The Complainant is Älvsbyhus AB of Älvsbyn, Sweden, represented by Cedel AB, Sweden.
The Respondent is Esa Nappa of Riihimaki, Finland. 2. The Domain Name and Registrar
The disputed domain name is registered with CSL Computer Service Langenbach GmbH dba J. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2011. On February 8, 2011, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba J a request for registrar verification in connection with the disputed domain name. On February 9, 2011, CSL Computer Service Langenbach GmbH dba J 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 21, 2011. In accordance with paragraph 5(a) of the Rules, the due date for Response was March 13, 2011. The Response was filed with the Center on March 4, 2011.
The Center appointed Brigitte Joppich, Frederick M. Abbott and Tuukka Airaksinen as panelists in this matter on March 29, 2011. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. 4. Factual Background
The Complainant is a Swedish company doing business in the field of ready-made housing modules. Incorporated in Sweden in 1944, the Complainant is currently doing business in Sweden, Denmark, Finland and Norway. In 2009, every eighth house in Sweden was built by the Complainant, who sold a total of more than 34,000 house so far. The Complainant’s group of companies includes inter alia the Finnish company Älvsbytalo OY, which was founded in 1985 and has about 75 employees and an annual turnover of 50 million Euro.
The Complainant is registered owner of two trademark registrations for “ÄLVSBYHUS & design”, namely Community trademark registration no. 004474102 registered on February 6, 2006 and Norwegian trademark registration no. 231576 registered on March 22, 2006, covering goods and services in international classes 19, 35 and 37 (hereinafter referred to as the “ÄLVSBYHUS Marks”).
The disputed domain name was registered on February 1, 2010 and is used in connection with a criticism website which lists some defects of the Complainant's goods and invites people to join a class action against the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The disputed domain name is confusingly similar to the ÄLVSBYHUS Marks as the graphic elements of the ÄLVSBYHUS Marks cannot be reproduced in a domain name, as the TLD is to be disregarded and as the only difference between the Complainant’s trademarks and the disputed domain name is that the disputed domain name includes the Finnish word for “house”, namely “talo”, while the Complainant’s trademarks include the Swedish word for “house”, namely “hus”, which is a minor difference given that Swedish is an official language in Finland.
(2) The Respondent has no rights or legitimate interests in the disputed domain name as he has not been given any permission by the Complainant to use its trademarks or trade name, as there has never been a contractual relationship between the parties, as – upon the Complainant’s information and belief – the Respondent is not the owner of any registered or unregistered rights in connection with the domain name, as the Respondent does not use or has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, as the Respondent is not commonly known by the domain name and as the Respondent’s use of the disputed domain name is not noncommercial or fair without the intention of gaining profit, without the aim of attracting consumers in a misleading manner or tarnishing the trademark or service mark at issue. With regard to noncommercial or fair use, the Complainant argues that the Respondent’s right of free speech does not require the use of a domain name identical or confusingly similar to the trademark of the Complainant. The Complainant further contends that the Respondent requested Euro 80,000 for the transfer of the disputed domain name (arguing with the estimated number of lost deals the Complainant would suffer as a result of potential buyers being deterred by the Respondent’s webpage) and that the Respondent is in fact not using the disputed domain name in connection with a free speech website but trying to make money out of the Complainant’s fear of losing customers.
(3) The disputed domain name was registered and is being used in bad faith. The Complainant states that the Respondent registered the disputed domain name in full knowledge of the Complainant’s company activities and trademarks, that the price requested for the domain name by the Respondent constitutes bad faith use of the domain name, and that the Respondent, by using a domain name identical to the Complainant’s trade name and confusingly similar to the Complainant’s trademarks, misleads and diverts customers and potential customers. B. Respondent
In his Response, the Respondent states that the Complainant has no registered rights for “alvsbytalo” and that the disputed domain name is used in connection with a website providing information in connection with the technical implementation of the exterior walls of the Complainant’s houses, which is based on the statement of the certified inspector of goods ordered by the Finnish Consumer Agency. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant’s trade mark; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
It is consensus view that unregistered trade mark rights may be sufficient for the purposes of establishing rights under paragraph 4(a)(i) of the Policy (cf. WIPO Overview 2.0; UITGERVERIJ CRUX v. W. FREDERIC ISLER,WIPO Case No. D2000-0575; Skattedirektoratet v. Eivind Nag,WIPO Case No. D2000-1314; Amsec Enterprises, L.C. v. Sharon McCall,WIPO Case No. D2001-0083; Australian Trade Commission v. Matthew Reader,WIPO Case No. D2002-0786; Imperial College v. Christophe Dessimoz,WIPO Case No. D2004-0322).
Given that the Complainant has been trading under the name Älvsbytalo OY in Finland for several decades the Panel is satisfied that the Complainant has established unregistered trade mark rights in the ÄLVSBYTALO Mark, at least in the Finland, for purposes of this proceeding.
The disputed domain name fully includes the Complainant’s ÄLVSBYTALO Mark by merely replacing the umlaut “Ä” used in the Finish and Swedish but not in the English language by the letter "A". This difference is not sufficient to avoid a finding of confusing similarity under the Policy (cf. Mövenpick Holding AG v. Olive Tree Products,WIPO Case No. D2000-1540 (); Deutsche Börse AG v. Pertshire Marketing, Ltd,WIPO Case No. D2006-0786 (); Voigtländer GmbH v. The Photo Village, Inc.,WIPO Case No. D2004-0872 ( et al.)).
With regard to the Complainant’s registered rights in ÄLVSBYHUS & design, the Panel finds that the disputed domain name is confusingly similar to such marks as well. Firstly, it is well established that the similarity between a trademark and a disputed domain name is not eliminated by the fact that the trademark includes additional graphical elements (cf. Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,WIPO Case No. D2001-0031; EFG Bank European Financial Group SA v. Jacob Foundation,WIPO Case No. D2000-0036; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner,WIPO Case No. D2001-1447; Sydney Markets Limited v. Nick Rakis trading as Shell Information Systems,WIPO Case No. D2001-0932). Secondly, the Panel is satisfied that the overall impression of the second level of the disputed domain name is confusingly similar to the verbal element of the Complainant’s ÄLVSBYHUS Marks based on the facts that the only difference is the translation of the Swedish word for “house”, namely “hus”, into the Finnish language, namely “talo”, and that both languages are official languages in Finland, where the Respondent is located.
Finally, it is well established that the generic top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent 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) 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 noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of proving that the respondent has rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent states that disputed domain name is used in connection with a website providing information in connection with the technical implementation of the exterior walls of the Complainant’s houses, which is based on the statement of the certified inspector of goods ordered by the Finnish Consumer Agency. The Panel is aware that a respondent may, under certain circumstances, rely on a legitimate interest in using a trademark as part of a domain name of a criticism site if such use is fair and noncommercial. However, based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent in the disputed domain name. Even if the Respondent’s website met some criteria establishing a legitimate interest based on free speech, given the circumstances of the case, the Panel would consider the Respondent’s use of the disputed domain name only as part of an attempt to sell the disputed domain name to the Complainant for an amount highly exceeding the Respondent’s documented out of pocket costs directly related to the disputed domain name. The Complainant provided evidence that it was contacted by a third party offering the disputed domain name for sale at a price of Euro 80,000. Even if the first email communication was not sent by the Respondent himself, the party offering the domain name likely acted on behalf of the Respondent or was one of the Respondent’s aliases, which the Respondent did not deny in his Response. The Panel is satisfied on balance that the Respondent has in fact not used the disputed domain name in a noncommercial or fair way, but to exert pressure on the Complainant by providing negative information on the Complainant’s products in order to sell the disputed domain name to the Complainant for a considerable amount of money.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the domain name under paragraphs 4(a)(ii) and 4(c) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out of pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.
The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and its rights in the ÄLVSBYHUS Marks and ÄLVSBYTALO Mark. The Respondent provided information on the Complainant’s products on his website and is located in Finland, where the Complainant has substantial business and sales. Furthermore, the Respondent did not deny the Complainant’s contentions in this regard.
As to bad faith use, the Panel is satisfied that the Respondent acted in bad faith under paragraph 4(b)(i) of the Policy. As his offer to sell the disputed domain name for the amount of Euro 80,000 is by far exceeding the Respondent's out of pocket costs directly related to the domain name, the Panel is satisfied that the disputed domain name was registered primarily for the purpose of selling it to the Complainant and therefore in bad faith under paragraph 4(b)(i) of the Policy. This finding of bad faith is supported by the fact that the Respondent justified his asking price for the domain name by the estimated number of lost deals the Complainant would suffer as a result of potential buyers being deterred by the Respondent’s webpage, which, in all likelihood, was an attempt to blackmail the Complainant into buying the disputed domain name.
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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.
Brigitte Joppich
Presiding Panelist
Frederick M. Abbott
Panelist
Tuukka Airaksinen
Panelist
Dated: April 12, 2011
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