The Complainant is Stora Enso Oyj of Helsinki, Finland, of represented by Valea AB, Sweden.
The Respondent is Hoang Nguyen of Sunnyvale, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2010. On October 18, 2010, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed domain name. On October 27, 2010, Melbourne IT Ltd. 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 Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 October 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 17, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 18, 2010.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on November 24, 2010. 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 owner, amongst others, of the following trademark registrations (Annex F to the Complaint):
TRADEMARK
REG. No.
Class
(Int’l)
DATE OF REGISTRATION
COUNTRY
STORA ENSO (AND DESIGN)
715350
1, 16 and 19.
June 3, 1999.
International Registration
STORA ENSO (AND DESIGN)
2,814,472
35, 38 and 39.
February 17, 2004
United States.
STORA ENSO (AND DESIGN)
2,705,718
1, 16 and 19.
April 15, 2003.
United States.
STORA ENSO
001219640
1, 16 and 19.
September 20, 2000.
OHIM
STORA ENSO
007576036
2, 4, 5, 17, 40 and 42.
December 22, 2009.
OHIM
The disputed domain name was registered on March 31, 2010. 5. Parties’ Contentions A. Complainant
The Complainant argued the following:
- That Stora Enso Oyj was established in 1988 after a merger between the Swedish company Stora and the Finnish company Enso.
- That Complainant is one of the world’s largest forest products companies with 27,000 employees and 88 production facilities in more than 35 countries worldwide.
- That STORA ENSO is a global paper company with four main areas of business: publication paper; packaging; fine paper and wood products.
- That Complainant has established its presence in all continents, with more than 30 sales companies.
- That Complainant is the owner of the STORA ENSO trademark throughout the world.
- That the reputation associated with the Complainant’s mark STORA ENSO is excellent by virtue of the quality of Complainant’s goods and services and that the STORA ENSO mark is undisputedly considered a well-known trademark within its field of business.
- That Complainant is the owner of more than 100 active domain name registrations throughout the world containing the trademark STORA ENSO. 1. Identical or Confusingly Similar
- That the domain name is confusingly similar to Complainant’s trademark and trade name STORA ENSO as the said domain name comprises Complainant’s trademark STORA ENSO.
- That the gTLD, “.org” must be excluded from consideration as being a generic and functional component of the domain names.
- That the dominant part of the disputed domain name comprises the name STORA ENSO, which is identical to the Complainant’s registered trademark and trade name.
- That the addition of a hyphen and the suffix “info” does not impact the overall impression of the dominant part of the name STORA ENSO.
- That the additional term “info” is a common term of no significant value in distinguishing the trademark and trade name STORA ENSO from the disputed domain name.
- That is visually, phonetically and conceptually confusingly similar to the Complainant’s trademark STORA ENSO.
- That due to the fact that the domain name at issue incorporates the trademark STORA ENSO followed by the descriptive term “info”, the public is inclined to think that will lead to a website related to the Complainant. 2. Rights or Legitimate Interests
- That the Respondent has no rights or legitimate interests in the domain name based on the Complainant’s continuous and long prior use of its mark and trade name.
- That the Respondent has used the disputed domain name in connection with an email fraud scheme, which is not a bona fide commercial purpose.
- That the Complainant has not licensed or otherwise permitted the Respondent to use its trademark.
- That there is no relationship between the parties which would justify the registration of the domain at issue by the Respondent.
- That nothing in the docket, including the WhoIs information, suggests that the Respondent is commonly known by the disputed domain name.
- That the website to which the disputed domain name resolves is “www.”, which features the possibility of building and putting up a homepage. At said webpage, the trademark STORA ENSO is displayed.
- That the disputed domain name is also used as a tool for exchanging e-mail correspondence that has been sent out and signed by Alicia Gates claiming to be the Administrative Officer of STORA ENSO and used in connection with the recruitment of paper products distributors in the United States.
- That the act of redirecting Internet users to other website by using the reputation and goodwill of the Complainant’s trademark through a domain name that is confusingly similar, does not constitute a bona fide offering of goods and services.
- That the unauthorized appropriation of another’s trademark in a domain name, and the commercial use of the domain name in a corresponding website do no generally confer rights of legitimate interests upon the owner of such a domain name.
- That the use of the disputed domain name in e-mail correspondence misleads and fraudulently confuses costumers to believe that the business operated by the domain name holder is in some way connected to or endorsed by STORA ENSO. 3. Registered and Used in Bad Faith
- That the Respondent, like everyone else in its industry, must have known of the Complainant’s trademark.
- That the Respondent could not have chosen or subsequently used the word “storaenso” in its domain names for any reason other than to trade-off the goodwill and reputation of the Complainant’s trademark or otherwise create a false perception of association, sponsorship or endorsement with the Complainant.
- That the registration of domain names confusingly similar to a registered trademark by a person with no connection to that trademark amounts to “opportunistic bad faith”.
- That by using the domain name in the email address “adminofficer@”, the Respondent in the name of Alicia Gates is claiming to be the Administrative Officer of STORA ENSO and has used it in connection with the recruitment of paper product distributors in the United States.
- That in said recruitment process the trademark STORA ENSO is also used by the Respondent to engage in fraud. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with the Policy, paragraph 4(a), the Complainant must prove that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights, and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name, and
(iii) The disputed domain name has been registered and is being used in bad faith.
In the administrative proceeding, the Complainant must prove that each of these elements are present.
As the Respondent has failed to submit a Response to the Complainant’s contentions, the Panel may choose to accept as true all of the reasonable allegations of the Complaint (Allianz, Compañía de Seguros y Reaseguros, S.A. v. John Michael, WIPO Case No. D2009-0942). A. Identical or Confusingly Similar
The Complainant is the owner of the trademark STORA ENSO in several jurisdictions, as well as other trademarks incorporating the term “stora enso”, in combination with other elements.
Said trademark STORA ENSO is entirely incorporated in the disputed domain name . The addition of the generic term “info” does not confer a distinctive character to the disputed domain name, in relation to Complainant’s trademarks. (See Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434; see also International Business Machine Corporation v. Scott banner, WIPO Case No. D2008-0965; and TPI Holdings Inc. v. Carmen Armengol, WIPO Case No. D2009-0361).
The addition of a hyphen between the terms “storaenso” and “info” does not avoid the confusing similarity between the disputed domain name and the Complainant’s trademarks. (See National Football League v. Online Marketing International also known as International Marketing Group, WIPO Case No. D2008-2006; also see Diageo Brands B.V., Diageo North America, Inc., and United Distillers Manufacturing, Inc. v. iV a.k.a. Alec Bargman WIPO Case No. D2004-0627).
The addition of the generic top-level domain “.org” is immaterial for purposes of the Policy. To carry into effect the confusing similarity analysis, a panel usually does not take into account the generic top-level domain (gTLD) “.org”, because such gTLD has no legal significance. (See Diageo Brands B.V., Diageo North America, Inc., and United Distillers Manufacturing, Inc. v. iV a.k.a. Alec Bargman, WIPO Case No. D2004-0627).
Therefore this Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark STORA ENSO. The first requirement of the Policy has been fulfilled. B. Rights or Legitimate Interests
The following are examples of circumstances where a respondent may have rights or legitimate interests in a disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial 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. (Policy, paragraph 4(c)).
The Respondent has not submitted evidence showing its preparations to use the disputed domain name with a bona fide offering of goods or services, nor has the Respondent proven that it has been commonly known as , or that it is making a legitimate noncommercial or fair use of the disputed name. In fact, the services offered by the Respondent cannot be considered to be bona fide, since said offering of services involve the misappropriation of a registered trademark, and is causing confusion among the consuming public, as to the source of said services.
Based on the evidence filed by the Complainant, this Panel finds that the Respondent has no connection to or affiliation with the Complainant and that the Respondent has not been authorized to use the Complainant’s trademarks. Rather, it appears that the Respondent has employed the Complainant’s trademark in furtherance of fraud schemes, which cannot be established as a fair or legitimate use. (See The Prudential Assurance Company Limited v. Domain Place, domainplace, WIPO Case No. D2009-1014, and B & H Foto & Electronics Corp. v. Whois Privacy Protection Service, Inc. / Jackie Upton, WIPO Case No. D2010-0841).
Therefore, this Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name . The second requirement of the Policy has been met. C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
Based on the arguments and evidence filed by the Complainant, it is clear that the Respondent has used the disputed domain name to set up an email address, “adminofficer@”, which has been used in connection with the recruitment of paper products distributors in the United States, posing as a Stora Enso employee, and using the STORA ENSO trademark in an unauthorized manner.
The Respondent has confused customers regarding a possible sponsorship or endorsement by the Complainant. Furthermore, it is clear that by using this scheme, the Respondent was aware of the Complainant’s rights to the STORA ENSO trademark. (See Beckman Coulter, Inc. v. Suzan Wilson, WIPO Case No. D2010-1163; MasterCard International Incorporated v. Dhe Jonathan Firm, WIPO Case No. D2007-0831).
By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark STORA ENSO as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, products and services.
This Panel finds that the disputed domain name has been registered and is being used in bad faith, in accordance with the Policy. The third requirement of said Policy has been met. 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.
Kiyoshi Tsuru
Sole Panelist
Date: December 8, 2010.
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