The Complainant is Fiskars Corporation of Helsinki, Finland, represented by Kolster Oy Ab, Finland.
The Respondent is Wolfswinkel Groentechniek VOF of Hoenderloo, the Netherlands. 2. The Domain Name and Registrar
The disputed domain name ("Domain Name") is registered with SIDN through TransIP BV. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 27, 2014. On June 27, 2014, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On June 30, 2014, SIDN 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 Dispute Resolution Regulations for .nl Domain Names (the "Regulations").
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 30, 2014. In accordance with the Regulations, article 7.1, the due date for Response was July 20, 2014. The Respondent sent an email communication to the Center on July 10, 2014. On July 21, 2014, the Center informed the parties that the due date for Response had passed, and that it would consider the Respondent's email communication of July 10, 2014, as the Response.
On July 24, 104, SIDN commenced the mediation process. On August 26, 2014, SIDN extended the mediation process until September 22, 2014. On September 23, 2014, SIDN further extended the mediation process until October 23, 2014. On October 15, 2014, SIDN informed parties that the dispute had not been solved in the mediation process.
The Center appointed Willem J.H. Leppink as the panelist in this matter on October 22, 2014. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2. 4. Factual Background
The Complainant, Fiskars Corporation, is a global supplier of branded consumer products for home, garden and outdoor use. Fiskars Corporation was founded in 1649 and is Finland's oldest company.
The Complainant owns several trademark registrations ("Trademark"), such as the Community Trademark registration for the word trademark FISKARS, registered on March 13, 2009 with registration number 007189889 for goods in class 7, 8, 12 and 21.
The Domain Name was registered by the Respondent on August 11, 2011. 5. Parties' Contentions
The Panel notes that both the Complaint and the Response were relatively brief. A. Complainant
Insofar as relevant, the Complainant contends the following.
The Complainant contends that the Domain Name is practically identical to the Trademark, since the term "shop" does not distinguish the Domain Name from the Trademark.
Furthermore, the Complainant states that the Respondent is a reseller of hand tools and garden tools. The Respondent has no connection with the Complainant and also has no justifiable reason to sell the Complainant's products on the website at the Domain Name. The Complainant has not granted any consent to third parties to register the Domain Name.
The Complainant contends that the sole purpose of the registration of the Domain Name is to unfairly use the Complainant's well-known Trademark to attract traffic to the Respondent's websites.
The registration of the Domain Name is also aimed at misleading the public, as the public could think that the Domain Name is officially linked to the Complainant.
For the above reasons, the Complainant requests the transfer of the Domain Name. B. Respondent
Insofar as relevant, the Respondent contends the following.
The Respondent contends that it registered the Domain Name in good faith to sell Fiskars products. Furthermore, the Respondent contends that it never intended to create the impression that the Respondent is linked to the Complainant. 6. Discussion and Findings
According to article 2.1 of the Regulations, for this Complaint to be successful in relation to the Domain Name the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trademark or a trade name, protected under Dutch law in which the Complainant has rights; or a personal name registered in the General Municipal Register ('gemeentelijke basisadministratie') of a municipality in the Netherlands, or the name of a Dutch public legal entity or the name of an association or foundation registered in the Netherlands under which the Complainant undertakes public activities on a permanent basis; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered in bad faith or is being used in bad faith. A. Identical or Confusingly Similar
Pursuant to article 2.1(a) of the Regulations, the Complainant must establish that the Domain Name is identical or confusingly similar to a trademark or trade name in which the Complainant has rights.
The Panel finds that the Domain Name is confusingly similar to the Trademark. The Domain Name incorporates the Trademark in its entirety. The Panel finds that regardless of the addition of the word "shop" in the Domain Name, the Trademark is the dominant element of the Domain Name.
The Complainant has thus established the first element of article 2.1 of the Regulations. B. Rights or Legitimate Interests
The Respondent has asserted that it is a reseller of Fiskar products, which the Complainant has not disputed.
Whether the Respondent is using the Domain Name in connection with a bona fide offering of goods, has to be assessed in light of the decision in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (regarding the domain name ) which decision has been rendered under the Uniform Domain Name Dispute Resolution Policy (UDRP) and which decision has been confirmed to be of relevance for the Regulations inter alia in Seiko EPSON Corporation v. ANEM Computers / ANEM,WIPO Case No. DNL2010-0024 (regarding the domain name ) and Maison Louis Latour v. Jos Beeres Wijnkoperij,WIPO Case No. DNL2011-0074 (regarding the domain name ).
To be bona fide, the offering must meet several requirements, which have been referred to in the aforementioned decisions, notably in the Oki Data case. Those include, at minimum, the following:
- the respondent must actually be offering the goods or services at issue. See, e.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306;
- the respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. Nikon, Inc. and Nikon Corporation v. Technilab, Inc.,WIPO Case No. D2000-1774; Kanao v. J.W. Roberts Co., Case No. 0109 (CPR July 25, 2001) (bait and switch is not legitimate);
- the site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. See, e.g., Houghton Mifflin Co. v. The Weatherman, Inc.,WIPO Case No. D2001-0211 (no bona fide offering where website's use of Complainant's logo, and lack of any disclaimer, suggested that website was the official Curious George website); R.T. Quaife Engineering, Ltd. and Autotech Sport Tuning Corporation d/b/a Quaife America v. Bill Luton,WIPO Case No. D2000-1201 (no bona fide offering because domain name improperly suggested that the reflected site was the official U.S. website for Quaife, an English company; moreover, respondent's deceptive communications with inquiring consumers supported a finding of no legitimate interest); Easy Heat, Inc. v. Shelter Products.,WIPO Case No. D2001-0344 (no bona fide use when respondent suggested that it was the manufacturer of complainant's products);
- the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525 ("a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark").
The Panel notes that the website under the Domain Name prima facie meets three of the above requirements, but not the jurisprudential requirements that it has to accurately and prominently disclose the Respondent's relationship with the Complainant.
Therefore the Respondent, for purposes of the Regulations, has not been using the Domain Name for a bona fide offering of goods or services.
Accordingly, the Panel finds that the Respondent cannot be said to have rights to or legitimate interests in the Domain Name.
The Complainant has thus established the second element of article 2.1 of the Regulations. C. Registered or Used in Bad Faith
The Panel refers to its considerations under 6.B.
In light of those considerations the Panel finds that the Domain Name has been registered and used in bad faith. The Respondent has used the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion which may arise with the Trademark as to the source, sponsorship and endorsement of the website.
This constitutes evidence of bad faith registration and use in accordance with article 3.2(d) of the Regulations.
Therefore, the Panel finds that the Complainant has also established the third element of article 2.1 of the Regulations. 7. Decision
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the domain name be transferred to the Complainant.
Willem J.H. Leppink
Panelist
Date: October 23, 2014
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