The Complainant is Marimekko Oyj of Helsinki, Finland, represented by Roschier Brands, Attorneys Ltd., Finland.
The Respondent is He Sheng Li / Dong Qing of Jiu Long, China. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Web Commerce Communications Limited dba WebNIC.cc (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2015. On July 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 4, 2015, 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.
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 July 17, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 6, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 7, 2015.
The Center appointed Olga Zalomiy as the sole panelist in this matter on August 21, 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 a Finnish design company that manufactures apparel, bags and textiles. The Complainant is the owner of a number of MARIMEKKO trademark registrations, such as Community Trade Mark (CTM) registration No. 000307496 dated July 24, 1998; CTM registration No. 006997712 dated January 30, 2009 and a Japanese Trademark Registration No. 1167709 dated February 08, 1975.
The Respondent He Sheng Li, whose organization name is “Dong Quing”, registered the Domain Name on January 23, 2015. At the time of Complaint filing, The Domain Name was used to direct to a website in Japanese displaying the Complainant’s MARIMEKKO trademark and products. 5. Parties’ Contentions A. Complainant
The Complainant claims that the Domain Name is confusingly similar to the MARIMEKKO trademark, which the Complainant owns, because addition of the term “jap” to the Complainant’s trademark does not dissipate the confusion. The Complainant further claims the term “jap” in the Domain Name is descriptive because the website “www.” is in Japanese and targets Japanese consumers.
The Complainant asserts that the Respondent has no rights or legitimate interests in the Domain Name and has not registered it as a trademark, service mark or a trade name anywhere in the world. The Complainant claims that the Respondent has not used the mark for a bona fide offering of goods or services and the Respondent is not commonly known by the name “Marimekkojap”. The Complainant alleges that it did not license or otherwise permit the Respondent to use the MARIMEKKO trademark and that there is no relationship between the Complainant and the Respondent.
The Complainant alleges that the Respondent registered and is using the Domain Name in bad faith. The Complainant claims that it tried to contact the Respondent about its use of the Domain Name, but it has received no response. The Complainant asserts that because the “www.” website infringes on the Complainant’s MARIMEKKO trademark and other intellectual property rights, this proves the Respondent’s bad faith.
The Complainant claims that it was founded in 1951 and has operated practically globally. The Complainant claims that its products and designs are widely known. According to the Complainant, the Respondent uses the website associated with the Domain Name to attract for commercial gain Internet users by creating a likelihood of confusion with the Complainant’s trademark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In this UDRP proceeding, the Complainant must prove, by a preponderance of the evidence1 each of the following UDRP elements2 :
(i) the Domain Name registered by the Respondent 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
As the Respondent has not filed a Response, the Panel may decide the dispute based on the Complaint and may accept all reasonable factual allegations as true. The Panel may also draw inferences from the Respondent’s default. Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. A. Identical or Confusingly Similar
To satisfy the first UDRP element, a domain name must be “identical or confusingly similar” to a trademark, in which a complainant has rights3 . The Complainant established its rights in the MARIMEKKO mark by submitting copies of several trademark registrations for the MARIMEKKO trademark.
The Domain Name, which comprises the MARIMEKKO trademark, the word “jap” and the generic Top-Level Domain (“gTLD”) “.com”, is confusingly similar to the Complainant’s mark. Where the distinctive and prominent element of a disputed domain name is the complainant’s mark and the only deviation is the inclusion of a generic term4 or the gTLD5 , as prefix or suffix, such prefix or suffix does not negate the confusing similarity between the domain name and the mark. The Panel, therefore, finds that the Domain Name is confusingly similar to the Complainant’s MERIMEKKO trademark.
The Panel therefore finds that the Complainant has fulfilled the first condition of paragraph 4(a) of the UDRP. B. Rights or Legitimate Interests
To satisfy the second UDRP element, the Complainant may make out an unrebutted prima facie showing that the Respondent has no rights or legitimate interests in the Domain Name.
Paragraph 4(c) of the UDRP provides that the Respondent may establish rights or legitimate interests in the Domain Name by proof of any of the following non-exclusive list of circumstances: (i) before any notice to the Respondent of the dispute, the Respondent used, or made 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 not acquired 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 consumers or to tarnish the trademark or service mark at issue.
The Complainant alleges that the Respondent has not used the Domain Name in connection with a bona fide offering of goods or services, the Respondent is not commonly known by the Domain Name, nor is the Respondent making a legitimate noncommercial or fair use of the Domain Name. The Complainant also claims that it has not authorized the Respondent to use its MARIMEKKO trademark. The Panel, therefore, finds that the Complainant has established a prima facie case. Without contrary evidence from the Respondent, the Panel finds that the second element of paragraph 4(a) of the UDRP has been established. C. Registered and Used in Bad Faith
To satisfy the third UDRP element, the Complainant must prove that the Domain Name was registered and is being used in bad faith.
Based on the evidence submitted by the Complainant, the Panel finds that the Respondent registered and is using the Domain Name in bad faith. Based on the evidence on file, it is likely that the Respondent knew about the Complainant’s trademark as he registered the Domain Name well after the Complainant registered its MARIMEKKO trademark. The Complainant’s trademark priority in Japan, the country which the website associated with the Domain Name targets, goes back to the 1970s.
The evidence on file shows that at the time of Complaint filing the Domain Name was used to direct to a website prominently displaying the MARIMEKKO trademark. According to the Complainant, the website associated with the Domain Name was in Japanese and it was directed to Japanese consumers. The Respondent does not dispute those allegations. The Complainant claims that the Respondent used the website to attract for commercial gain Internet users by creating a likelihood of confusion with the Complainant’s mark, which corresponds to evidence of registration and use in bad faith under paragraph 4(b)(iv) of the UDRP. The Panel finds that it is likely that the Respondent tried to trade on the fame of the Complainant’s mark in Japan. Screenshots from the “www.” website at the time of Complaint filing show the Complainant’s trademark, and bags and textiles that appear to look similar to the Complainant’s goods. Therefore, the Panel finds that that the Domain Name is being used in bad faith.
The Panel, therefore, finds that the Complainant has established the third element of paragraph 4(a) of the UDRP. 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 Domain Name be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Date: September 3, 2015
1 Paragraph 4.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
2 Paragraph 4(a) of the UDRP.
3 Paragraph 4(a)(i) of the UDRP.
4 Paragraph 1.2, WIPO Overview 2.0.
5 Id.
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