WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lumon Oy v. VH-Laatusaneeraus ky
Case No. D2003-0272
1. The Parties
The Complainant is Lumon Oy, a company incorporated under the laws of Finland, having its principal place of business in Kouvola, Finland, represented by T Srl of Italy.
The Respondent is VH-Laatusaneeraus ky, a company incorporated under the laws of Finland, having its principal place of business in Kuusankoski, Finland.
2. The Domain Names and Registrar
The domain name at issue is , which is registered with eNom, Inc.
3. Procedural History
A Complaint was submitted by e-mail to the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on April 9, 2003, and in hardcopy on April 14, 2003. An Acknowledgment of Receipt was sent by the Center to the Complainant, dated April 10, 2003.
On April 10, 2003, the Center transmitted by e-mail to eNom, Inc. a request for registrar verification in connection with the domain name at issue. On April 17, 2003, eNom, Inc. transmitted by e-mail 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 satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, in effect as of December 1, 1999 (the "Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.
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 April 23, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was May 13, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on May 15, 2003.
The Center appointed Jonas Gulliksson as the sole panelist in this matter on May 28, 2003. The Panel finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules. 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. The Administrative Panel shall issue its decision based on the Complaint, the Policy, the Rules, and the Supplemental Rules.
4. Factual Background
The Complainant and its Registered Trademarks
The textual element "lumon" has been registered by the Complainant as a trademark in 27 countries, including among others Finland, Sweden, Norway, Iceland, Denmark, Germany, Austria, USA, Canada, Great-Britain, China, Japan, Spain and Lebanon. A complete list of all countries where the trademark "LUMON" is registered can be found in Annex C to the Complaint. The registration number of the trademark "LUMON" is 755014, and the trademark registration date is April 5, 2001. The trademark will remain valid until April 5, 2011. The trademark "LUMON" is used for the following goods and services:
CI 06: "Common metals and their alloys; metal building materials; transportable buildings of metal; non-electric cables and wires of common metal; ironmongery, small items of metal hardware, pipes and tubes of metal; goods of common metal not included in other classes; doors of metal, supporting structures of metal not included in other classes; doors of metal, supporting structures of metal for windows, glass panes, glasshouses and greenhouses, attachment parts of metal related thereto, profiles of metal, frames of metal, frameworks of metal, mounting fixtures of metal and hinges of metal."
CI 19: "Building materials (non-metallic); non-metallic rigid pipes for building; non-metallic transportable buildings; non-metallic doors, windows, glass panes, balcony glazings, façade glazings, glasshouses and greenhouses, glazed rooms and glass roofings, non-metallic attachment parts related thereto, non-metallic profiles, non-metallic frames, non-metallic frameworks and non-metallic supporting structures for windows, glass panes, glasshouses and greenhouses."
The Complainant, the Finnish company Lumon Oy, is a manufacturer and seller of glass panes, balcony glazings, façade glazings, glasshouses and greenhouses, glazed rooms and related metal and non-metal profiles and frames for the glass fixtures. The trademark "LUMON" is directly linked with the products described above. The Finnish company Lumon Oy has a Swedish subsidiary called Svenska Lumon AB. The subsidiary in Spain is called Lumon Cristales Espana, and also the business name of the recently purchased Norwegian subsidiary will contain the textual element "Lumon".
The Complainant has also registered its trademark under various Top Level Domains (TLDs) such as (Germany), (Italy), (Denmark), (Finland) and many others. See Annex D to the Complaint for a print-out of some of the before mentioned whois-outputs of the registration record of the trademark "LUMON" under various TLDs.
The domain name was registered by the Respondent on November 28, 2001.
5. Parties� Contentions
A. Complainant
(1) The Domain Name is Identical or Confusingly Similar to a Trademark in which Complainant has Rights
The domain name subject to this complaint procedure, , is identical to the registered trademark and company name of the Complainant, which might create confusion, especially since the Complainant has registered its trademark under various Top Level Domains such as (Germany), (Italy), (Denmark), (Finland) and many others. See Annex D to the Complaint for a print-out of some of the before mentioned whois-outputs of the registration record of the trademark "LUMON" under various TLDs.
(2) Respondent has No Rights or Legitimate Interests in the Domain Name
When typing in the domain name in the Internet browser, a page is being displayed which announces that the domain name has been registered by one of the customers of Euronic Oy, apparently a Reseller of, or another entity linked to, the Registrar eNom, Inc. In Annex E to the Complaint a print-out of the page that is being displayed when you type "www." in the Internet browser window is provided. The current domain name registrant of the domain name , the Respondent to this Complaint Procedure, has not yet linked active web pages to his domain name, even though the domain name was already registered in 2001. As far as the Complainant can deduce from the page displayed under "www.", the domain name holder is not using the domain name for the www-service of the Internet in connection with a bona fide offering of goods or services. The Complainant is not in possession of evidence, which demonstrates that the Respondent foresaw to use the domain name on the Internet in connection with a bona fide offering of goods or services.
Neither does the entity VH-Laatusaneeraus ky, nor its contact person Vesa Hook, known as the Respondent in this Complaint Procedure, have any business relations with the Complainant, Lumon Oy or any of its subsidiaries. The Respondent is not a distributor, agent, wholesaler or retailer of LUMON products. The Respondent is not commonly known by the domain name, but the Complainant has strong evidence that the domain name was being registered by the Respondent as an action of cybersquatting. This means that the domain name was being registered by the Respondent, to subsequently sell it to the Complainant for a huge sum.
(3) Respondent Registered and is Using the Domain in Bad Faith
The domain name was registered with a clear intent for commercial gain, as evidenced by Annex F to the Complaint. In Annex F a print-out of the e-mail communication between the Respondent and one of the authorized Representatives of the Complainant is provided. The Respondent declines a compromise proposed by the Complainant, and declares in one of his e-mails to be willing to sell the domain name for 15.000,00 euro, thus clearly demonstrating that the domain name was being registered in bad faith with the only purpose being to sell it to make money out of it. By registering the domain name , the Respondent abuses the fame, notoriety and good reputation of the trademark "LUMON", registered by the Complainant, the company Lumon Oy, an important player in the European market for the manufacturing and selling of glass panes, balcony glazings, façade glazings, glasshouses and greenhouses, glazed rooms and related metal and non-metal profiles and frames for the glass fixtures. The Complainant has asked the Respondent, VH-Laatusaneeraus ky, to return the rights to domain name to Lumon Oy; Lumon Oy even offered to compensate Respondent for any registration or maintenance expenses that it may have incurred. It has been brought to the attention of VH-Laatusaneeraus ky several times that Lumon Oy considers the registration of the domain name a hostile and improper act.
Domain names are being registered on a unique basis; there cannot be two identical domain names under one specific Top Level Domain, in this case, .info. Since the Respondent registered the domain name , the Respondent has prevented the Complainant from using his registered trademark "LUMON" under domain extension.
Domain names can be registered for a variety of purposes: not only can they be used in order to publish web pages on the Internet, but they can also be used for the creation of e-mail addresses, ftp purposes, Domain Name Server services, etc. Even though there are currently no active web pages linked to the domain name , the domain name could be used for many different purposes, excluding the www-service, in order to attract for commercial gain, Internet users to the Respondent�s web site or other on-line location, by creating a likelihood of confusion with the Complainant�s mark as to the source, sponsor-ship, affiliation, or endorsement of the Respondent�s web site or location or of a product or service on the Respondent�s web site or location. The Complainant is a well-known player in the European market for the manufacturing and selling of glass panes, balcony glazings, façade glazings, glasshouses and greenhouses, glazed rooms and related metal and non-metal profiles and frames for the glass fixtures. Moreover, the Complainant has registered the trademark "LUMON" in 27 countries and has registered this trademark under many different Top Level Domains, both generic Top Level Domains such as .com, and country code Top Level Domains such as .it , .fi , .de and many more. Seeing the notoriety of the trademark "LUMON" and the company Lumon Oy, the Respondent created confusion by registering the domain name , which is identical to the registered trademark of the Complainant, identical to the company name of the Complainant, and identical to the second level of numerous domain name registrations owned by the Complainant. All of these factors have a great likelihood to create confusion.
The Complainant has requested the Administrative Panel to issue a decision by which the contested domain name is transferred to the Complainant.
B. Respondent
The Respondent has not replied to the Complainant�s contentions.
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.
The Complainant has shown that it is the proprietor of several registered trademarks throughout the world regarding the trademark "LUMON". The Complainant has also shown that it has registered its trademark under various Top Level Domains such as (Germany), (Italy), (Denmark), (Finland) and others.
In view of the above, it is the Panelist�s opinion the domain name is confusingly similar to the "LUMON" trademarks of the Complainant, except for the addition of ".info". Accordingly, the Panelist finds that the domain name at issue is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Given the Respondent�s failure to submit a response, the Respondent has not proven that he has any prior rights or legitimate interests in the domain name. In addition, the Complainant has not authorised the Respondent�s activities, nor does it have any control over these activities.
The prerequisites in the Policy, paragraph 4(a)(i) and (ii) are therefore fulfilled.
Paragraph 4(a)(iii) of the Policy deals with the registration and use of domain names in bad faith.
Given the Respondent�s failure to file a Response in this case, the Panel accepts as true all of the allegations of the Complaint, See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (February 29, 2000), � d. The Respondent�s default does not, however, translate into an automatic ruling for the Complainant. On the contrary, the Complainant still must establish a prima facie showing that, under the Policy, it is entitled to transfer of the domain name.
The circumstances mentioned in sub-paragraphs 4(b)(i)-(iv) of the Policy, if found by the Panel to be present, are examples of facts which constitute evidence of the registration and use of a domain name in bad faith.
For the purposes of determining if the contested domain name has been registered and used in bad faith the Panel has considered whether the circumstances set out in 4 (b)(i) of the Policy are at hand in this case. The Policy states, inter alia, that evidence of registration and use in bad faith is present if the circumstances indicate that the registration of the domain name was primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name.
The Complainant has submitted an e-mail communication between the Respondent and one of the authorized Representatives of the Complainant , see Annex F to the Complaint, in which the Respondent declines a compromise proposed by the Complainant, and declares in one of his e-mails that he is willing to sell the domain name to the Complainant for 15.000,00 euro.
According to the Complainant, the Respondent has not yet linked active web pages to the domain name , even though the domain name was already registered in 2001. As far as the Complainant can deduce from the page displayed under "www.", the domain name holder is not using the domain name in connection with a bona fide offering of goods or services.
As shown in previous decisions under the UDRP, active use of the domain name is not necessary in order to constitute bad faith use. It has previously been established that bad faith use is not limited to positive action, and that passive holding of a domain name may constitute bad faith use (see WIPO Case No. D2000-0003, Telstra Corporation Limited v. Nuclear Marshmallows). Bad faith use, in the meaning of the Policy, paragraph 4(a)(iii) may also, according to previous decisions under the UDRP (see WIPO Case No. D1999-0001, World Wrestling Federation Entertainment, Inc. v. Michael Bosman), consist of an offer to sell the domain names at issue for an amount considerably exceeding the Respondent�s out-of-pocket costs.
However, it should be noted that the mere fact that the Respondent, when approached by the Complainant, showed a willingness to sell the domain name does not, in itself, constitute bad faith. In this case, the Complainant has asked the Respondent to return the rights to domain name to the Complainant and offered to compensate the Respondent on any registration or maintenance expenses that may have occurred to the Respondent. The fact that the Respondent, upon having been contacted by the Complainant, offered to sell the domain name for 15.000,00 euro does not necessarily constitute bad faith on behalf of the Respondent.
However, in this case both the Respondent and the Complainant are residents in the same country, namely Finland. Furthermore, the Complainant registered the trademark "LUMON" in Finland on November 5, 1992. The Respondent registered the domain name on November 28, 2001. According to the Complainant, the Respondent is not using the domain name in connection with a bona fide offering of goods or services. Finally, the Respondent has not replied to the Complainant�s contentions. In view of all of these circumstances, and the fact that the Complainant has evidenced that the Respondent has made an offer to sell the domain name to the Complainant for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name, the Panelist finds that the conduct of the Respondent constitutes registration and use of the domain name in bad faith in accordance with paragraph 4(b)(i) of the Policy.
Consequently, the Panelist finds that the contested domain name has been registered and used in bad faith in accordance with paragraph 4(a)(iii) of the Policy. Therefore, all the prerequisites for cancellation or transfer of the domain names according to paragraph 4 (i) 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 Panelist decides that the domain name registered by the Respondent is identical or confusingly similar to the trademark and service mark in which the Complainant has rights, and that the Respondent has no 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 Panelist requires that the registration of the domain name be transferred to the Complainant.
Jonas Gulliksson
Sole Panelist
Dated: June 9, 2003
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