The Complainant is Moomin Characters Oy Ltd of Helsinki, Finland, represented by Roschier Brands, Attorneys Ltd., Finland.
The Respondent is Tapani Vuori of Kahului, Hawaii, United States of America, self-represented. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with Network Solutions, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 24, 2014. On November 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 24, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to an email communication from the Center, the Complainant submitted an amended Complaint on December 11, 2014.
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 December 12, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 1, 2015. The Response was filed with the Center on December 29, 2014.
The Center appointed John Swinson as the sole panelist in this matter on January 16, 2015. 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 Moomin Characters Oy Ltd of Finland. The Complainant manages the intellectual property rights in "the Moomins", which are characters in a series of books and comics originally published in Finland between 1945 and 1993. The Moomins have been the basis for numerous television series, films, and a theme park in Finland.
The Complainant holds registered trade marks for MOOMIN and THE MOOMINS in Japan and the European Union, the earliest of which has a filing date of February 16, 1998. For the purpose of this decision, these will be collectively referred to as the "Trade Mark". The Complainant has provided evidence of these registrations.
The Respondent is an individual who previously managed a physical store in Hawaii known as the "Moomin Shop", which sold merchandise bearing the Trade Mark.
The Disputed Domain Name was created on July 6, 1999.
The website at the Disputed Domain Name currently displays a Registrar parking page containing pay-per-click links. From 1999 to 2004, merchandise relating to "the Moomins" was available for sale at the website. 5. Parties' Contentions A. Complainant
The Complainant makes the following submissions. Identical or Confusingly Similar
The Complainant submits that it owns exclusive and valid prior rights to the Trade Mark, and that it is the official body responsible for supervising intellectual property rights in relation to the Trade Mark.
The Disputed Domain Name consists of the word "moomin", which is similar to the Trade Mark. The additional word "shop" in the Disputed Domain Name is non-distinctive and does not decrease the level of similarity between the Trade Mark and the Disputed Domain Name.
The Complainant has shops in numerous countries, as well as a web shop where products bearing the Trade Mark are offered for sale. The Trade Mark is therefore well-known among consumers, and is confusingly similar to the Disputed Domain Name. Internet users are likely to use the words "moomin shop" as keywords in searching for the Complainant's web shop and become confused when the Disputed Domain Name belongs to someone other than the Complainant. Rights or Legitimate Interests
The Complainant submits that, according to its information and belief, the Respondent did not have rights to or legitimate interests in the Disputed Domain Name and did not register it as a trade mark, service mark or company name anywhere in the world at the time of applying for registration of the Disputed Domain Name. Registration and Use in Bad Faith
The Complainant refers to the case of Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, in which the panel stated that passive holding of a domain name can constitute use in bad faith. The Complainant notes that the Disputed Domain Name is not currently in use, and submits that some of the criterions of bad faith discussed in Telstra Corporation Limited v. Nuclear Marshmallows, supra are present here, as follows:
- The Trade Mark enjoys a high level of reputation among consumers in Finland and internationally.
- The Disputed Domain Name has not been used after its registration date of July 6, 1999. Therefore, the Respondent does not have any valid reason for registering the Disputed Domain Name and the only purpose of registering the Disputed Domain Name appears to be to prevent the Complainant from registering it.
- All use of the Disputed Domain Name would be illegitimate and infringe the rights of the Complainant.
- The Respondent has a Finnish name so the Respondent must know the Trade Mark well due to his connection to Finland.
The Complainant submits that the Respondent's activities clearly fulfill examples of a domain name being used and registered in bad faith as set out in the Policy. B. Respondent
The Respondent makes the following submissions. Response to Complaint
The Respondent makes the following submissions in response to the allegations and statements made in the Complaint:
- The Respondent registered the Disputed Domain Name in 1999. It formed part of the physical Moomin Shop business in Hawaii from 1999 to 2004.
- The Respondent entered into a Business and Franchise Agreement with the worldwide license holder for Moomin film and licensing, who worked closely with the Complainant and the Complainant's licensing agent.
- The Respondent paid licensing fees to the license holder (who in turn paid licensing fees to the Complainant) for the right to operate under the names "Moomin Shop" and "M".
- It was the Respondent's belief that the Respondent's business activities were integral to the growth of the Trade Mark.
- The Respondent decided to close the physical Moomin Shop and park the Disputed Domain Name in 2004, when related business ventures failed.
- In 2007, the Respondent was contacted by the Complainant's legal representatives about transferring the Disputed Domain Name to the Complainant, and asked what terms would be acceptable to the Respondent to do so.
- In 2013, the Respondent listed the Disputed Domain Name for sale on a domain marketplace website in an attempt to recover his initial capital investment into the business. Identical or Confusingly Similar
The Respondent submits that, although the Disputed Domain Name is similar to the Trade Mark, the Complainant had authorized the Respondent's use of the Trade Mark.
Rights or Legitimate Interests
The Respondent refers to his submissions in response to the Complaint, and submits that the evidence he has provided in support fulfills the requirement of paragraph 4(c)(ii) of the Policy (that is, that the Respondent has been commonly known by the Disputed Domain Name). Registration and Use in Bad Faith
The Respondent submits that the case referred to by the Complainant in support of bad faith is irrelevant. He further submits that none of the factors listed in paragraph 4(b) of the Policy as evidence of registration and use in bad faith are established here. Reverse Domain Name Hijacking
The Respondent requests that the Panel make a finding of reverse domain name hijacking. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights to 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.
The onus of proving these elements is on the Complainant. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Trade Mark has been wholly incorporated into the Disputed Domain Name and combined with a descriptive term (i.e. "shop"). The Panel finds that the Trade Mark is the dominant and distinctive element in the Disputed Domain Name. It is well established that the addition of a descriptive term (such as "shop") to a trade mark does not prevent confusing similarity (see e.g. Paris Hilton v. Turvill Consultants,WIPO Case No. D2012-0965 and the cases cited therein).
The Disputed Domain Name is confusingly similar to the Trade Mark. The Complainant succeeds on the first element of the Policy. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant has established a prima facie case. However, the Panel must consider whether the Respondent has rebutted the Complainant's prima facie case, and in doing so, considers the following:
- The Disputed Domain Name was used for an online shop operated by the Respondent from 1999 to 2004. The Complainant makes no reference to this in the Complaint.
- The Respondent was a party to a licensing agreement with an entity associated with the Complainant. The Panel accepts that this entity had the Complainant's authority to contract with the Respondent in relation to its use of the Disputed Domain Name.
- The Respondent paid royalties in respect of merchandise sold via the online shop located at the Disputed Domain Name. The Respondent has provided emails which show that the Complainant's licensing agent had knowledge of these royalties. The royalty statements refer to online sales. A royalty statement from December 2002 explicitly refers to the Disputed Domain Name.
- In 2007, the Respondent was approached by the Complainant's legal representatives regarding a possible transfer of the Disputed Domain Name to the Complainant, and was asked what terms would be acceptable to the Respondent to do so. The Complainant's legal representatives did not allege that the Respondent was infringing the Trade Mark, nor did they request that the Respondent cease use of the Disputed Domain Name.
Under paragraph 4(c)(i) of the Policy, the Respondent will have rights to or legitimate interests in the Disputed Domain Name if, before any notice of the dispute, he had used or made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services.
The Respondent was not licensed directly by the Complainant, and the chain of authority in relation to the licensing arrangement to which the Respondent was a party is not entirely clear. However, the Panel finds that the Respondent has provided sufficient evidence to show that he registered and used the Disputed Domain Name with the knowledge and authority of the Complainant or the Complainant's agent. The 2007 emails demonstrate that the Respondent was licensed with the knowledge and consent of the Complainant.
According to paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), the consensus view among panelists is that normally, a reseller or distributor (and particularly an authorized reseller or distributor) can be making a bona fide offering of goods and services and thus have a legitimate interest in a domain name if its use meets the following requirements, as set out by the panel in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trade marked goods (otherwise, there is the possibility that the respondent is using the trade mark in a domain name to bait consumers and then switch them to other goods);
- the site itself must accurately disclose the respondent's relationship with the trade mark owner; and
- the respondent must not try to "corner the market" in all relevant domain names, thus depriving the trade mark owner of the ability to reflect its own mark in a domain name.
The examination of whether or not the Respondent has rights or legitimate interests in the Disputed Domain Name is determined at the time the Complaint is filed. Based on the evidence provided by the parties, the Respondent's use of the Disputed Domain Name in the period from 1999 to 2004 would meet the Oki Data test. However, at the time the Complaint was filed, the Disputed Domain Name displayed a Registrar-generated parking page containing pay-per-click links. A pay-per-click website may or may not provide the Respondent with rights or legitimate interests, depending on the circumstances (see, e.g. Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267 and Gold Medal Travel Group plc v. Damir Kruzicevic,WIPO Case No. D2007-1902).
Neither party made submissions as to whether or not the subject pay-per-click link website gives the Respondent rights or legitimate interests in the Disputed Domain Name in this case. The Panel does not need to decide this issue in view of the finding as to bad faith. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and used the Disputed Domain Name in bad faith.
The Complainant's primary submission is that the Disputed Domain Name was not used after its registration date, and that therefore the only purpose of registering the Disputed Domain Name appears to be to prevent the Complainant from registering it.
Based on evidence provided by the Respondent, and a brief search performed by the Panel, this allegation is without substance.
The Complainant has provided no evidence that the Disputed Domain Name was registered in bad faith, and the Respondent has provided substantial evidence to support his assertion that the Disputed Domain Name was, in fact, registered in good faith and used with the authority of the Complainant.
The Respondent acknowledges that, in 2013, he listed the Disputed Domain Name for sale on a domain marketplace website in an attempt to recover his initial capital investment into the business. In some circumstances, this offer for sale could be deemed evidence of registration and use in bad faith. However, in this case, there is no evidence of the price at which the Disputed Domain Name is offered for sale, so the Panel cannot determine whether or not Respondent was attempting to sell his registration for an amount in excess of his out-of-pocket costs. Further, the Panel considers that the Respondent does not appear to have registered the Disputed Domain Name primarily for the purpose of selling it, as required under paragraph 4(b)(i), given that he registered the Disputed Domain Name in 1999, and listed it for sale more than ten years later.
Therefore the Complainant does not succeed on the third element of the Policy. D. Reverse Domain Name Hijacking
The Respondent has asked that a finding of reverse domain name hijacking be made against the Complainant. While the Complainant has not succeeded in this case, the Panel is not prepared to find that its Complaint was unjustified.
Although some of the Complainant's arguments may have been weak, the Complainant still produced an arguable case for each element of the Complaint, and succeeded on the first element. The Panel finds that the Complaint was not brought in bad faith, and consequently there is no basis for finding the Complainant has engaged in reverse domain name hijacking. 7. Decision
For the foregoing reasons, the Complaint is denied.
John Swinson
Sole Panelist
Date: January 31, 2015
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