The Complainant is Neste Oyj of Neste, Finland, represented by Roschier Brands, Attorneys Ltd., Finland.
The Respondent is Andreas Backlund, Homepage Finland Oy of Turku, Finland. 2. The Domain Name and Registrar
The disputed domain name is registered with TLDS L.L.C. d/b/a SRSPlus (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 14, 2016. On April 14, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 14, 2016, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 19, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 17, 2016.
The Center appointed Gunnar Karnell as the sole panelist in this matter on May 27, 2016. 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 disputed domain name was registered on August 21, 2000. It is passively held. However, the WhoIs's records for the disputed domain name mention, in addition to the non-existence of a web-site, a number of archived history recordings (IP, Registrar and Hosting records) regarding registration activities over eleven years.
The Complainant has requested that the disputed domain name be transferred to the Complainant.
The Complainant owns the Finnish trademark NESTE, No. 93650, registered on September 5, 1985; as well as a number of Finnish figure marks showing the trademark NESTE as their dominant part, such as No. 102356 and 102357, registered on September 1988 as well as No. 121758 and 121759, registered on September 7, 1992.
Hence, the registration of the trademark took effect well before the registration of the disputed domain name. 5. Parties' Contentions A. Complainant
The disputed domain name is confusingly similar to the Complainant's trademark NESTE. The words "rally" and "finland" are descriptive and as such non-distinctive. In the disputed domain name, the words refer to rally competition raced in Finland, making "neste" the only distinctive element in the disputed domain name. The added descriptive word "rally" and the geographic identifier "finland" to the trademark are insufficient to confer such distinctiveness to the disputed domain name as would avoid confusion.
The Respondent has no rights or legitimate interests based on any kind of registration of a trademark, a service mark or a trade name at the time of applying for registration of the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to register or to use the disputed domain name. There is no relationship between the parties.
The disputed domain name was registered and it is being used by the Respondent in bad faith. The Respondent, being Finnish, must have been aware of the Complainant's Finnish brand and trademark NESTE when registering and also at his sequential "sporadic and intermittent" passive use of the disputed domain name over 15 years. The Complainant's predecessor company NESTE OY was founded in 1948 to secure Finland's oil supply and oil refining and to act as a marketing company. NESTE OY became a listed company at the Helsinki Stock exchange in 1995. Presently, the Complainant has the largest Finnish chain of service stations in a retail network for over 1000 stations as a captive marketing channel for its products in Finland, Northwest part of the Russian Ferderation, Estonia, Latvia and Lithuania. The Complainant is the titled sponsor of the Finnish World Rally Championship rally, formally named NESTE RALLY FINLAND, where the trademark NESTE has been used very visibly in the rally, as shown by related marketing materials from the period 1990-2004 within which the disputed domain name was registered. The Respondent has been aware of this rally and the Complainant's sponsorship. The rally is the most famous in Finland, attracting hundreds of thousand spectators each year. The Respondent had constructive notice of the Complainant's rights in the NESTE trademark through its registration and use at the time when the Respondent registered the disputed domain name. It cannot be used by the Respondent without infringing the rights of the Complainant. The Respondent's passive holding over 15 years has unduly prevented the Complainant from registering it for lawful purposes relating to its own trademark related engagements. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The factual foundations of the Complainant's contentions as presented in great detail by the Complainant support its uncontradicted claims by submitted evidence and ample reference to earlier UDRP decisions. In accordance with paragraph 15(a) of the Rules, the Panel, giving attention to all circumstances on record of the Respondent's behavior, proceeds to a decision dealing summarily with the case. A. Identical or Confusingly Similar
The Panel finds that notwithstanding differences, indicated as irrelevant by the Complainant, between the Complainant's registered trademark NESTE, in which the Complainant has rights, and the disputed domain name, this latter is confusingly similar to the Complainant's trademark.
Accordingly the first element of the Policy is satisfied. B. Rights or Legitimate Interests
The Complainant has, based on its contentions as summarized at 5. A. above, established a prima facie case that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and there has been no rebuttal by the Respondent. Nothing in the record gives reason to believe that the Respondent has or has had any rights or legitimate interests in respect of the disputed domain name during its protracted time of being registered.
The Panel finds that the Complainant has made out the second limb of the Policy in that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Panel finds no indication on the record that might impair the Complainant's conclusion that the disputed domain name has been registered and used in bad faith.
By holding its registration of the disputed domain name, under circumstances satisfactorily explained in the case file for a conclusion of bad faith, the Respondent has prevented the Complainant from reflecting its widely known trademark NESTE for goods and services (such as rally events) under the generic Top-Level Domain ("gTLD") "com".
The Panel finds that the Respondent has registered the disputed domain name in bad faith and that the Respondent also, by holding it under circumstances such as indicted in e.g., Telstra Corporation Limited v. Nuclear Mashmallows, WIPO Case No. D2000-0003, is using it in bad faith,all within the meaning of paragraph 4(b)(i) and 4(a)(iii) of the Policy.
In light of the above, the Panel confirms that the three conditions under 4(a) of the Policy are satisfied. 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.
Gunnar Karnell
Sole Panelist
Date: June 2, 2016
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