The Complainant is Stockmann pIc of Helsinki, Finland, represented by Attorneys at Law Borenius, Finland.
The Respondent is Asep Saepul of Bandung, Jawa Barat, Indonesia. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2012. On February 16, 2012, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the disputed domain name. On the same date, GoD, LLC 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 February 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 11, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 12, 2012.
The Center appointed Anna Carabelli as the sole panelist in this matter on March 15, 2012. 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 a Finnish company which was established by Georg Franz Stockmann in 1862 and is engaged in the retail trade. Since 1919 the business name and corresponding trademark STOCKMANN have been in use since 1919. STOCKMANN is the surname of the company’s founder and is protected as a registered trademark in various countries. The trademark STOCKMANN was first registered in 1996 in the Russian Federation and in 2009 was included in the List of Trademarks with a Reputation in Finland. The Complainant also owns several domain names incorporating the STOCKMANN trademark and variations thereof including which was registered in 1997.
According to the Registrar’s Verification Response, the disputed domain name was created on April 7, 2007, and registered to the Respondent on May 19, 2011. The disputed domain name is not linked to an active website.
In May, 2011 the Complainant received an offer to purchase the disputed domain name from an individual Mr. Patterson and on February 7, 2012 the Complainant sent an email to the Respondent requesting the transfer of the disputed domain name for an amount equal to the costs directly related to the transfer but received no response. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its registered trademark STOCKMANN since it includes the STOCKMANN mark in its entirety.
In addition, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent can reasonably be presumed to have known of the Complainant’s trademark STOCKMANN when the disputed domain name was registered given the distinctiveness and international reputation of it. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, is not commonly known by the disputed domain name, and is not making any legitimate noncommercial or fair use of the disputed domain name.
The Complainant states that the disputed domain name was registered and used in bad faith given that: (a) the word “stockmann” is rare and the Complainant is the parent company of a group of companies commonly ad internationally known as Stockmann Group as shown by Google-search results for “stockmann group”; (b) the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules empowers the Panel to decide the case on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) The domain name is identical or confusingly similar to the complainant’s trademark or service 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.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a) (iii) shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which if proved by respondent, shall be evidence of the respondent’s rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii) above. A. Identical or Confusingly Similar
The Complainant has proved that it owns numerous trademark registrations for the mark STOCKMANN in various countries and several domain names incorporating the mark STOCKMANN.
The disputed domain name is confusingly similar to the Complainant’s trademark, as it incorporates STOCKMANN with the addition of the generic term “group".
It is an established principle that the mere addition of generic terms does not create a different trademark in which the respondent has rights and cannot be considered sufficient to avoid confusion between the domain name at issue and the complainant's trademark (GA Modefine SA v. Riccardo Bin Kara-Mat,WIPO Case No. D2002-0195; Parfums Christian Dior v. 1 Netpower, Inc.,WIPO Case No. D2000-0022; Nintendo of America, Inc. v. Gray West International,WIPO Case No. D2000-1219; Toshiba Corporation v. Distribution Purchasing & Logistics Corp,WIPO Case No. D2000-0464). In the case at hand, the addition of the term “group” increases the risk of confusing similarity of the disputed domain name when compared with Complainant’s trademark, considering that the Complainant is the parent company of a group of companies commonly known as Stockmann group.
Accordingly, the Panel finds that the Complainant has established element 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name in relation to the three circumstances identified in paragraph 4(c) of the Policy, namely: (i) bona fide prior use; (ii) common association with the disputed domain name and (iii) legitimate noncommercial use. The Respondent did not exercise its right to respond in these proceedings thus failing to rebut the prima facie case made by the Complainant (or advance any other argument supporting rights or legitimate interests).
Accordingly, the Panel finds that the Complainant has established element 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Given the international reputation of the STOCKMANN mark, the Panel finds that in all likelihood the Respondent was aware of the Complainant’s STOCKMANN trademark at the time it registered the disputed domain name. (see Revlon Consumer Product Corp v. Domain Manager,WIPO Case No. D2003-0602; Microsoft Corporation v. Superkay Worldwide Inc.,WIPO Case No. D2004-0071; Revlon Consumer Product Corp. v. Easy Weight Loss Info,WIPO Case No. D2010-0936).
Based on the above, the Panel agrees that the Respondent has registered the disputed domain name in bad faith.
The fact that the disputed domain name does not resolve to an active website raises the issue of actual use in bad faith, according to paragraph 4(a)(iii) of the Policy. According to Telstra Corporation Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003, which was followed by several consistent WIPO UDRP decisions, the concept of a domain name “being used in bad faith” is not limited to positive action; inaction is within the concept.
In this connection, the Panel considers that (i) the Complainant’s trademark is well known and firmly associated with the Complainant; (ii) the Respondent has provided no evidence whatsoever of its actual or contemplated good faith use of the disputed domain name; (iii) the Respondent has no rights or legitimate interests in the disputed domain name, and as a consequence, the Respondent could not possibly make any plausible actual or contemplated active use of the disputed domain name that would not be illegitimate. In addition, bad faith registration and use is suggested by the offer to purchase the disputed domain name received by the Complainant.
In view of all the foregoing, the Panel finds that the Complainant has established the element of bad faith according to paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Anna Carabelli
Sole Panelist
Dated: March, 29, 2012
Full & Egal Universal Law Academy