WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rapala VMC Oyjv. Mathias Eriksson/Introite LTD
Case No. D2002 - 0435
1. The Parties
Complainant is Rapala VMC Oyj, Vääksy, Finland ("Complainant").
Respondent is Mathias Eriksson /Introite LTD, Stockholm, Sweden ("Respondent").
2. The Domain Names and Registrars
The domain name at issue is <rapala.info>.
The Registrar is CSL Computer Service Langenbach, GmbH, dba joker.com. ("CSL").
3. Procedural History
A Complaint was submitted by e-mail to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on May 6, 2002. The WIPO Center sent an Acknowledgement of Receipt of Complaint to the Complainant on May 10, 2002.
On May 10, 2002, a Request for Registrar Verification was transmitted to the Registrar (CSL), and on May 13, 2002, the Registrar confirmed that it was in receipt of the Complaint and that it was the Registrar of the domain name. The Registrar forwarded the requested WHOIS details.
A Formal Requirements Compliance Checklist was completed by the WIPO Center and the Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), as approved by ICANN on October 24, 1999, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the WIPO Supplemental Rules"), in effect as of December 1, 1999. The Complainant paid on time and in the required amount the fees for a single member Panel.
On May 15, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent by the required means, setting a deadline of June 4, 2002, by which the Respondent could file a Response to the Complaint.
On June 6, 2002, having received no Response, the WIPO Center sent a Notification of Respondent Default to the Parties.
The WIPO Center then invited Mr. Knud Wallberg to serve as Panelist in the case, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.
Having received the Statement of Acceptance and Declaration of Impartiality and Independence from Mr. Knud Wallberg, the WIPO Center transmitted on June 12, 2002, to the parties a Notification of Appointment of Administrative Panel and the Projected Decision Date.
The Panel finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the WIPO Supplemental Rules.
The Administrative Panel has thus issued its Decision based on the Complaint, the supplemental filing by the Complainant, the Policy, the Rules, and the WIPO Supplemental Rules but without the benefit of a Response from the Respondent.
4. Factual Background
Complainant's business and trademarks
The Complainant is owner of the trademark RAPALA, which is registered among others in Finland, Switzerland, France, Spain and Japan. Details of these registrations were enclosed as Annexes to the Complaint
The trademark registrations RAPALA are word marks and are thus trademark protection granted for the mark RAPALA as such.
The trademark RAPALA is protected and used world wide in connection with fishing tackle, lures, plugs, jigs and other goods used in connection with fishing.
Neither Complainant nor the Respondent has furnished the Panel with detailed information on Respondent's business activities except for those mentioned below as part of the Complainants contentions.
5. Parties Contentions
This Complaint is based on the following grounds.
Identical or similarity
The domain name <rapala.info> is identical with Complainants trademark RAPALA, when the top level domain "info" is not taken into consideration in the evaluation of the identity of the signs. The top level domain "info" is not distinctive and therefore cannot be taken into consideration.
No rights or legitimate interests in respect of the domain name
According to the knowledge of the Complainant neither Mathias Eriksson nor Introite LTD have any rights or legitimate interests in respect of the domain name <rapala.info>.
The trademark RAPALA is a famous trademark and it is not used in any other connection than to refer to the Complainant.
RAPALA is not a general word in any language, especially in Swedish or Finnish, which are the most relevant languages in this case.
Because the Complainant is a well known company in Finland and listed in the Helsinki Stock Exchange it is likely that the Respondent is very well aware of the fact that RAPALA is the trademark and dominant part of the trade name of the Complainant. Therefore it is not believable that the Respondent would have accidentally invented identical name RAPALA to register as its domain name. Thus the Respondent cannot have any rights in the domain name <rapala.info>.
According to the knowledge of the Complainant, the Respondent does not have any trade name, trademark, association name, foundation name or similar right to the trademark RAPALA.
According to the knowledge of the Complainant, the Respondent is not making a legitimate non-commercial or fair use of the domain name.
The Respondent has no license to use the trademark RAPALA and no legitimate interest in it.
Registration and use in bad faith
The Respondent has registered the trademarks and trade names of dozens of Finnish public companies as domain names. A list and printouts of the domain names corresponding to the trademarks / trade names of Finnish public companies registered as domain names by the Respondent was enclosed as Annex to the Complaint.
The Respondent operates in Finland and has indicated a Finnish mobile telephone number when registering the disputed domain names. Thus the Respondent clearly has connections to Finland. Therefore it is apparent that the Respondent is familiar with the trademarks and trade names of famous Finnish companies.
The Respondent has consistently registered the trademarks and trade names of several Finnish public companies and therefore it is evident that the Respondent has intentionally chosen the protected names of others to be registered as domain names. It is not likely that the Respondent would have independently and accidentally invented the same names as several Finnish public companies.
The Respondent has therefore evidently been aware that the trademark RAPALA belongs to the Complainant and has therefore registered the contested domain name in bad faith.
Since the Respondent must have been aware of the protected trademarks and trade names of others, which he has registered as domain names, it is apparent that the disputed domain name and the other domain names registered by the Respondent have been registered primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant and to the other owners of the trademarks / trade names they correspond.
The domain name has been registered in order to prevent the Complainant from reflecting its trademark in corresponding domain name and registration of dozens of similar names shows that the Respondent has engaged in a pattern of such conduct. It has been confirmed in the UDRP policy that this kind of action of the Respondent shall be evidence of the registration and use of a domain name in bad faith.
Based on the above facts it cannot reasonably be argued that the respondent would have been unaware of the Complainants rights when registering the domain name. On the contrary it is apparent that the Respondent has been in bad faith.
The Respondent has engaged in a pattern of registering the trademarks and trade names of others as domain names and is thus using the domain name in bad faith.
Therefore it is apparent that the contested domain name has been registered and is being used in bad faith.
As already stated the Respondent has not filed a response.
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:
1) that 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
2) that the Respondent has no rights or legitimate interests in respect of the domain name; and
3) that the domain name has been registered and is being used in bad faith.
Identical or Confusingly Similar
The Complainants mark "RAPALA" is a distinctive word that is registered and has been used in a number of European countries.
The contested domain name contains the mark in its entirety with the addition of the .info gTLD denomination.
The domain name is thus identical to the trademark in which the Complainant has rights.
The requirements set out in the Policy, Paragraph 4(a)(i) are therefore fulfilled.
The Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the mark.
Further, the Respondent has not demonstrated that he has any prior rights in the domain name and no evidence has been put before the Panel that shows that Respondent was commonly known by the domain name before that time or that non-commercial or fair use of the domain name has been or is being made.
The requirements of the Policy, Paragraphs 4(a)(ii) are also considered fulfilled.
Paragraph 4(a)(iii) of the Policy further provides that the Complainant must prove registration and use of the domain name in bad faith. Paragraph 4(b) sets out, by way of example, the kind of evidence that may be put forward.
The burden of proof of bad faith lies with Complainant. The trademark is not registered in the country where Respondent is a resident namely Sweden. Complainant has however furnished uncontested evidence that clearly indicates that Respondent must have had knowledge of Complainants rights when he registered the contested domain name. Respondent has thus registered several names of Finnish companies as domain names under the .info and .biz gTLDs.
The registration of the contested domain name prevents Complainant from being present under the gTLD .info under a name that reflects its trademark. Further it should be noted that the Panel agrees that passive use is also use within the meaning of the Policy, as stated in Telstra v. Nuclear Marshmallows, WIPO Case D2000-0003 and several subsequent decisions.
Consequently, the Panel finds that the precondition set forth in Paragraph 4(a)(iii) of the Policy are also met.
In view of the above circumstances and facts the Panel finds that the domain name <rapala.info> registered by the Respondent is identical to the trademark in which the Complainant has rights, that the Respondent does not have any rights or legitimate interests in respect of the domain names, and that the domain name has been registered and is being used in bad faith.
Consequently, the Panel decides that the domain name be transferred to the Complainant.
Dated: June 26, 2002