The Complainant is Neste Oil Oyj, Neste Oil, Finland, represented by Roschier Brands, Attorneys Ltd., Finland.
The Respondent is Nesin Dmitry of Moscow, Russian Federation / Privacy Protection Service INC of Queensland, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with Registrar of Domain Names REG.RU LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 27, 2014. On May 27, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 3, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 3, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 6, 2014. On June 3, 2014, the Center also transmitted the language of the proceedings document to the parties in both English and Russian. On June 6, 2014, the Complainant filed the Russian translation of the Complaint.
The Center verified that the Complaint together with the amended 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 June 12, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 2, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 8, 2014.
The Center appointed Ladislav Jakl as the sole panelist in this matter on July 29, 2014. 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 Neste Oil Oyj is a refining and marketing company, with a production focus on premium-quality, lower-emission traffic fuels. The Complainant produces a comprehensive range of major petroleum products and is the world's leading supplier of renewable diesel. The Complainant had net sales of EUR 17.5 billion in 2013 and employs around 5,000 people. Neste Oil's share is listed on the NASDAQ OMX Helsinki (Annex 5 to the Complaint).
The Complainant owns exclusive rights to the trademark NESTE registered in Finland by the Finnish Patent and Registration Office (FPRO) under the registration number 93650 of September 5, 2014. The Complainant also owns two exclusive and valid prior rights to the figurative trademarks NESTE, all registered as national trademarks in Finland under the registration numbers 102356, 102357, 121758 and 121759 (Annex 4 to the Complaint). The filing dates of the aforementioned trademark registrations are January 21m 1983 for the word mark, and May 15, 1986 for the first two figurative marks and 19 April 1991 for the last two figurative marks.
The disputed domain name was registered on January 29, 2014. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is identical with the Complainant's word trademark NESTE with registration no. 93650 and with the textual element NESTE of the Complainant's figurative afore-mentioned trademarks. The likelihood of confusion between the Complainant's trademarks and the disputed domain name is very clear.
As to rights or legitimate interests in respect of the disputed domain name, the Complainant essentially contends that according it's information and belief, the Respondent did not have rights or legitimate interests in the disputed domain name and did not register it as a trademark, service mark or company name anywhere in the world at the time of applying for the registration of the disputed domain name. The Complainant further refers to the content on the website at address "www." displaying the word "neSte", a pig on the right side of the word and an animation which plays in a loop. The animation shows a pig sitting on the letter "S", an airplane flying over the word "neSte" and dropping another pig on the same letter after which the two pigs begin a copulating session in a manic frenzy (Annex 6 to the Complaint). The content is in other words pornographic. And that this proves that the Respondent is not making a bona fide offering of the goods and therefore has made no legitimate use of the domain name (Lardi Ltd v. Belize Domain WHOIS Service Lt,WIPO Case No. D2010-1437). Because proving the negative is as a rule impossible, the Complainant submits, that after it has made a prima facie case, the onus of proof of rights or legitimate interests shifts to the Respondent.
Furthermore, the Complainant argues that paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith. One of them is paragraph (iv) according to which the domain name is registered and used in bad faith if the owner intentionally attempts to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. And that the disputed domain name was in use before the moment of the Complainant and as can be seen from the attached printouts of May 27, 2014 from the address , the content and animation on the website were pornographic (Annex 6 to the Complaint). Internet users trying to find information on the Complainant and its products find the disputed domain name and its pornographic content. It is very clear that the disputed domain name and the content on the website damages the goodwill of the Complainant's trademark NESTE significantly. Due to the likelihood of confusion Internet users are attracted to the address registered by the Respondent. The Complainant refers to Bayerische Motoren Werke AG v. RaveClub Berlin,WIPO Case No. D2003-0385, in which the panel reasoned the decision as follows:
"Complainant has, in this respect, basically alleged that from the fact that the websites of the Respondent were connected to commercial pornographic websites it can be inferred that the Respondent commercially benefits from diverting consumers to the advertisements for other pornographic sites which automatically appear in connection with the domain name at issue.
On the basis of the circumstances thus present, the Panel accepted the allegation by Complainant that the Respondent has intentionally attempted, and attempts, to attract for commercial gain Internet users to the website by creating a likelihood of confusion with the trademarks of Complainant as to the source, sponsorship, affiliation or endorsement of the websites. These actions amount, in the view of the Panel, to registration and use of the domain names in bad faith under the Policy."
The Complainant further refers to the Enterbrain Inc. v Domain For Sale/Email Your Offers!,WIPO Case No. D2002-0009 in which the panel argued the bad faith as follows:
"It appears to the Panel that this is a case falling into the category of bad faith registration and use described in paragraph 4(b)(iv) of the Policy. According to Complainant, by using the domain name, the Respondent has created a likelihood of confusion with the Complainant's mark as to the source or affiliation of the Respondent's website which is linked to the domain name. In the Panel's view, that has been done intentionally by the Respondent, in an attempt to attract Internet users to his online location for commercial gain.
The Panel has found that the Respondent has no rights or legitimate interests in respect of the domain name, and that the domain name was chosen by the Respondent, at least in part, for the purpose of attracting to his "adult" websites Internet browsers looking for a site associated with the Complainant.The fact that access to the "adult" sites is available only at a cost to the viewer, is sufficient evidence that the domain name has been used to attract Internet browsers for commercial gain.
In those circumstances, the Panel is satisfied that the Complainant has proved that the domain name has been registered and is being used in bad faith."
In Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren,WIPO Case No. D2000-0021, the panel considered the pornographic content as a proof of bad faith. The panel stated that "… without deciding whether the trademark at issue is a "well-known" or "famous" mark, which decision is currently outside the scope of the mandate of this Panel, the Panel notes that the trademark has been registered and in continuous use for almost 80 years. In this regard, the Panel believes that the tarnishment rationale set out in the case of Panavision Int'l v. Toeppen, 945 F. Supp. 1296, 1304 (C.D. Cal. 1996), is applicable to the present situation, where the domain names were used by Respondent as links to pornographic sites."
According to the Complainant's opinion, the Respondent's activities therefore clearly fulfill examples of a domain name being used and registered in bad faith as included in the Policy.
In accordance with paragraph 4(i) of the Policy, the Complainant requests the Panel appointed in this administrative proceeding to issue a decision that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has 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.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant. A. Language of the Proceedings
On the question of the language of the proceedings, the Registrar confirmed that the language of registration agreement is Russian while the Complaint was originally filed in English. Upon the Center's invitation sent to the Parties both in English and Russian to comment on the language of the proceedings, the Complainant submitted its Complaint translated into Russian. The Respondent did not provide any comments in this regard.
According to paragraph 11(a) of the Rules, the Panel has the authority to determine a different language other than the one in the registration agreement, having regard to the circumstances of the administrative proceeding. The Panel, taking into account the circumstances of this case, especially the fact that the Respondent appears to be familiar with the English language, and a number of recent UDRP proceedings (Mammut Sports Group AG v. Deminzheng,WIPO Case No. D2011-0475; BrandStrategy, Inc. v. BusinessService Ltd.,WIPO Case No. D2007-0749; Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd.,WIPO Case No. D2007-1836) decides that the language of the administrative proceedings be English. B. Identical or Confusingly Similar
The Panel accepts the Complainant´s argument that the disputed domain name is identical with the Complainant's word trademark NESTE and with the textual element NESTE of the Complainant's figurative NESTE trademarks. The confusing similarity between the Complainant's trademarks and the disputed domain name is beyond doubt. As well the inclusion of the generic Top-Level Domain ("gTLD") suffix ".org" does not avoid the confusing similarity of the domain name and trademark (AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Accor v. Lee Dong Youn, WIPO Case No. D2008-0705; and Sanofi-Aventis v. Brad Hedlund,WIPO Case No. D2007-1310).
For all the above-cited reasons, the Panel concludes that disputed domain name is identical and confusingly similar to the Complainant's trademark and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled. C. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. Any of the following circumstances, as indicated in paragraph 4(c) of the Policy, in particular but without limitation shall demonstrate rights or legitimate interests:
(i) before the Respondent obtained any notice of the dispute, it has used or has made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name, in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as individual, business, or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel accepts the arguments of the Complainant, unchallenged by the Respondent, that the Respondent did not have any registered trademark, service mark or company name corresponding to the disputed domain name anywhere in the world at the time of the registration of the disputed domain name. Moreover, the Respondent is not making a bona fide offering of the goods and therefore has no legitimate use of the domain name (Lardi Ltd v. Belize Domain WHOIS Service Lt,WIPO Case No. D2010-1437). The Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the trademarks of the Complainant as to the source, sponsorship, affiliation or endorsement of its website.
Besides, pornographic content of the Respondent's website ought to be regarded as a proof of lacking right or legitimate interest. There is no evidence that the Respondent, before any notice of the dispute, has used, or has made demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Moreover, the Respondent cannot establish rights or legitimate interests in the disputed domain name under paragraph 4(c)(i) of the Policy, as it knew at the time of the registration that it could not make any actual use of the disputed domain name without tarnishing the Complainant's trademarks. Therefore, the Respondent cannot claim that it has rights or legitimate interests in the disputed domain name. The Panel is of the view that the Respondent has used the Complainant's trademarks in the disputed domain name to create the impression that it is associated with the Complainant. The Respondent's use of the Complainant's trademarks is clearly for the purpose of misleading consumers into believing that the Respondent is associated with the Complainant.
For the above-cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled. D. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, if found by the Panel to be present, shall be evidence of both registration and use of the disputed domain name in bad faith. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):
(ii) the Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on that website or location.
The Complainant has submitted evidence, unchallenged by the Respondent, that the Respondent has registered the disputed domain name with the knowledge of the Complainant's rights in the Complainant's trademarks and that the Respondent's bad faith is evidenced by several circumstances indicating that the Respondent must have been aware of the Complainant's trademarks at the time of the registration of the disputed domain name.
There is no doubt that the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, and that the Respondent has registered the disputed domain name primarily for the purpose of disrupting the Complainant's business. The Panel accepts the arguments of the Complainant that the disputed domain name was registered and used in bad faith as the Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of its website. The disputed domain name damages the goodwill of the Complainant's trademark NESTE significantly. Due to the likelihood of confusion Internet users are attracted to the address (Bayerische Motoren Werke AG v. RaveClub Berlin,WIPO Case No. D2003-0385). In the Panel's view, that has been done intentionally by the Respondent, in an attempt to attract Internet users to its website for tarnishment purposes. The pornographic content of the Respondent's website is considered as a proof of bad faith registration and use (Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren,WIPO Case No. D2000-0021).In particular where the domain name is identical to the Complainant's trademark and the Respondent's underlying intent to divert consumers from Complainant's legitimate web presence and hard the Complainant is evident. Therefore, the Respondent's use of the disputed domain name is neither a bona fide offering of goods or services under Policy 4(c)(i) nor a legitimate noncommercial or fair use under Policy 4(c)(iii).
For the above-cited reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith. Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 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.
Ladislav Jakl
Sole Panelist
Date: August 6, 2014
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