The Complainant is Kåbe-Mattan AB of Fjugesta, Sweden, represented by Dipcon AB, Sweden.
The Respondent is Tapio Lehtinen, Netline O of Tallinn, Estonia, internally-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2016. On May 31, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 31, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 3, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 23, 2016. The Response was filed with the Center on June 23, 2016. The Respondent filed an unsolicited supplemental filing on June 27, 2016.
The Center appointed Tuukka Airaksinen as the sole panelist in this matter on June 30, 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 Complainant is a Swedish producer of entrance mats, having established its business over 70 years ago. The Complainant is the proprietor of the Swedish trademark registration No. 2009-07836 KÅBE MATTAN, registered on November 27, 2009, with priority from October 9, 2009.
The disputed domain name was registered on March 13, 2012. The disputed domain name resolves to a website in Estonian where products that are similar to those of the Complainant are offered for sale. 5. Parties’ Contentions A. Complainant
The Complainant is a Swedish producer of entrance mats, founded in 1944. The disputed domain name is identical to the Complainant’s trademark as the addition of the generic Top-Level Domain (“gTLD”) “.com” is irrelevant for the assessment of confusing similarity.
The Respondent has no rights or legitimate interests in the disputed domain name and is not a licensee of the Complainant. The Complainant has not given the Respondent any permission to register the trademark as a domain name.
The Complainant’s trademark has been used for over 70 years. As the Respondent is in the same business with the Complainant, it is inconceivable that the Respondent would not have been aware of the Complainant’s trademark when registering the disputed domain name. The Respondent uses the disputed domain name to financially gain from the Complainant’s reputation. B. Respondent
The Respondent registered the disputed domain name because the word “kabe” in Estonian means “checkers” and it has a planned mat product with pattern similar to checkers. The Respondent further argues that it is impossible to avoid same or similar company names because there are many companies all over the world and in different languages.
The Respondent says that Kåbe Mattan is not a global brand and is known for only in a narrow business field in northern Europe. The Complainant does not exhibit at the matting business’s main exhibition “Domotex”, or at the Estonian exhibition.
The Respondent’s product brand names are totally different from the Complainant’s trademark. The Complainant had more than ten years to register the disputed domain name but failed to do so. 6. Discussion and Findings
In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint. The first element is that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the disputed domain name. The third element a complainant must establish is that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the Complainant establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark.
The Complainant has shown that it is the proprietor of the Swedish trademark registration for the figurative trademark KÅBE MATTAN. The mark features the words “kåbe mattan” against a blue, rectangular background with horizontal stripes. The distinctive element of the trademark is the words “kåbe mattan” as the rest of the mark consists of merely decorative elements.
The disputed domain name is nearly identical with the Complainant’s trademark, save for the replacement of the letter “å” with the letter “a”, which is common practice in domain names. It would be natural for an Internet user searching for the Complainant’s website to type in the disputed domain name. Hence the Panel finds that the Complainant’s trademark is confusingly similar with the disputed domain name. B. Rights or Legitimate Interests, Registered and Used in Bad Faith
The Panel considers that it is appropriate to examine these two criteria together as they are closely interrelated in this case.
Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests to the disputed domain name.
The Complainant has submitted that it has not licensed or otherwise allowed the Respondent to register or use the disputed domain name.
The Respondent’s argument to support its legitimate interests in the disputed domain name is that the word “kabe” means “checkers” in Estonian, and that he has a planned product with a pattern similar to checkers. However, no evidence of such a product has been submitted. Even if this argument could be accepted, this still does not explain the word “mattan” (Swedish for “mat”) in the disputed domain name.
Paragraph 4(a)(iii) of the Policy requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that [the respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] registered the 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 domain name primarily for the purpose of disrupting the business or competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 respondent’s] website or location or of a product or service on [the respondent’s] website or location.”
The Respondent does not deny that it has been aware of the Complainant when registering the disputed domain name. Rather, the crux of the Respondent’s arguments seems to be that the Complainant is not a well-known brand, the rights owned by the Complainant do not extend to Estonia and that there can coexist many similar company names at the same time.
The Internet is global by nature. Hence the Policy does not necessarily require that the Complainant’s trademark rights exist in the jurisdiction in which the Respondent is placed. Rather, it is sufficient that the Complainant holds valid trademark rights to its trademarks, as does the Complainant in the present case. The Policy is also not reserved to big companies or well-known brands, but available to all trademark holders.
It is evident that the Respondent has registered the disputed domain name well aware of the Complainant, which is active in the same business as the Respondent. The Respondent also uses the disputed domain name to offer competing products. It is likely that an Internet user, looking for the Complainant’s website, would type in the domain name . As the website offers similar goods, the Internet user is likely to think that there is a commercial connection, such as a licensing arrangement, between the Complainant and the Respondent.
Hence the disputed domain name is used to obtain commercial gain by creating a likelihood of confusion with the Complainant’s trademark.
Based on the above, the Panel considers that the Respondent has no rights or legitimate interest in the disputed domain name, and the Panel finds that the disputed domain name has been registered and is being used in bad faith. Accordingly, the Panel finds that the second and third elements of the Policy are fulfilled. 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.
Tuukka Airaksinen
Sole Panelist
Date: July 11, 2016
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