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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alko Inc. v. Titan Trading OÜ

Case No. DEU2021-0007

1. The Parties

The Complainant is Alko Inc., Finland, represented by Roschier, Attorneys Ltd., Finland.

The Respondent is Titan Trading OÜ, Estonia.

2. The Domain Name, Registry and Registrar

The Registry of the disputed domain name <alkot.eu> is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrars of the disputed domain name is Zone Media OÜ.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2021. On February 26, 2021, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On March 2, 2021, the Registry 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 .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).

In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 5, 2021. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was April 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 6, 2021.

The Center appointed Luca Barbero as the sole panelist in this matter on April 16, 2021. 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 ADR Rules, Paragraph B(5).

4. Factual Background

The Complainant is the national alcoholic beverage retailing monopoly in Finland and is wholly owned by the Finnish Government.

The Complainant is the owner of several trademark registrations for ALKO, including the following, as per trademark certificates submitted as annexes to the Complaint:

- Finnish trademark registration No. 245540 for ALKO (word mark), filed on October 29, 2008, and registered on April 30, 2009, in international classes 32, 33, 35 and 41;

- Finnish trademark registration No. 240341 for ALKO (figurative mark), filed on March 30, 2007, and registered on September 28, 2007, in international classes 1, 2, 3, 4, 5, 9, 16, 21, 30, 31, 32, 33, 35, 41 and 42;

- European Union Trade Mark registration No. 005919031 for ALKO (figurative mark), filed on May 21, 2007, and registered on December 10, 2009, in international classes 1, 2, 3, 4, 9, 16, 21, 31, 32, 33, 35, 41 and 42;

The Complainant is also the owner of several domain names including <alko.fi>, which was registered on April 11, 2002, and is used by the Complainant to promote its products and services under the trademark ALKO.

The disputed domain name <alkot.eu> was registered on November 9, 2020, and is currently redirected to a web page where it is stated that the website is down for maintenance.

5. Parties’ Contentions

A. Complainant

The Complainant contends that disputed domain name <alkot.eu> is confusingly similar to the trademark ALKO in which the Complainant has rights as it reproduces the trademark in its entirety with the mere addition of the letter “t” and the country code Top-Level Domain (“ccTDL”) “.eu”.

The complainant underlines that the word “alkot” included in the disputed domain name, differs from the trademark ALKO by only one letter, and notes that, in Finnish, the letter “t” refers to plural (like the letter “s” in English), thus the addition of such single letter does not change the meaning, as “alko” and “alkot” both refer to the Complainant’s products and services.

With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent is not commonly known by the disputed domain name and has never registered the word “alkot” as a trademark, service mark or company name anywhere in the world at the time of applying for the registration of the disputed domain name.

Moreover, the Complainant states that it has in no way licensed or otherwise authorized the Respondent to register the disputed domain name and that there is no relationship between the Complainant and the Respondent. The Complainant also submits that the Respondent is making an illegitimate commercial use of the disputed domain name with the intent to mislead consumers and harm the Complainant’s reputation.

With reference to the circumstances evidencing bad faith, the Complainant highlights that the Respondent pointed the disputed domain name to a website providing the same services as the ones provided by the Complainant on its website i.e. the retail and wholesale of alcoholic beverages and online e-commerce services.

The Complainant informs the Panel that it sent a cease-and-desist letter to the Respondent, on December 14, 2020, in order to put it on notice of its trademark rights and requesting that the Respondent cease its infringing activities and transfer the disputed domain name to the Complainant. Upon receipt of such letter, the Respondent redirected the disputed domain name to a website at <drinksuit.com> and replied to the Complainant with a letter dated December 29, 2020, in which it refused to transfer the disputed domain name to the Complainant free of charge.

The Complainant underlines that the Respondent deliberately registered the disputed domain name with the intent of using it to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website or location of the products and services.

B. Respondent

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

6. Discussion and Findings

According to Article 22(1)(a) of the Commission Regulation (EC) No. 874/2004 (hereinafter, the “Regulation”), an ADR procedure may be initiated by any party where the registration is speculative or abusive within the meaning of Article 21. Article 21(1) of the Regulation, provides that a registered domain name shall be subject to revocation where it is identical or confusingly similar to a name in respect of which a right is recognized or established by national and/or European Union law and where it:

(a) has been registered by its holder without rights or legitimate interests in the name; or

(b) has been registered or is being used in bad faith.

Article 22(11) of the Regulation states that “the ADR panel shall decide that the domain name shall be revoked, if it finds that the registration is speculative or abusive as defined in Article 21. The domain name shall be transferred to the complainant if the complainant applies for this domain name and satisfies the general eligibility criteria set out in Article 4(2)(b) of Regulation (EC) No 733/2002.”

This provision is reflected in paragraph B(11)(b) of the ADR Rules, stating that the sole remedies available pursuant to an ADR proceeding where the respondent is the domain name holder in respect of which domain name the complaint was initiated shall be limited to revocation or to the transfer of the domain name to the complainant provided that it satisfies the eligibility criteria established for the registration of “.eu” domain names.

A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or European Union law

Article 10(1) of the Regulation contains a list of rights which may fulfill the definition of “name in respect of which a right is recognized or established” provided in Article 21(1) of the Regulation. Said list includes, inter alia: “registered national and community trademarks, geographical indications or designations of origin, and, in as far as they are protected under national law in the Member-State where they are held: unregistered trademarks, trade names, business identifiers, company names, family names, and distinctive titles of protected literary and artistic works.”

Paragraph B(11)(d)(1)(i) of the ADR Rules determines that the Panel shall issue a decision granting the remedies requested in the event that the Complainant proves “The domain name is identical or confusingly similar to a name in respect of which a right is recognized by the national law of a Member State and/or European Union law”.

In the case at hand, the Complainant provided evidence of national word and figurative trademark registrations for ALKO in Finland as well as of a European Union figurative Trade Mark registration for ALKO.

The Panel notes that the trademark ALKO is entirely reproduced in the disputed domain name, with the mere addition of the letter “t” (which in Finnish, added at the end of a word refers to a plural, just like the letter “s” in English), and the “.eu” ccTLD which, as stated in several prior cases, can be disregarded, being a mere technical requirement for registration.

Therefore, the disputed domain name is clearly confusingly similar to a trademark in which the Complainant has established rights for the purposes of the ADR Rules and is also confusingly similar to the Complainant’s company name, from which it differs – like the trademark – for one single letter “t”.

Accordingly, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a name in respect of which it has rights, according to the first requirement of Article 21(1) of the Regulation and Paragraph B(11)(d)(1)(i) of the ADR Rules.

B. Rights or Legitimate Interests

According to Article 21(2) of the Regulation and Paragraph B(11)(e) of the ADR Rules, any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate a respondent’s rights or legitimate interests in a domain name:

(1) prior to any notice of the dispute, the respondent has used the domain name or a name corresponding to it in connection with the offering of goods or services or has made demonstrable preparations to do so;

(2) the respondent, being an undertaking, organization or natural person, has been commonly known by the domain name, even in the absence of a right recognized or established by national and/or European Union law;

(3) the respondent is making a legitimate and noncommercial or fair use of the domain name, without intent to mislead consumers or harm the reputation of a name in which a right is recognized or established by national and/or European Union law.

A complainant is required to make a prima facie case that the respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.

In the present case, the Panel finds that the Complainant has made out a prima facie case and that the Respondent, by not submitting a Response, has failed to provide any elements to establish rights or legitimate interests in the disputed domain name.

It is clear that the Complainant has no relation with the Respondent and has not authorized it to use the trademark ALKO or the disputed domain name. In addition, there is no indication before the Panel that the Respondent might be commonly known by the disputed domain name.

Furthermore, the Panel finds that, in light of the Respondent’s prior use of the disputed domain name, confusingly similar with the Complainant’s prior trademark, in connection with a website available also in Finnish and providing products and services identical to those of the Complainant, the Respondent has not used, or made preparations to use, the disputed domain name in connection with the offering of goods or services in good faith prior to any notice of the dispute and has not made a legitimate and noncommercial or fair use of the disputed domain name, without intent to mislead consumers or harm the reputation of the Complainant’s distinctive signs.

The current passive holding of the disputed domain name is further evidence of the Respondent’s lack of rights or legitimate interests. Furthermore, the Panel finds that the disputed domain name carries a risk of implied affiliation.

In light of the foregoing and in absence of a Response, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain name according to the second requirement of Article 21(1) of the Regulation and Paragraph B(11)(d)(1)(ii) of the ADR Rules.

C. Registered or Used in Bad Faith

According to Article 21(1)(b) of the Regulation, a complainant is required to demonstrate that a domain name has been registered or used in bad faith.

Article 21(3) of the Regulation and Paragraph B(11)(f) of the ADR Rules provide a non-exhaustive list of circumstances which, if found by the Panel to be present, may be evidence of the registration or use of a domain name in bad faith:

(1) circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name to the holder of a name in respect of which a right is recognized or established by national and/or European Union law, or to a public body; or

(2) the domain name has been registered in order to prevent the holder of such a name in respect of which a right is recognized or established by national and/or European Union law, or a public body, from reflecting this name in a corresponding domain name, provided that:

(i) the Respondent has engaged in a pattern of such conduct; or

(ii) the domain name has not been used in a relevant way for at least two years from the date of registration; or

(iii) there are circumstances where, at the time the ADR Proceeding was initiated, the Respondent has declared its intention to use the domain name, in respect of which a right is recognized or established by national and/or European Union law or which corresponds to the name of a public body, in a relevant way but failed to do so within six months of the day on which the ADR Proceeding was initiated;

(3) the domain name was registered primarily for the purpose of disrupting the professional activities of a competitor; or

(4) the domain name was intentionally used to attract Internet users, for commercial gain to the Respondent’s website or other online location, by creating a likelihood of confusion with a name on which a right is recognized or established, by national and/or European Union law, or it is a name of a public body, such likelihood arising as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location of the Respondent; or

(5) the domain name is a personal name for which no demonstrable link exists between the Respondent and the domain name registered.

The Panel notes that, in light of the prior registration and use of the trademark ALKO in connection with the Complainant’s products and services, the Respondent was more likely than not aware of the Complainant and its trademark when it registered the disputed domain name.

Moreover, the Respondent’s redirection of the disputed domain name, confusingly similar to the trademark ALKO, to a website available also in Finnish providing products and services identical to those of the Complainant suggests that the Respondent indeed registered the disputed domain name with the Complainant’s trademark in mind.

The Panel also finds that, considering the content of the website to which the disputed domain name resolved according to the records, the disputed domain name was intentionally used to attract Internet users, for commercial gain, to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademark, as to the source, sponsorship, affiliation or endorsement of such website.

In view of the circumstances of the case, the Panel also finds that the current passive holding of the disputed domain name does not prevent a finding of bad faith.

In view of the above, the Panel finds that the disputed domain name was registered and is being held in bad faith and thus, the Complainant has also met the requirement of Article 21(1) of the Regulation and Paragraph B(11)(d)(1)(ii) of the ADR Rules.

7. Decision

For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name, <alkot.eu>, be transferred to the Complainant, which satisfies the general eligibility criteria for registration set out in Article 4(2)(b) of Regulation (EC) No. 733/2002, as amended by Regulation (EU) No 2019/517, being an undertaking that is established in the European Union.

Luca Barbero
Sole Panelist
Date: May 4, 2021

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