The Petitioner is Honkarakenne Oy,Finland, represented by AWA Sweden AB, Sweden. 2. Domain Holder
The Domain Holder is R. S., Sweden, self-represented. 3. Domain Name and Procedural History
This Alternative Dispute Resolution proceeding relates to the domain name This Petition was filed under the Terms and Conditions of registration (the “.se Policy”) and the Instructions governing Alternative Dispute Resolution proceeding for domain names in the top-level domain .se (the “.se Rules”). The WIPO Arbitration and Mediation Center (“the Center”) verified that the Petition satisfied the formal requirements of the .se Policy and the .se Rules. In accordance with Section 13 of the .se Rules, the Center formally notified the Domain Holder of the Petition on November 20, 2019. The Domain Holder submitted a response on December 25, 2019. The Center appointed Peter Hedberg as the sole Arbitrator in this matter on January 8, 2020. The Arbitrator has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Section 1 of the .se Rules. 4. Factual Background The Domain Name was registered by the Domain Holder on December 22, 2017. The Petitioner is a Finnish company owning several trademarks which are legally recognized in Sweden for the word HONKA or incorporating said word, comprising e.g. building materials, wooden houses and services for building construction. The Domain Holder sells Finnish log houses in Sweden. 5. Claim The Petitioner has requested that the Domain Name shall be transferred to the Petitioner. The Domain Holder has opposed the Petitioner’s claim. 6. Parties’ Contentions A. Petitioner The Petitioner holds the right to the word HONKA in relation to, inter alia the construction of log houses through various trademark registrations. The HONKA trademarks is identical or confusingly similar to the disputed Domain Name. It is obvious that the Domain Holder has registered and is using the Domain Name in bad faith. The Petitioner’s rights predates the registration of the Domain Name. The Domain Holder was aware of the Petitioner and its HONKA trademarks at the time of registration of the Domain Name. The Domain Holder uses the HONKA trademarks for marketing and sales of goods that are identical with the Petitioner’s goods, namely log houses, on its website. Thus, the Domain Holder is utilizing the good reputation and market position of the Petitioner to attract traffic to its own website and is profiting from the goodwill associated with the Petitioner’s trademarks. The use of the Petitioner’s trademarks unfairly exploits the Petitioner’s rights and negatively affects the goodwill of the HONKA trademarks. The Domain Holder holds no right or justified interest in the Domain Name. The Petitioner has not authorized the registration or use of the Domain Name and has found no other indications that the Domain Holder should have any other justified interests with respect to the Domain Name, and the Domain Holder is not commonly known by the Domain Name. B. Domain Holder The Petitioner’s various trademark registrations for the word “honka” are descriptive in relation to inter alia the construction of log houses and should not have been registered. “Honka” means pine or fir-tree in Finnish. The Domain Name has not been registered or used in bad faith. There exist several Finnish log house manufacturing companies that incorporate the word “honka” in their company names. Examples are Maanhonka, Honkamajat and Honkakalot. The Domain Holder sells Finnish log houses in Sweden and thus, the Domain Holder has a right to use the Domain Name. 7. Discussion and Findings A domain name may be transferred to the party requesting dispute resolution proceedings if the following three conditions are fulfilled: A. The Domain Name is identical or similar to a name which is legally recognized in Sweden and to which the party requesting dispute resolution can prove its rights, and All three conditions must be met in order for the party requesting dispute resolution to succeed with a claim for transfer of the domain name. A. The Domain Name is identical or similar to a name which is legally recognized in Sweden and to which the Petitioner can prove its rights The Petitioner holds trademark registrations with validity in Sweden. All of which are European Union Trademarks, namely European Union trademarks nos. 0951900, HONKA (device), registered in 2007, 007591142, HONKA registered in 2009 and 010240571, HONKARAKENNE registered in 2012. Said trademarks are all registered in relation to building materials, inter alia wooden houses, or services for building construction. There is no dispute as to the Petitioner’s ownership of the trademark HONKA. The addition in the Domain Name of the term “timmerhus” does not change the fact that the Domain Name shall be regarded as similar to the trademarks in accordance with the .se Policy in an overall assessment. B. The Domain Name has been registered or used in bad faith When determining whether the Domain Name has been registered or used in bad faith, all relevant circumstances are assessed. It is sufficient that bad faith can be proven to exist either in connection with registration or with the use of the Domain Name for the condition to be fulfilled. The burden of proof lies on the Petitioner. The Petitioner claims that it is more likely than not that the Domain Holder was aware of the Petitioner and its HONKA trademarks at the time of registration of the Domain Name. And, furthermore, that the Domain Holder is utilizing the good reputation and market position of the Petitioner to attract traffic to its own website. However, no evidence has been submitted verifying said statements, which then will be only assumptions. The Domain Holder has drawn the attention to the fact that the word “honka” means pine in Finnish and is often used in relation to log houses from Finland. Furthermore, there are several Finnish log house companies incorporating the word “honka” in their names. The Arbitrator believes these are important facts when assessing the facts and evidence of the matter since the word “honka” should not be considered as a unique and distinguishing word for wooden houses and their production (in Finnish). The assessment in the matter (bad faith) aims at the intentions and actions of the Domain Holder in the capacity of owning the Domain Name according to the Rules. In this case it is not clear whether the Domain Holder is targeting the Petitioner. This dispute may exceed the scope of the ADR Rules and would be more appropriately addressed by a court of competent jurisdiction. In other disputes, such as trademark infringement cases, the mere use could be of importance even if in good faith. When assessing all circumstances, the Arbitrator cannot find that the basic requirements for the Petitioner to prove the existence of bad faith are met. C. The Domain Holder has no rights or justified interest in the Domain Name. As the Petition does not fulfill the second requirement, and therefore is rejected, there is no need to examine whether the Domain Holder has a justified right or interest in the Domain Name. 8. Decision The Domain Name The Domain Name is similar to the Petitioner’s trademarks. However, the Domain Holder is not considered to have registered or used the Domain Name in bad faith and the Petition is therefore rejected. Peter Hedberg
B. The Domain Name has been registered or used in bad faith, and
C. The Domain Holder has no rights or justified interest in the Domain Name.
Date: January 31, 2020
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