The Complainant is AS Hesburger, Estonia, represented by Kolster Oy Ab, Finland.
The Respondent is Petri Lilja, Costa del Crime Oy, 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 April 27, 2021. On April 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 27, 2021, 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. The Center sent an email communication to the Complainant on April 28, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 3, 2021. 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 May 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 25, 2021. The Response was filed with the Center on May 24, 2021. The Center appointed Tuukka Airaksinen as the sole panelist in this matter on May 28, 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 hamburger chain, well know in Finland and the neighboring Baltic countries. The Complainant is the owner of the trademark HESBURGER, registered inter alia as a European Union trademark No. 004444667 on September 20, 2006. The disputed domain name was registered on February 22, 2020. The disputed domain name resolves to a website advertising inter alia a book about the pseudonym Hesburgerking. 5. Parties’ Contentions A. Complainant The disputed domain name contains the Complainant’s trademark in its entirety. The addition of the word “king” is not sufficient to distinguish the disputed domain name from the Complainant’s trademark. The disputed domain name is being used to advertise and sell a book bearing the name Hesburgerking. At the website, to which the disputed domain name resolves, the name Hesburgerking is used in a very similar figurative form as the figurative form in which the Complainant’s trademark is used. It is therefore evident that the Respondent is aware of the Complainant’s rights. There is no affiliation between the Complainant and the Respondent. By registering the disputed domain name, the Respondent intentionally attempts to take unfair advantage of the Complainant’s trademark, which is well-known in Finland and the Baltic countries, with the purpose of attracting Internet users to the Respondent’s website. B. Respondent Hesburgerking was the pseudonym of the biggest vendor of illegitimate narcotics within the Finnish darknet market known as Silkkitie, operating from approximately 2017 to September 2019. This has been widely reported in the Finnish media during 2019 to 2021, as the case is one of the biggest illegitimate narcotics investigations in the country. Hesburgerking is also the name of the first book in a multi-book series published and marketed by the Respondent relating to the above-mentioned criminal activities. The disputed domain name resolves to a website advertising this book. The Respondent denies that the disputed domain name is confusingly similar to the Complainant’s trademark. It is evident that the Respondent is using the disputed domain name in connection with bona fide offering of goods, i.e., the book named Hesburgerking and related merchandise. Due to the publicity, the name Hesburgerking has become commonly known and associated with the Respondent’s book and the Respondent has acquired relevant rights to the disputed domain name and the name of the book. 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. According to section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “The applicable Top Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. Furthermore, “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”. See section 1.8 of the WIPO Overview 3.0. The disputed domain name is otherwise identical with the Complainant’s trademark, with the exception that the word “king” is also included in the disputed domain name. Such word in addition to the Complainant’s trademark HESBURGER does not prevent confusing similarity between the Complainant’s trademark and the disputed domain name. This means that the disputed domain name is confusingly similar with 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. The Complainant has 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 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. The Respondent is essentially arguing that the disputed domain name was originally the pseudonym of a well-known Finnish criminal, and that because the Respondent has published a book relating to the same criminal activities under the same name, he has used the disputed domain name in connection with a bona fide offering of goods. The Panel is well aware that the name Hesburgerking was used as the pseudonym of a well-known Finnish criminal, as the Respondent argues. The Panel notes that the Respondent has used the name Hesburgerking to advertise and sell its book written about the same case. The Panel wishes to highlight that this dispute is a domain name dispute under the Policy and not a trademark infringement act or another legal dispute. The disputed domain name has above been found to be confusingly similar with the Complainant’s trademark. It is not in dispute that the disputed domain name has been used for commercial activity, i.e., the sale and promotion of the Respondent’s book and other merchandise. The Respondent has not put forward any arguments to the extent that his use of the disputed domain name would be noncommercial or otherwise fair use. The Respondent submits that he “is not misleadingly diverting consumers or tarnishing the Complainant’s trademark. The parties of this dispute are operating in entirely different fields. The Respondent respectfully draws the Panel’s attention to the facts that: (i) the Complainant is commonly known as a fast-food restaurant, whereas; (ii) Hesburgerking is – as already mentioned – associated with the tradename of the biggest drug dealer in Finland – as well as the book about that drug dealer”. As noted, it is undisputed that the disputed domain name has been used for commercial activity. The Panel notes that in addition to the promotion of the Respondent’s book, the website at the disputed domain name also promotes other merchandise that plays off on the Complainant’s particular mark and logo. This is established by the fact that the Respondent is using a figurative form that very closely resembles the Complainant’s figurative trademark HESBURGER, hence creating a strong association with the Complainant’s trademark. It should also be noted that the Complainant’s trademark is inherently a distinctive trademark. Therefore, the Panel finds that the nature of the disputed domain name and the associated website content carry a risk of implied affiliation with the Complainant’s trademark. See section 2.5.1 of the WIPO Overview 3.0. In addition, the Panel also notes that the name Hesburgerking does have a certain connotation to it in Finland, but that does not in itself mean that the Respondent would have rights or legitimate interests to register the disputed domain name, or to attract Internet users to his website by playing off on the Complainant’s particular mark and logo. In this regard, the disclaimer on the website does not assist the Respondent. Considering the Panel’s findings above, 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.” Considering how the Respondent has (i) adopted a domain name confusingly similar to the Complainant’s trademark and (ii) uses it in a figurative form remarkably similar to the form in which the Complainant’s trademark is used, it is clear that the Respondent was aware of the Complainant and targeting its trademark when registering the disputed domain name. It is common ground that the disputed domain name is used to sell and promote not only the Respondent’s book but also other goods – all of which unfairly use a similar typeface as the Complainant’s well-known logo. Therefore, the disputed domain name has been used to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark. 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: June 10, 2021
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