The Complainant is Oy Vallila Interior Ab of Helsinki, Finland, represented by Eversheds Ltd., Finland.
The Respondent is Linkz Internet Services of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by John Berryhill, Ph.d. Esq, United States of America (“USA”). 2. The Domain Name and Registrar
The disputed domain name is registered with Uniregistrar Corp (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2017. On July 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 1, 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.
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 August 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 30, 2017. On August 29, 2017, the Respondent requested an extension of the Response due date. In accordance with the Rules, paragraph 5(b), the Response due date was extended to September 3, 2017. The Response was filed with the Center September 3, 2017.
The Center appointed Warwick A. Rothnie, Johan Sjöbeck and Adam Taylor as panelists in this matter on October 6, 2017. The Panel finds that it was properly constituted. Each member of 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 has been using the sign “Vallila” since 1944 when it changed its name from Finnish Silk Ltd to Vallila Silk Ltd. At that time, it started to manufacture silk linings under the name “Vallila”. In 1987, it changed its name to its current name as its business has expanded to the wholesaling of printed fabrics and goods made of such as well as interior design services. In 1987, it also redesigned its logo, presumably into the stylised form of European Union Trade Mark (“EUTM”) Number 008629214 referred to below.
The Complainant has annual turnover of EUR 38 million and sells its products through almost 200 retailers throughout Finland. It also has “functions” in several other countries including the members of the European Union, Japan, Republic of Korea, Canada, the USA and Mexico.
In the Complaint, it identifies ownership of the following trademarks:
- Finnish Trademark registration number 248374 for VALLILA (figurative) which the Complainant applied to register on October 19, 2009;
- EUTM Number 008628794 for VALLILA which the Complainant filed on October 21, 2009 and was registered on June 28, 2010;
- EUTM Number 008629214 for VALLILA (figurative) which the Complainant filed on October 21, 2009 and was registered on June 8, 2010;
- EUTM Number 012868717 for VALLILA which the Complainant filed on May 12, 2014 and was registered on October 9, 2014; and
- EUTM Number 012868956 for VALLILA (figurative) which the Complainant filed on May 12, 2014 and was registered on October 9, 2014.
Each of the Complainant’s trademarks is registered for multiple International Classes.
Vallila is also an inner suburb of Helsinki.
The Respondent registered the disputed domain name on March 19, 2005.
Since then, it has resolved to a parking page, purporting to offer links to those interested in travelling to the Scandinavian region. The disputed domain name is offered for sale.
When the Complainant’s representative approached the Respondent’s sales broker anonymously, the sales broker offered the disputed domain name for sale at a price of USD 32,000. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks referred to in section 4 above.
The second stage of this inquiry requires a visual and aural comparison of the disputed domain name to the proven trademarks. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
The disputed domain name differs from two of the Complainant’s EUTMs only by the addition of the Top-Level Domain (“TLD”), “.com”. In addition to the TLD, it differs from the other trademarks only by being in plain script rather than the stylised version of the Complainant’s logo. Disregarding the TLD, therefore, the disputed domain name is identical to the Complainant’s EUTM Numbers 008628794 and 012868717. The disputed domain name is at the least confusingly similar to the Complainant’s other registered trademarks. B. Rights or Legitimate Interests
In view of the Panel’s conclusion under the third limb of the Policy, it is unnecessary for the Panel to express a view on this requirement. C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The first salient point under this limb is that the Respondent registered the disputed domain name some four years before the Complainant first applied to register its trademarks.
The Complainant has apparently been using its trademark for many years prior to registering it. If the Complainant could show that the Respondent had registered the disputed domain name with knowledge of, and to take advantage of, that unregistered use, it may be able to show registration and use in bad faith by the Respondent.
In the present case, however, it is clearly established that “Vallila” is the name of a place – an inner suburb of Helsinki. In addition, there are numerous business operating there, in fields different to the Complainant, which have “Vallila” in their name.
Moreover, the evidence does not show that the disputed domain name has been used to take advantage of the trademark significance of the disputed domain name. On the materials submitted in this proceeding, the landing page for the disputed domain name has ten links. Only three of those are related to Finland; three are for Iceland, three for Denmark and one for Norway. None of them are specific to Vallila.
The Panel is somewhat sceptical whether this would qualify as using the disputed domain name for its geographic significance in another case. For example, if the disputed domain name were “Hollywood”, one might wonder about the relevance of links to Canada or Mexico.
In the present case, however, the Complainant has not advanced anything sufficiently concrete to link the Respondent with specific knowledge of the Complainant. Even if the Respondent did have such knowledge, it may well also have had knowledge of the geographic significance of the term Vallila and the many other businesses operating there which have Vallila in their name. The price sought for the disputed domain name, therefore, cannot necessarily be attributed to the disputed domain name’s resemblance to the Complainant’s trademark. As the Complainant bears the onus on this issue, the Panel finds that the Complainant has not established that the Respondent registered the disputed domain name in bad faith. D. Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules provides, in part:
“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
For this purpose, paragraph 1 of the Rules defines “Reverse Domain Name Hijacking” to be “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. It is notable that reverse domain name hijacking is only an example of the types of situation where such a finding may be made.
Under paragraph 15(e) of the Rules, therefore, the Panel has a duty to consider and, if appropriate, make a ruling on whether the Complaint constitutes an abuse of the administrative proceeding.
The fact that the Complaint has failed is not sufficient in itself to warrant a finding of reverse domain name hijacking. The Complainant has registered trademarks and is entitled to seek to protect them.
In this case, however, the Complainant did not disclose that Vallila is the name of a place. Rather, it argued that the only possible reason for registering the disputed domain name was to take advantage of its significance as the Complainant’s trademark. Moreover, the Complainant relied on the communication from the Respondent’s broker offering the disputed domain name for sale for USD32,000 as evidence of both registration and use in bad faith.
However, it turned out that the Complainant had only disclosed part of the communications chain – the part viewed in isolation that was strongly favourable to it. The Complainant did not disclose its agent’s own communication to the broker in which the agent said:
“I’m a private person and would be interested in buying the domain for the use of our flea market/circulation group active in Vallila (which is a city part in Helsinki, Finland). …” (emphasis supplied).
This communication underlines the geographic significance of Vallila and is highly relevant to the issues raised, in particular under the second and third limbs of the Policy. The failure to disclose it had the potential to mislead the Panel in a way which could be, and in this case is, highly material to the Panel’s decision. The Complainant has not offered any explanation for that partial and highly prejudicial disclosure. Given the nature of administrative proceedings under the Policy as proceedings on the written submissions and supporting papers only, such partial disclosure cannot be condoned and warrants a finding that the Complainant has acted in bad faith in bringing this proceeding. 6. Decision
For the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Presiding Panelist
Johan Sjöbeck
Panelist
Adam Taylor
Panelist
Date: October 20, 2017
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