The Complainant is Stora Enso Oyj of Helsinki, Finland, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Shenzhen ShenghongxinrongTrade Ltd of Shenzhen, Guangdong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with West263 International Limited (the “Registrar”). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2017. On July 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 11, 2017, 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.
On July 14, 2017, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On July 17, 2017, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 in Chinese and English of the Complaint, and the proceedings commenced on July 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 10, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 11, 2017.
The Center appointed Jonathan Agmon as the sole panelist in this matter on August 17, 2017. 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, Stora Enso Oyj, a Finland based company, is a leading provider of renewable solutions in packaging, biomaterials, wooden constructions and paper on global markets.
The Complainant’s group has some 25,000 employees in more than 35 countries, and is publicly listed on the Helsinki and Stockholm stock exchanges. The Complainant’s group sales in 2016 were EUR 9.8 billion, with an operational EBIT of EUR 191 million.
The Complainant owns several trademark registrations. For example: European Union trademark registration no. 001210640 for the mark STORA ENSO, registered on September 20, 2000; and International trademark registration no. 1092886 for the mark STORAENSO (and device), with the registration date of August 22, 2011, and more.
The Complainant also has an Internet presence through its webs ite .
The disputed domain name was registered on December 27, 2016.
The disputed domain name directs to an ecommerce website offering electronic products for sale. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant further argues that the disputed domain contains the trademark STORA ENSO in full. Furthermore, the addition of the term “oyj” does not mitigate the risk of confusion since the Complainant’s full company name is Stora Enso Oyj.
The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant further argues that the Respondent is not commonly known by the disputed domain name, which evidences a lack of rights or legitimate interests.
The Complainant further argues that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The Complainant argues that the website under the disputed domain name is redirecting to a page selling electronics and these products are in no way connected to the Complainant’s own products and services.
The Complainant further argues that the disputed domain name was registered and is being used in bad faith.
The Complainant further argues that by registering a domain name that incorporates the STORA ENSO trademark in its entirety and matches the Complainant’s trade name exactly, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business.
The Complainant further argues that in addition to the disputed domain name, the Respondent currently holds registrations for several other domain names that misappropriate the trademarks of well known brands and businesses, and this fact demonstrates that the Respondent is engaging in a pattern of cybersquatting, which is evidence of bad faith registration and use of the disputed domain name.
The Complainant further argues that the Respondent has ignored the Complainant’s attempts to resolve this dispute outside of this administrative proceeding, and that failure to respond to a cease-and-desist letter is also a sign of the Respondent’s bad faith.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Procedural Issue – Language of the Proceedings
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, 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 names is Chinese.
The Complainant requested that the language of the proceedings be English.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
In deciding the language of the proceedings, the Panel takes the following into consideration:
a) The disputed domain name consists of Latin characters;
b) The website under the disputed domain name is entirely in the English language;
c) The Respondent did not respond to the Complainant’s request that English be the language of the proceedings, or otherwise comment on the language of the proceedings.
Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for its decision to be rendered in English.
Accordingly, the Panel determines that the language of this administrative proceeding should be English. 6.2. Substantive Issues A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant owns several trademark registrations. For example: European Union trademark registration no. 001210640 for the mark STORA ENSO, registered on September 20, 2000; and International trademark registration no. 1092886 for the mark STORAENSO (and device), with the registration date of August 22, 2011, and more.
The disputed domain name incorporates the Complainant’s STORA ENSO trademark in its entirety with the addition of the term “oyj” and the Top-Level Domain (“TLD”) “.info”. The term “oyj” is the Finish designation for a public limited company. Each Finish public limited company would have this designation affixed to its name to indicate the type of its incorporation. Company designations, be they ltd, limited, or oyj, in this case do not serve to sufficiently distinguish the disputed domain name from a complainant’s trademark and would therefore be ignored. Therefore, the addition of the terms “oyj” and the TLD suffix “.info” do not have the capacity to distinguish the disputed domain name from the Complainant’s STORA ENSO registered trademark and are disregarded when comparing the disputed domain name with the Complainant’s trademark. See Philip Morris USA Inc. v. Zhang Xiao,WIPO Case No. D2017-1156; Altria Group, Inc., Altria Group Distribution Company v. Zhang Xiao,WIPO Case No. D2017-1157; Harrods Limited v. George Santiago,WIPO Case No. D2010-0789; BHP Billiton Innovation Pty Ltd v. Reginald Mongeur,WIPO Case No. D2017-1219. In this case, the use of the “oyj” within the disputed domain name clearly refers to the Complainant’s full company name, which is Stora Enso Oyj, and its use in this context clearly supports a finding of potential confusion between the disputed domain name and the Complainant’s trademark.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to the STORA ENSO trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the Complainant’s trademarks or a variation thereof, the Respondent is not known by the Complainant’s trademark, and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services.
The Respondent has not submitted any Response to the Complaint and did not provide any explanation or evidence to show any rights or legitimate interests in the disputed domain name sufficient to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant has owned a registration for the STORA ENSO trademark since at least the year 2000. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
The disputed domain name is confusingly similar to the Complainant’s trademark. Previous UDRP panels have found that “[a] likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (E, Inc. v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the Policy. This is especially true when the Complainant’s trademark has no meaning and is so closely associated with the Complainant, as is the case here.
It was held in previous UDRP decisions that it is presumptive that using a highly distinctive trademark with longstanding reputation is intended to make an impression of an association with the Complainant. Also, the disputed domain names are currently inactive which can, in appropriate circumstances, indicate the Respondent’s bad faith. (See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.)
Thus, it would have been pertinent for the Respondent to provide an explanation of his choice in the disputed domain name. However, the Respondent has chosen not to respond to the Complainant’s allegations in the Complaint and this leads the Panel to conclude that the disputed domain name was registered and is being used by the Respondent in bad faith with the intent to create an impression of an association with the Complainant and profit therefore and/or disrupt the business of the Complainant. Indeed, “when a domain name is so obviously connected with a Complainant, it’s very use by a registrant with no connection to the Complainant suggests ‘opportunistic bad faith’”. (Tata Sons Limited v. TATA Telecom Inc./T, Mr. Singh,WIPO Case No. D2009-0671).
In addition, the evidence provided by the Complainant shows that the Respondent is operating a website offering for sale electronic devices. The evidence also shows that the Respondent is engaged in the “bait and switch” practice, whereby Internet users are lured to the Respondent’s websites based on known brand names and then offer such Internet users with other goods. Such practice is clear evidence of and faith registration and use of the disputed domain name. (Policy, paragraph 4(b)(iv)).
Moreover, the evidence show that the Respondent is engaged in a pattern of cybersquatting and has been involved in previous UDRP proceedings where it was found that the Respondent acted in bad faith using the same “bait and switch” practice. See Statoil ASA v. Shenzhen ShenghongxinrongTrade Ltd.,WIPO Case No. D2017-0322. In the cited case, the Respondent also employed an abbreviation of the Norwegian word ““allmennaksjeselskap”, which is the equivalent to the expression public limited company. The Respondent also used a well known trademark to attract Internet users to his website which provides other goods. This pattern of conduct is indicative of the bad faith practice the Respondent is engaged in.
The Complainant also provided evidence showing that the Respondent has ignored the cease-and-desist letters sent to it. The failure to respond to cease-and-desist letters is another indication of the Respondent’s bad faith registration and use of the disputed domain name.
Based on the evidence that was presented to the Panel, including the Complainant’s registered trademark, the use of the Complainant’s trademark in the disputed domain name, the website under the disputed domain name, the Respondent prior behavior and use of the “bait and switch” practice, the Respondent’s failure to answer the cease-and-desist letter and the Complaint, the Panel finds that the disputed domain name was registered and is being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) 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.
Jonathan Agmon
Sole Panelist
Date: August 31, 2017
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