WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Schauman Wood Oy v. S Meta Search
Case No. D2001-1145
1. The Parties
Complainant is Schauman Wood Oy, Lahti a corporation organized and existing under the laws of Finland, represented by Jennifer L. Johnson, Esq., White & Case LLP, New York, USA.
Respondent is S Meta Search, Huntington Beach, California, USA.
2. The Domain Name and Registrar
The domain name at issue is . The registrar is BulkR, Inc., Baltimore, Maryland, USA.
3. Procedural History
A Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on September 19, 2001. The WIPO Center sent an Acknowledgment of Receipt to the Complainant on September 21, 2001.
On September 24, 2001, a Request for Registrar Verification was transmitted to the Registrar, BulkR. BulkR confirmed by e-mail that they were in receipt of the Complaint sent to them by the Complainant and that the domain name was registered with them, but pointed out that the mentioned Respondent was not the current registrant of the name. The Registrar at the same time forwarded the requested WHOIS details, confirmed that the Uniform Domain Name Dispute Resolution Policy was in effect and stated that the domain name was on "Registrar LOCK" status.
The WIPO Center informed the Complainant of the deficiency on September 26, and hardcopies of the amended Complaint was received on September 28, 2001. A Formal Requirements Compliance Checklist was completed by the assigned WIPO Center Case Administrator. The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Uniform Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "WIPO Supplemental Rules").
The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.
All formal deficiencies having been cured, on September 27, 2001, 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 October 17, 2001, by which the Respondent could file a Response to the Complaint.
On October 22, 2001, having received no Response from the designated Respondent, the WIPO Center transmitted to the parties a Notification of Respondent Default.
On October 26, 2001, in view of the Complainant�s designation of a single panelist (but without prejudice to any election to be made by the Respondent) the WIPO Center invited Mr. Knud Wallberg to serve as a panelist in the Case, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.
Having received on the same day, Mr. Knud Wallberg�s Statement of Acceptance and Declaration of Impartiality and Independence, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Knud Wallberg was formally appointed as the Sole Panelist. The Projected Decision Date was November 9, 2001.
The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and WIPO Supplemental Rules.
The Administrative Panel shall issue its Decision based on the Complaint, the Policy, the Uniform Rules, the WIPO Supplemental Rules, but without the benefit of a Response from the Respondent.
4. Factual Background
The Complainant, Schauman Wood Oy, a subsidiary of UPM-Kymmene Corporation, is one of the leading plywood and veneer manufacturers in Europe with special emphasis on product development. The Complainant has nearly one hundred years of experience in plywood manufacturing, product development and customer service. The Complainant was established in 1912 and since 1996 ,the Complainant has been a part of the UPM-Kymmene Corporation.
Throughout its history, the Complainant has expanded it production and developed its manufacturing technologies under the SCHAUMAN WOOD brand name.
The Complainant has used the SCHAUMAN WOOD Trademark since 1989, and the domain name SCHAUMANWOOD.COM since 1998.
With an annual production capacity of 910,000 m3 of plywood and veneers, the Complainant ranks as the number one plywood manufacturer in Europe. The Complainant has thirteen plywood and veneer mills in Finland, one plywood mill in France, and one joint venture in Russia and Estonia. In 2000, the Complainant had an annual turnover of about 500 million euro and a workforce of about 4200 people.
The Complainant and its authorized distributors have spent approximately ten million dollars advertising and publicizing the Complainant�s SCHAUMAN WOOD products throughout the world. The Complainant has advertised and publicized its SCHAUMAN WOOD products on the Internet via its World Wide Web site . Due to the misappropriation of the Complainant�s domain name, which is the subject of this dispute, the Complainant now advertises and publicizes its SCHAUMAN WOOD products on the Internet via its world wide web site .
The domain name was registered by the Complainant with Network Solutions, Inc. ("NSI") several years ago. Due to very particular circumstances, NSI did not receive or accept the Complainants payment of the renewal fee and consequently canceled the Complainant�s registration for the domain name.
5. Parties� Contentions
A. Complainant
Inexplicably and without the Complainant�s consent, the Respondent registered the domain name with BulkR, Inc., on June 28, 2001. In or about July 2001, the Complainant discovered that its domain name was in use by a commercial pornographic Web site provider at "".
According to a WHOIS search, the Complainant�s domain name was originally registerd to "Domain Administrator" but is now registered with BulkR, Inc. to "S Meta Search" in Huntington Beach, California.
The Complainant has sent correspondence to the Respondent and, upon information and belief, those affiliated with the Respondent demanding that the illegitimate use of the domain name be discontinued and transferred to the Complainant immediately. A copy of the letter sent by White & Case LLP of behalf of the Complainant was attached to the Complaint. While the Complainant has received no Response or Transfer Agreement from the Respondent, the link to the porn site was recently disabled.
The improper use of the Complainant�s domain name has caused, and will continue to cause, damage to the reputation and goodwill of the SCHAUMAN WOOD trademark and the Complainant�s business. In addition, this improper use has caused confusion and, needless to say, tarnishment of the Complainant�s trademark among its customers looking for its web site, and the goods and services normally found at .
1. The Domain Name At Issue Is Identical To The Trademark In Which the Complainant Has Rights
The domain name in issue is . The Complainant has legitimate rights in the SCHAUMAN WOOD mark. The Complainant previously owned this domain name, which incorporates wholesale the Complainant�s valuable trademark. The relevant part of the domain name, "SCHAUMANWOOD," is identical to the trade name and trademark that the Complainant has used for over ten years. Accordingly, the whole of the domain name is identical to the Complainant�s trademark.
2. The Respondent Has No Rights Or Legitimate Interests In Respect of the Domain Name
The Respondent has allegedly used the domain name in connection with a web site devoted to pornography. This use conflicts with Complainant�s SCHAUMAN WOOD mark. Prior UDRP Panels have found no rights or legitimate interests in a domain name where the Respondent�s purported use seems rather dubious. See Sunglass Hut Corporation v. Domain Administrator, FA0102000096691 (NAF April 9, 2001) (finding no rights or legitimate interests where Respondent�s plans to use domain name in connection with Web site devoted to beautiful females from Sung Dynasty); Reuters Ltd. v. Teletrust IPR Ltd., WIPO Case No. D2000-0471 (September 8, 2000) (finding no rights or legitimate interests where Respondent�s proposed business plan does not correspond with Respondent�s use of the word "Reuters" or the acronym "REttungsUnfallTransportERkennungsServiceMOBILE" which Respondent claims domain name represents). As such, the Respondent does not have any rights or legitimate interests in the domain name SCHAUMANWOOD.COM.
Moreover, the Respondent is not commonly known by the disputed domain name, nor has the Respondent used the domain name in connection with a legitimate or noncommercial use. See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum February 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use). On the contrary, the Respondent has used the domain name SCHAUMANWOOD.COM solely to divert the Complainant�s customers to another Web site for financial gain by using the valuable mark to draw Internet users to a pornography web site so that the Respondent can make a profit from advertising. See Sunglass Hut Corporation v. Domain Administrator, FA0102000096691 (NAF April 9, 2001) (finding no rights or legitimate interests where Respondent�s plans to use domain name in connection with web site devoted to beautiful females from Sung Dynasty). Such a use falls far short of qualifying as a legitimate, non-commercial or a fair use of the mark. The Respondent is unable to demonstrate any use of or preparations to use a name with the corresponding domain name in connection with a bona fide offering of goods and services. Further, the Respondent can produce no evidence of being commonly known by the domain name. For these reasons, Policy � 4(c) is satisfied.
3. The SCHAUMANWOOD.COM Domain Name was Registered and Used by The Respondent in Bad Faith
The Respondent is a classic cybersquatter who registers and uses "lapsed" domain names in an attempt to trade off the goodwill of others. The Respondent�s basic ploy is based on a front of "Domain Recovery" for those who lose their domain name "by accident, neglect, abandonment" as mentioned in Annex J. The Respondent, a cyberpirate, steals domain names, then charges their rightful owners USD $895.00 for "expedited" recovery. In fact, this is not the first ICANN proceeding that has been brought against the Respondent. A true and correct copy of a decision made in the matter of Sunglass Hut Corporation v. Domain Administrator, FA0102000096691 (NAF April 9, 2001), by the National Arbitration Forum, was attached as Annex K.
The Respondent has registered the domain name in bad faith. The Respondent has taken deliberate steps to ensure that its true identity cannot be determined, and communication with it cannot be made, by using the name "S Meta Search" with a California address and supplying a Western Massachusetts phone number. In fact, until the Complainant took steps to stop the Respondent�s unlawful use of its domain name, the Respondent merely listed its name as "Domain Administrator." Given the Complainant�s common law trademark rights worldwide in the mark SCHAUMAN WOOD, it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the domain name . It is also not possible to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration. These facts, together with the fact that Respondent has no rights or interests in the domain name, lead to the conclusion that the Respondent has registered the domain name in bad faith.
The Respondent has used the domain name in bad faith. It is clear that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its pornographic web site by creating a likelihood of confusion with the Complainant�s mark as to the source, sponsorship, affiliation or endorsement of the Respondent�s web site. Policy � 4(b)(iv). Internet advertising revenues typically correlate to the amount of traffic experienced by the Web site on which the advertising is posted. Upon information and belief, the Respondent�s used the web site for the specific purpose of driving Internet traffic to the Respondent�s web site to increase advertising or other revenues. The Respondent�s use of the site to display "Cybererotica" is offensive and derogatory to the Complainant and its customers who would be confused when accessing the Respondent�s Web site. See Sunglass Hut Corporation v. Domain Administrator, FA0102000096691 (NAF April 9, 2001), CCA Indust., Inc. v. Dailey, WIPO Case No. D2000-0148 (April 26, 2000), MatchNet plc. v. MAC Trading, WIPO Case No. D2000-0205 (May 11, 2000) and Sunglass Hut Corporation v. Domain Administrator, FA0102000096691 (NAF April 9, 2001) in which it is said: "Respondent is not prohibited from creating and maintaining such a website, but it cannot be allowed to use the confusingly similar domain name in connection with such an endeavor."
Moreover, that Respondent has recently disabled the link from SCHAUMANWOOD.COM to the pornographic site does not imply good faith use of the domain name. This Panel has found that the passive holding of a domain name for a period of time can be evidence of bad faith. See Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000) ("[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith").
B. Respondent
As mentioned above in section 3, the Respondent has not filed a Response in accordance with the Rules, Para. 5 and regrettably no other information on or by the Respondent has been presented to the Panel.
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 legitimate interests in respects of the domain name; and
3) the domain name has been registered and used in bad faith.
Identical or confusingly similar
According to the provided information by the Complainant neither SCHAUMAN nor SCHAUMAN WOOD has been registered as a trademark. On the other hand the annexes show that the name SCHAUMAN has been used separately or in combinations with other elements, including WOOD, as trade name. Also, it is noted that SCHAUMAN WOOD is the dominant part of Complainants Finnish company name. Based on these information, and the uncontested and in the Panels view reliable information on the long time use of the name and the amount of money spent on promotion of the same, the Panel finds that there is sufficient evidence to assert that Complainant has acquired rights to the mark SCHAUMAN and SCHAUMAN WOOD through use.
The Panel notes in this respect that the UDRP does not require a trademark to be registered to fall under Paragraph 4(a)(i), which has been recognized in many previous panel decisions, such as WIPO Case D2000-1688.
The domain name is identical to the mark SCHAUMAN WOOD except for the addition ".com", and must also be considered confusingly similar to the distinctive mark SCHAUMAN.
The prerequisites in the Policy, Paragraph 4(a)(i) are therefor fulfilled.
Legitimate interest
The Complainant has not licensed or otherwise permitted Respondent to use its trademark or to apply for any domain name incorporating the mark. Further, the Respondent has not proven that he has any prior rights or legitimate interests in the domain name. The mere indication in the Registrant details for the domain name of a name of the holder � S Meta Search -, which contains the distinctive part of the domain name, is not in itself evidence of such a nature as to substantiate a legitimate interest in the domain name. This is especially so since the current Registrant has the same address as Domain Administrator, the entity that registered the domain name in the first place when it became vacant. It is, therefore, most likely that the name of the "new" Registrant was simply adopted for the purpose of defense in UDRP-proceedings.
The prerequisites in the Policy, Paragraph 4 (a) (ii), cf. 4 (c) are also considered fulfilled.
Bad faith
Paragraph 4(a)(iii) of the Policy further provides registration and use in bad faith. Paragraph 4(b) regulates, by way of example, the kind of evidence that is required.
It is not entirely clear to the Panel what the connection between the domain name at issue, the pornographic site shown in the annexes and the Respondent is. The pornographic site uses its own domain name , and this domain name is not registered by the Respondent but by Voice Media, Carson City, NV, USA. Further, Complainant has not put any evidence before the Panel that show that the contested domain name has actually been used for the pornographic site e.g. through web-forwarding or mirroring.
While it is not in itself an illegitimate business to monitor and register domain names that have lapsed for one reason or another, it must, on the other hand be clear to a Registrant, who is engaged in such activities, that many of the released domain names actually reflects trademarks of the original holder of he domain name. Many of the registrations will therefore eo ipso be done in bad faith. The wording of the text of the web site shown in Annex J - a web site that belongs to Domain Administrator (an alias for the Respondent) - supports this view, since it clearly shows that the vacant domain names are primarily registered with the intention of selling them back to the original holder. With regard to the present case, it is further important to state that the mere holding of a domain name that is identical or confusingly similar to a trademark belonging to someone else, prevents the holder of the said mark to be present on the Internet under a domain name that reflects the trademark, which in itself can be considered disrupting to its business. The Panel agrees that it is within the scope of the rights conferred to a trademark to regard "passive use" as "use", cf. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and several other subsequent decisions.
It should, further, be noted that after the filing of the case, the Panel has observed that the contested domain name has become active. It now hosts an apparent search engine bearing the same name as the Respondent. Respondent is thus at present using the domain name actively.
Bearing these facts and the above arguments in mind, the Panel finds that the domain name has been registered and is being used in bad faith, cf. Paragraph 4 (a) iii and 4 (b).
Consequently, all the prerequisites for cancellation or transfer of the domain name according to Paragraph 4(a) of the Policy are fulfilled.
The Complainant has requested transfer of the domain name.
7. Decision
In view of the above circumstances and facts the Panel decides, that the domain name registered by Respondent is identical or confusingly similar to the trademarks in which the Complainant has rights, that the Respondent has not shown to have any rights or legitimate interests in respect of the domain name, and that the Respondent�s domain name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name be transferred to the Complainant.
Knud Wallberg
Sole Panelist
Dated: November 7, 2001
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