The Complainant is Elisa Oyj, Finland, represented by Roschier Brands, Attorneys Ltd., Finland.
The Respondent is Juuso Peltola, OnniDomain, Finland. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2020. On November 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 December 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 12, 2021. The Center appointed Tuukka Airaksinen as the sole panelist in this matter on February 8, 2021. 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 provider of telecommunications and digital services, with 37% market share of those services in Finland. The Complainant serves over 2.8 million customers in Finland and internationally and employs almost 5,000 professionals in 14 countries. The Complainant is the owner of the trademark ELISA, registered inter alia as a European Union Trade Mark no. 016337602 on June 16, 2017. The Complainant’s trademark ELISA has also been entered into the list of trademarks with reputation held by the Finnish Patent and Registration Office on February 28, 2011, under no. 2007046. The disputed domain name was registered on September 2, 2020. The disputed domain name does not resolve to an active website. 5. Parties’ Contentions A. Complainant The disputed domain name contains the Complainant’s trademark ELISA in its entirety combined with the element “5g”. The element “5g” refers to the fifth generation technology standard for broadband cellular networks and is as such a generic term. The Respondent has no rights or legitimate interests to the disputed domain name. The Complainant has not permitted the Respondent to use its trademark ELISA or to register the disputed domain name. There is no relationship between the Complainant and the Respondent. Because of the reputation of the Complainant’s trademark, the Respondent must have been aware of the Complainant when registering the disputed domain name. The Respondent has offered to sell the disputed domain name to the Complainant for EUR 2,000, which significantly exceeds the out-of-pocket costs of registering the disputed domain name. The disputed domain name was also registered in order to prevent the Complainant from reflecting its trademark in a corresponding domain name and the Respondent has engaged in a pattern of such conduct. B. Respondent The Respondent did not reply to the Complainant’s contentions. 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 or not. The first element is that the 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 domain name. The third element a complainant must establish is that the 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 disputed domain name includes the Complainant’s trademark in its entirety combined with the term “5g”. The term “5g” is generally used to describe fifth generation telecommunication networks and services. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.” As the disputed domain name includes the Complainant’s trademark in its entirety, combined with a descriptive term, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and hence the first element of the Policy has been fulfilled. B. Rights or Legitimate Interests 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. It is widely accepted among UDRP panels that once a complainant has made a prima facie showing indicating the absence of the respondent’s rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied the second element of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270, and section 2.1 of the WIPO Overview 3.0. The Complainant has credibly submitted that the Respondent is neither affiliated with the Complainant in any way nor has it been authorized by the Complainant to use and register the disputed domain name, that the Respondent has no prior rights or legitimate interests in the disputed domain name, and that the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and is not commonly known by the disputed domain name in accordance with paragraph 4(c)(ii) of the Policy. Moreover, the Panel finds that the nature of the disputed domain name carries a risk of implied affiliation with the Complainant’s trademark. See section 2.5.1 of the WIPO Overview 3.0. Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. Considering the Panel’s findings below, the Panel finds that there are no other circumstances that provide the Respondent with any rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the second element of the Policy is fulfilled. C. Registered and Used in Bad Faith 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 Panel agrees with the Complainant that its trademark ELISA is a well-known trademark in Finland in the field of telecommunication services. The Respondent therefore knew or should have been aware of the Complainant’s trademark when registering the disputed domain name. The Respondent has offered the disputed domain name for sale at the price of EUR 2,000. This sum is clearly in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name. In these circumstances it is clear the Respondent registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the Complainant who is the owner of the trademark ELISA, or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name. Also, by his own admission in pre-Complaint correspondence, the Respondent has registered several corresponding domain names consisting of third-party trademarks combined with a descriptive term (such as Therefore, the Panel finds that the third element of the Policy is 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, Tuukka Airaksinen
Sole Panelist
Date: February 22, 2021
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