepared to pay the asking price. It would seem the Respondent was able to reach an agreement with the seller and purchase the Disputed Domain Name. Given that his company had a pre-existing and established business using the name “sailmate” the Panel considers he was perfectly entitled to do so. The fact that the Complainant has obtained a registered trademark for the word SAILMATE does not automatically mean that the Respondent’s registration of that term is in bad faith.
The explanation provided by the Respondent as to when and why Nautics Oy contacted the Complainant seeking consent to register an auxiliary company name using the word “sailmate” is confirmed by documentary evidence. That evidence shows that this happened after the Respondent had registered the Disputed Domain Name. It accordingly does not give rise to the inference that the Complainant suggests, namely that the Respondent was aware that the Complainant had prior rights which precluded him acquiring the Disputed Domain Name.
Accordingly the Panel concludes there is no credible evidence to establish bad faith on the part of the Respondent and the Complainant has failed to establish that the third condition of paragraph 4(a) of the Policy has been fulfilled.
For the foregoing reasons, the Complaint is denied.
Nick J. Gardner
Date: May 28, 2018