Designor Oy Ab v. Bamse Enterprises

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Designor OY AB v Bamse Enterprises

Case No. D2001-0643

1. The Parties

Complainant is Designor OY AB, Hämeentie 135, FIN-00561 Helsinki,

Finland represented by Kristiina Harenko, Attorneys at law Bornenius & Kemppinen

Ltd., Yrjönkatu 13 A, FIN-00120 Helsinki, Finland, hereinafter the "Complainant".

Respondent is Bamse Enterprises, Box 154, Svedala, 23331 Sweden, hereinafter

the "Respondent".

2. Domain Name and Registrar

The domain name in dispute is <iittala.com>.

The registrar for the disputed domain names is Network Solutions Inc., 505

Huntmar Park Drive Herndon, VA 20170 USA.

3. Procedural History

The essential procedural history of the administrative proceeding is as follows:

(a) Complainant initiated the proceeding by the filing of a complaint via e-mail,

received by the WIPO Arbitration and Mediation Center ("WIPO") on

May 11, 2001, and by courier mail, received by WIPO on May 14, 2001. On May

15, 2001, WIPO transmitted a Request for Registrar Verification to the registrar,

with the Registrar’s Response received by WIPO on May 16, 2001.

(b) On May 17 and 18, 2001, WIPO transmitted Notification of the Complaint

and Commencement of the proceeding to Respondent via e-mail and courier mail.

(c) On May 17, 2001, an email was received by the WIPO Center for the email

address of the Respondent, saying "The following addresses had permanent

fatal errors bamsefar99@hotmail.com". On the same date, an email was received

by the WIPO Center for the email address of the Respondent, saying "The

following addresses had transient non-fatal errors postmaster@iittala.com".

(d) On May 25, 2001 the Notification of the Complaint, which was sent by courier

mail, was returned to WIPO. The envelope was marked "unknown". Having

reviewed the communications records in the case file, the Panel finds that the

WIPO Center has discharged its responsibility under Paragraph 2 (a) of the Uniform

Rules "to employ reasonably available means calculated to achieve actual

notice to Respondent."

(e) Having received no response from the Respondent within the specified time

in the Notification of Complaint, on June 8, 2001, the WIPO Center issued to

both parties a Notification of Respondent’s Default.

(f) On June 15, 2001, WIPO invited the undersigned to serve as panelist in

this administrative proceeding, subject to receipt of an executed Statement

of Acceptance and Declaration of Impartiality and Independence ("Statement

and Declaration"). On June 19, 2001 the undersigned transmitted by fax

the executed Statement and Declaration to WIPO.

(g) On June 25, 2001, Complainant and Respondent were notified by WIPO of the

appointment of the undersigned sole panelist as the Administrative Panel (the

"Panel") in this matter. The same date WIPO notified that the Projected

Decision Date would be July 8, 2001.

The Panel has not received any requests from Complainant or Respondent regarding

further submissions, waivers or extensions of deadlines, and the Panel has not

found it necessary to request any further information from the parties. The

proceedings have been conducted in English.

4. Factual Background

The Complainant asserted, and provided evidence in support of, and the Panel

finds established, the following facts.

4.1 Complainant’s activities

The Complainant, Designor Oy Ab, belongs to Hackman Group and was registered

on July 25, 1980 under the earlier Company name Oy Finncrown. The Complainant

is specialized in designing, manufacturing, producing, marketing and selling

housewares of high quality design in Finland as well as in other countries.

The net sales revenue of the Complainant in 2000 was 132.1 million Euros.

4.2 Complainant’s Trading Name and Trademarks

The Complainant’s brand IITTALA is a well-known brand in the Nordic Countries

and is known in other countries as well. The Complainant is the proprietor of

13 registrations of trademarks containing the word IITTALA. The trademark has

been registered in more than 20 countries, such as Finland, Sweden, Denmark,

Norway, Great Britain, Italy, France, EU, Japan, Canada and USA. The various

trademark registrations cover the trademark classes (nice classification) 8,

14 and 21, and reference is made to annex 2 and 3 to the Complaint. The trademark

registrations cover different kinds of household or kitchen utensils.

4.3 Complainant’s Domain names and Web Sites

The Complainant is marketing IITTALA products on the www.designor.com web site

jointly with products under the other Designor brands.

The Complaint is a registrant of the domain name <iittala.net> and the

country code top level domain name <iittala.fi>.

4.4 Respondent’s Identity and activities

The Respondent registered the domain name <iittala.com> on October 17,

1997.

Prior to issuing the Complaint, the Complainant made efforts to identify and

contact the Respondent, using the details in the Registrars registry. It was

then disclosed that the post box address was false and the telephone number

belonged to a person, which had no connection to the Respondent. Complainant

successfully sent one email, dated December 28, 2000, to Respondent. The Respondent

did not reply to this email. The Complainant sent a new message on May 9, 2001,

but requested action was not taken due to the fact that the user account was

inactive.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the relevant part of the domain name IITTALA is

identical to the various trademarks for the word IITTALA, which are registered

and owned by the Complainant.

The Respondent has no legitimate interest in the domain name. The word IITTALA

is an invented word, and as such, no trader would legitimately choose to use

it unless seeking to create an impression of an association with the Complainant.

The web site iittala.com is inactive. A passive holding of a domain name can

also constitute a use in bad faith. Reference is made to WIPO. Decision Telstra

Corporation Limited v. Nuclear Marshmallows, Case

No. D2000-0003.

The Respondents inactivity constitutes a use in bad faith of the domain name,

and reference is made to the following circumstances:

The Complainant’s trademark has a strong reputation and is widely known.

The Respondent does not have any actual or contemplated good faith use of the

domain name.

The Respondent has taken active steps to conceal its true identity by operating

under a name that is not a registered business name.

The Respondent actively provided false contact details, in breach of its registration

agreement.

Taking into account all of the above, it has not been possible to conceive

any plausible active use of the domain name that would not be illegitimate,

such as passing off an infringement to consumer protection legislation or an

infringement to the Complainant’s rights under trade mark law.

B. Respondent

The Respondent did not file a Response to the Complaint.

6. Discussion and Findings

Paragraph 4 (a) of the Uniform Domain Name Dispute Resolution Policy lists

three tests, which a complainant must satisfy in order to succeed. The Complainant

must satisfy that:

(i) The 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 such

domain name; and

(iii) The domain name has been registered in bad faith and is being used in

bad faith.

A. Identical or confusingly similar to a trademark or a service mark

The Complainant has trademark rights in the name IITTALA.

The relevant part of this domain name is "iittala". The Panel finds

that this part of the domain name is identical to the dominating element, the

word IITTALA, in Complainant’s numerous trademark registrations of figure marks.

Hence, the Panel finds that the domain name is confusingly similar to Complainant’s

trademark registrations.

B. Legitimate interest

The Respondent has not provided evidence of circumstances of the type specified

in paragraph 4 c) of the Uniform Policy, or of any other circumstances giving

rise to a right to or legitimate interest in the domain name. The Complainant

has not licensed or otherwise permitted the Respondent to use any of its trademarks

or to apply for, or use, any domain name incorporating any of those marks. The

word "iittala" appears to be an invented word, and as such is not

one trader would legitimately choose unless seeking to create an impression

of an association with the Complaint. Therefore, the Panel finds that the Respondent

has no rights or legitimate interests in the domain name.

C. Registration and use in bad faith

The first question is whether the Complainant has proved that the domain name

"has been registered in bad faith".

The Panel finds that the Respondent does not conduct any legitimate commercial

or non-commercial business activity. The Panel finds that the Respondent has

taken deliberate steps to ensure that its true identity cannot be determined

and communication can not be made. Given the Complainants numerous trademark

registrations and its wide reputation connected with the word iittala, it is

hard to conceive that the Respondent could legitimately use the domain name

<iittala.com>. It is also hard to conceive that the Respondent, which

is Swedish, could have been unaware of the Complainant’s rights at the time

of registration. Therefore, the Panel concludes that the domain name has been

registered in bad faith.

The next question is whether the domain name "is being used in bad faith".

First the Panel will, with reference to Case

No. D2000-0003, state that the relevant issue is not whether the Respondent

is undertaking a positive action in bad faith in relation to the domain name,

but instead whether, in all circumstances of the case, it can be said that the

Respondent is acting in bad faith.

The domain name <iittala.com> does not lead to a web site. There is no

evidence that a web site or other on-line presence is in the process of being

established which will use the domain name. There is no evidence of advertising,

promotion or display to the public of the domain name. Furthermore, there is

no evidence that the Respondent has offered to sell, rent or otherwise transfer

the domain name to the Complainant, a competitor of the Complainant, or any

other person. This Panel does not know of any positive action being undertaken

by the Respondent in relation to the domain name. There is, however, several

other circumstances which proves that the domain name is being used in bad faith.

The particular circumstances which lead to the conclusion of use in bad faith

are:

- The Complainant’s trademark has a strong reputation and is widely known in

a number of countries, and especially in the Nordic Countries.

- The Respondent does not have any actual or contemplated good faith use of

the domain name. The Panel points out in this connection that the word "iittala"

is an invented word by the Complainant.

- The Respondent has taken active steps to conceal its true identity by operating

under a name that is not a registered business name. Furthermore the Respondent

actively provided false contact details, in breach of its registration agreement.

Reference is made to the Complaint and to subsection 4.4 above.

7. Decision

The Panel decides that the Complainant has proven each of the three elements

in paragraph 4(a) of the Uniform Policy. Accordingly, the Panel requires that

the domain name <iittala.com> be transferred to the Complainant.

Peter G. Nitter

Sole Panelist

Dated: July 6, 2001