The Complainant is Fiskars Corporation of Helsinki, Finland, represented by Kolster Oy Ab, Finland.
The Respondent is Whois Privacy Service of Manacor, Spain / James Taverner of Madrid, Spain, self- represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Soluciones Corporativas IP, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2014. On September 16, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 17, 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 September 24, 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 September 26, 2014.
According to information the Center received from the concerned registrar, the language of the registration agreement for the disputed domain name is Spanish. Accordingly, the Center requested that the Complainant do at least one of the following: 1) provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or 2) submit the Complaint translated into Spanish; or 3) submit a request for English to be the language of the administrative proceedings. On September 26, 2014 the Complainant submitted a request that English be the language of the proceedings, to which the Respondent did not reply.
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 in English and in Spanish, and the proceedings commenced on September 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2014. The Response was filed in English with the Center on October 12, 2014.
The Center appointed Adam Taylor as the sole panelist in this matter on October 27, 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 is incorporated in Finland and supplies a wide range of tools and implements.
The Complainant owns Community Trade Mark No. 10091775 for FISKARS dated July 1, 2011, in classes 6, 7, 8, 9, 11, 12, 16, 17, 19, 20, 21, 25, 27, 35, 37 and 41.
The disputed domain name was registered on August 3, 2014.
There has never been an active website at the disputed domain name.
On September 30, 2014, after the Complaint was filed, the Respondent emailed the Complainant claiming that the disputed domain name had been registered to create an independent product review site, exclusively devoted to the Complainant’s tools. The Respondent added that it had devoted approximately 80 hours to the project and that it would agree to walk away and transfer the disputed domain name to the Complainant so long as its investment costs were “fairly covered within reason”. The Complainant did not respond. 5. Parties’ Contentions A. Complainant
In summary, the Complainant contends as follows:
The Complainant’s trade mark is very well known globally. The disputed domain name is identical to the trade mark.
The Respondent has rights or legitimate interests in the disputed domain name. The Respondent has no affiliation with the Complainant and registered the disputed domain name without the Complainant’s consent.
The Respondent was aware of the Complainant’s trade mark as its Community Trade Mark has been validated by the Trademark Clearinghouse and the trade mark is registered in Spain, where the Respondent is based.
The disputed domain name was registered to sell or rent the disputed domain name to the Complainant and/or intentionally to attempt to take advantage of the Respondent’s well-known trade mark so as to attract users to the Respondent’s website by creating confusion with the Complainant’s trade mark and/or generally to take advantage of the Complainant’s famous trade mark. B. Respondent
In summary, the Respondent contends as follows: Identical or Confusingly Similar
The disputed domain name bears the suffix “.tools”, thus referring the Complainant’s products and not the Complainant itself – compared to “.com” which would denote the Complainant itself. This is relevant as Respondent intends to create a website at the disputed domain name which will be a public forum for discussion of Fiskars’ tools. It will be an informative site about products and will have no relationship with the Complainant itself. There will be a clear disclaimer on entry to the site regarding the lack of a connection with the Complainant.
There are UDRP decisions which uphold the use of domain names in the format “trademark.domain” for websites about a trade mark holder or its products. Rights or Legitimate Interests
The Respondent has a legitimate right to own the disputed domain name as its intention is to create a public forum where “tools made by Fiskars” will be discussed. The disputed domain name is very relevant to this purpose as it suggests this is an informative site where the quality, versatility, uses, price, durability and other characteristics of Fiskars’ tools are discussed.
The right to discuss such issues publicly is supported by the right to freedom of opinion and expression in the Universal Declaration of Human Rights.
The site will be non-commercial site and so the activity will not be profit driven and the Respondent is under no pressure to produce immediate results. The development of the project is purely “recreational” at a rate of 4-6 hours per weekend. The Respondent has spent about 80 hours on the site so far and therefore the launch date is still far off. The Respondent has developed an advanced database of the Complainant’s products for the site. The Respondent has also undertaken a large amount of technical research. Registered and Used in Bad Faith
The Respondent has not registered the disputed domain name “solely to take advantage of the famous trademark FISKARS”, as claimed by the Complainant.
There has been no bad faith registration of the disputed domain name. It was not registered for an unlawful purpose and it will not be used in violation of any applicable laws or regulations.
The disputed domain name was not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring to the Complainant or a competitor. In fact, after initiation of this Complaint, the Respondent contacted the Complainant in order to explain its project and seeks to resolve this issue in an amicable fashion but the Complainant did not reply.
The disputed domain name was not registered in order to prevent the Complainant from reflecting the mark in a corresponding domain name.
The disputed domain name was not registered in an intentional attempt to attract and confuse Internet users. 6. Discussion and Findings A. Language of the Proceeding
The Complainant has been submitted in English.
Paragraph 11(a) of the Rules provides that, unless otherwise agreed by the parties, or specified otherwise in the registration agreement for the disputed domain name, the language of the administrative proceeding shall be the language of the registration agreement. This is subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
The language of the registration agreement for the disputed domain name is Spanish. There is no indication that the registration agreement specifies that any other language should apply and there has been no agreement between the parties that the proceedings should be in English.
The Center duly sent its standard language communication to both parties, in both English and Spanish. Amongst other things, this notice stated that the Complainant could submit a request for English to be the language of the proceedings, to include arguments and supporting material as to why the proceedings should be conducted in English. The Center observed that such considerations may include for example the language used in pre-Complaint correspondence between the parties, the identity of the parties, the nationality and place of residence of the parties, and any other evidence of familiarity with the requested language.
The Complainant duly requested that English be the language of the proceeding on grounds that English was the most commonly used language in global business communication and the use thereof provided the parties with a common language. The Complainant observed that it was located in Finland.
A number of decisions under the Policy have considered the principles which panels should take into account when determining the language of the proceedings.
For example, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration in that it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding. See, e.g., Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; HAZET-WERK Hermann Zerver GmbH & Co. KG v. wilhelm jacobus izak, WIPO Case No. D2011-0040.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs. See, e.g., Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432.
The language communication from the Center warned the Respondent that if the Respondent did not object by the due date to a language request by the Complainant, the Center would proceed on the basis that the Respondent did not object to the Complainant’s request that English be the language of the proceedings. The Respondent did not object.
Furthemore, the Respondent is clearly conversant in the English language as he filed a Response in English.
Accordingly, in accordance with paragraph 11(a) of the Rules, the Panel determines that English should be the language of the proceeding. B. Identical or Confusingly Similar
The Complainant has rights in the mark FISKARS by virtue of its registered trade mark.
Under the UDRP, the top-level suffix has usually been disregarded when comparing disputed domain name and trade mark (except where the suffix forms part of the trade mark) – see paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). If one were to disregard the suffix in this case, then the disputed domain name is identical to the Complainant’s trade mark.
However, the Respondent argues that the new generic Top-Level Domain name (“gTLD”) suffix “.tools” should be taken into account and that, if so, it is sufficient to distinguish the disputed domain name and trade mark because this suffix allegedly denotes the Complainant’s products and not the Complainant itself.
The extent to which (if it all), UDRP panels will take account of top-level suffixes in the case of “new gTLDs” remains to be seen. It is still early days.
In any case, it is not necessary to reach a conclusion on this issue here. Even if the top-level suffix “.tools” is taken into consideration, in the Panel’s view this does not remotely assist the Respondent in distinguishing the disputed domain name and trade mark.
Paragraph 1.2 of the WIPO Overview 2.0 makes clear that the threshold test for confusing similarity under the UDRP involves a comparison between the trade mark and the disputed domain name to determine likelihood of Internet user confusion and that, in order to satisfy this test, the relevant trade mark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion.
Paragraph 1.9 of the WIPO Overview 2.0 adds that, in itself, the addition of merely generic, descriptive, or geographical wording to a trade mark in a domain name is normally insufficient to avoid a finding of confusing similarity and that panels have usually found the incorporated trade mark to constitute the dominant or principal component of the domain name. That is exactly the case here.
The disputed domain name plus suffix effectively consist of the Complainant’s distinctive trade mark plus a descriptive term; if anything, the fact that the descriptive term denotes the Complainant’s products enhances the connection between the trade mark and the disputed domain name rather than otherwise, as the Respondent asserts.
For the above reasons, the Panel concludes that the disputed domain name is identical to the Complainant’s trade mark (if the top-level domain suffix is excluded) or confusingly similar thereto (if the suffix is included).
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy. C. Rights or Legitimate Interests
Paragraph 2.1 of WIPO Overview 2.0 explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests in UDRP cases:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
As to paragraphs 4(c)(i) and (iii) of the Policy, there is no evidence of any use of the disputed domain name thus far.
The only evidence of preparation to use the disputed domain name from the Respondent is a document said to comprise a database of products on the Complainant’s site. But there is nothing to connect this database to the Respondent’s alleged proposed non-profit product review site. If the Respondent has spent 80 hours developing the site, as he claims, he would surely be able to produce some evidence illustrating the intended forum / review nature of the site. Furthermore, the database document is undated and so there in no way of knowing whether it was generated before the Respondent had notice of the dispute.
Accordingly, the Panel is not satisfied that the Respondent has provided evidence of demonstrable preparations to use the disputed domain name for the purposes claimed.
Nor is there any evidence that paragraph 4(c)(ii) of the Policy applies.
The Panel concludes on balance that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy. D. Registered and Used in Bad Faith
As mentioned above, the Respondent has not produced any evidence which convinces the Panel that the Respondent genuinely intends to launch a non-profit product review type site.
In any case, even if this were to be treated as a genuine noncommercial criticism / praise case, the Panel subscribes to “View 1” expressed in paragraph 2.4 of WIPO Overview 2.0, and “View 2” in paragraph 2.5, that the right to criticize / praise does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant's trade mark. While these are potentially legitimate activities that would not be the case here as the Respondent would have used for that purpose a domain name which is closely aligned to the Complainant’s trade mark and which was likely to make a misrepresentation to users that any associated website was connected with the Complainant. As the panel in Compagnie Generale des Matieres Nucleaires v. Greenpeace International, WIPO Case No. D2001-0376 puts it, the disputed domain name would “catch by surprise” visitors intending to reach the Complainants’ website. In the Panel’s view, a disclaimer would not have cured the bad faith in any event – see paragraph 3.5 of WIPO Overview 2.0. In these circumstances, the Respondent’s actions would be tainted whether or not it intended the web page as a genuine noncommercial criticism / praise site.
The Panel is of the opinion that it is appropriate to consider this case in the context of the principles of “passive holding” set out in the well-known case of Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. There the panelist noted that “the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith” and concluded that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”.
The panel went on to say that
“… in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behaviour. A remedy can be obtained under the Uniform Policy only if those circumstances show that the Respondent’s passive holding amounts to acting in bad faith.”
See also paragraph 3.2 of WIPO Overview 2.0 which states the following consensus view on this issue:
“…panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use…”
In this case, the Panel concludes that the following cumulative circumstances are indicative of passive holding in bad faith: the distinctive nature of the Complainant’s trade mark, the undisputed registration of the disputed domain name by the Respondent with the Complainant’s right in mind and the Respondent’s failure, despite having worked on the website for some 80 hours, to supply any evidence unequivocally supporting its alleged purpose in registering the disputed domain name, which use would in any case constitute bad faith in the Panel’s opinion for the reasons explained above.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) 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.
Adam Taylor
Sole Panelist
Date: November 10, 2014
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