WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanoma Osakeyhtiö v. Dennington Sales and Marketing Ltd.
Case No. D2003-0026
1. The Parties
The Complainant is Sanoma Osakeyhtiö, Sanomat, Finland.Mr. Garry Peter Leigh, Timelinx S.A. of Málaga, Spain, represented by Martin McCafferty of Spain.
The Respondent is Dennington Sales and Marketing Ltd., Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, Inc. Registrar.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 13, 2003. On January 13, 2003, the Center transmitted by email to Network Solutions, Inc. Registrar a request for registrar verification in connection with the domain name at issue. On January 15, 2003, Network Solutions, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 16, 2003. In accordance with the Rules, Paragraph 5(a), the due date for Response was February 5, 2003. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent�s default on February 6, 2003.
The Center appointed Torsten Bettinger as the sole Panelist in this matter on February 24, 2003. 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 is the publisher of "Helsingin Sanomat," the biggest daily newspaper in Scandinavia with over 1.2 million readers. Helsingin Sanomat is Finland�s leading national paper, which is read by more than three-fourths of the residents of the Helsinki metropolitan area and by a quarter of all Finns. Helsingin Sanomat is also the leading Finnish advertising paper with over half a million ads printed yearly.
The paper also has a nationwide network of regional offices and its own correspondents in Berlin, Brussels, London, Moscow, Stockholm, Washington D.C. and Hong Kong and contributing writers around the world.
The Complainant is the proprietor of the following trademark registrations:
a) Finnish registrations:
Reg. No
Trade Mark
Classes
68334
HELSINGIN SANOMAT
16, 35, 41
8991
HS HELSINGIN SANOMAT
16
134137
HELSINGIN SANOMAT asuntotieto
16, 35, 36
206394
HELSINGIN SANOMAT � heräämisen arvoinen
9, 16, 41
206392
Heräämisen arvoinen � HELSINGIN SANOMAT
9, 16, 41
b) Community Trade Mark:
Reg. No
Trade Mark
Classes
282400
HELSINGIN SANOMAT
9, 16, 35, 41, 42
The Complainant is further the holder of the domain names and .
The Respondent is a Bahamas based company and is the Registrant of the domain name .
5. Parties� Contentions
A. Complainant
The Complainant contends that is identical or confusingly similar to Complainant�s registered trademarks.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the domain name at issue and that it has not licensed or otherwise permitted the Respondent to use the domain name or any of its trademarks which include the words Helsingin Sanomat.
The Complainant further asserts that the Respondent has no connection with the name Helsingin Sanomat.
The Complainant submits that the domain name shall be considered as having been registered and used in bad faith by the Respondent because the domain name is used solely to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant�s HELSINGIN SANOMAT trade marks as to the source, sponsorship, affiliation or endorsement of the Respondent�s website.
The Complainant requests that the Administrative Panel issue a decision that the domain name be transferred to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant�s contentions.
6. Discussion and Findings
Pursuant to Paragraph 4(a), the Complainant must prove that each of the following three elements are present if it is to prevail:
(i) The Respondent�s "domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights";
(ii) The Respondent has "no rights or legitimate interests with respect to the domain name"; and
(iii) The "domain name has been registered and is being used in bad faith."
A. Identical or Confusingly Similar
The Respondent has registered the domain name . This domain consists of exactly the same verbal elements as Complainant's protected trademark HELSINGIN SANOMAT except the domain name adds the generic top-level-domain ".com."
It is well established that the specific top level of the domain name such as ".org," ".net" or ".com" does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (See for examples WIPO Case Nos. D2000-0135, D2000-0429 and D2000-1400).
The Panel therefore concludes that the domain name is confusingly similar to a trademark or service mark in which the Complainant has prior exclusive rights and that the requirement of Paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The Policy outlines (Paragraph 4(c)) circumstances which, if found by the Panel to be proved, shall demonstrate the Respondents� rights or legitimate interest in the domain names. These circumstances are:
(i) before any notice to the Respondent of the dispute, the Respondent�s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) 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 non-commercial 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.
Considering this issue the Panel notes that the Respondent uses a domain name that, apart from the top-level-domain suffix, is identical to the trademark registered by the Complainant and that the Respondent uses the Complainant�s trademark on his website without the Complainant�s authorization.
The Respondent does not trade under the domain name or the name Helsingin Sanomat. Furthermore, the Respondent has not been and is not commonly known by said domain name or the name Helsingin Sanomat.
The Panel further notes that Respondent has chosen not to submit a Response and draws from this failure of the Respondent to submit a Response the conclusion that the Respondent does not deny these facts.
Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the domain name and that the requirement of Paragraph 4(a)(ii) of Policy is also satisfied.
C. Registered and Used in Bad Faith
The final factor is whether the Respondent registered and is using the domain name in bad faith.
The Complainant provided evidence of facts and the Respondent has not denied these facts, which clearly indicate that the Respondent registered and is using the domain name in bad faith.
i) The domain name in question is made up in the Finnish language. The Respondent is a Bahamas-based company where Finnish is indeed not a common language. It seems highly unlikely, that the Respondent uses the relatively long and difficult name of a very well known Finnish newspaper as a domain name by mistake.
ii) Furthermore, the technical contact of the Respondent, seems to be a person with a Swedish background (Swedish contact details), so the newspaper Helsingin Sanomat cannot be entirely unfamiliar to the Respondent.
iii) The words "Helsingin Sanomat" connotes a connection with a Finish newspaper or magazine. The Respondent is not the publisher of a newspaper or a magazine nor does it have any connections with Finland. It therefore appears that the Respondent has registered and used the domain name in order to create an association with the Complainant and as a means of attracting users to his website. This creates a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site.
The Panel therefore concludes that Respondent registered and is using the domain name in bad faith and that also the requirement of the Paragraph 4(a)(iii) of the Policy is satisfied.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Torsten Bettinger
Sole Panelist
Dated: March 10, 2003
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