WIPO Domain Name Decision: D2007-0957

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Stora Enso Oyj v. Ensolumber

Case No. D2007-0957

1. The Parties

The Complainant is Stora Enso Oyj, Helsinki, Finland, represented by Valea AB, Sweden.

The Respondent is Ensolumber, Beverly Hills, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <ensolumber.com> is registered with Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2007. The Respondent named in the Complaint was Privacyprotect.org, Domain AdminJohansonville, Wellington, New Zealand. On July 3, 2007, the Center transmitted by email to Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the domain name at issue. On July 4, 2007, Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com transmitted by email to the Center its response stating that the named Respondent PRIVACYPROTECT.ORG is only a service enabling the domain owner to hide its true identity and providing its contact details. On July 5, 2007, Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com confirmed by email that the UDRP applies to the domain name and that the language of the proceeding is English. On July 4, 2007, the Center informed the Complainant’s representative that the Complaint is administratively deficient and requested an amendment to the Complaint. In response to this notification the Complainant’s representative requested an 8-day suspension of the proceedings on July 6, 2007, which was confirmed by the Center on the same day. On July 16, 2007, the Complainant filed an amendment to the Complaint. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 17, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 6, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 8, 2007.

The Center appointed Torsten Bettinger as the sole panelist in this matter on August 17, 2007. 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 Story Enso Oyi, an integrated paper, packaging and forest product company, producing wood products, packaging board and publication and fine paper.

The Complainant was established in 1998 after a merger between the Swedish company STORA and the Finnish Company ENSO forming together one of the world’s largest forest products companies with 44000 employees in more than 40 countries on five continents. The Complainant is listed on the stock exchange in Helsinki, Stockholm and New York.

The name Enso was first established on the market in the beginning of 1889 and has been used as a company name and trademark internationally in connection with the production of forest products.

The Complainant is the registered owner of more than 110 trademarks worldwide. Many of these trademarks are composed of a combination of the word “enso” and descriptive terms, inter alia “ensocoat” and “ensogloss”.

Furthermore, the Complainant is registered owner of numerous domain names consisting of the term “enso” and descriptive terms, such as <enso.com>, <ensocard.com>, <ensocoat.com>, <ensocup.com> and <ensogloss.com>.

The Respondent has registered the domain name on March 5, 2007.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.

In reference to the element in paragraph 4(a)(i) of the Policy, the Complainant argues that the disputed domain name is confusingly similar to the trademarks, domain names and company names which have been used by the Complainant since 1889.

In reference to the element in paragraph 4(a)(ii) of the Policy, the Complainant contends that none of the situations described in paragraph 4(c) of the Policy can be established in this case. In support of this assertion the Complainant states that:

- the Respondent’s company is not registered with the Finnish company and trade register;

- the Respondent’s address provided on the website at the disputed domain name is identical with Complainant’s address and is therefore false;

- the Respondent is not, and has never been, authorized by the Complainant to use the Complainant’s trademark ENSO;

- Respondent’s use of the disputed domain name for forest products constitutes an infringement of Complainant’s right the trademark ENSO;

- the disputed domain name has been selected and used by the Respondent with the intent to confuse and redirect Internet users to the Respondent’s website and to exploit the goodwill of the Complainant’s trademarks;

- the Respondent has not been commonly known by the disputed domain name.

In reference to the element in paragraph 4(a)(iii) of the Policy, the Complainant asserts that

- the Respondent has contacted a former employee of the Complainant’s Research & Development department by email using the email address and offered him a job as a financial manager;

- the disputed domain name has been selected by the Respondent with the intent to confuse and redirect Internet users to the Respondent’s website and to exploit the goodwill of the Complainant’s trademarks;

- the disputed domain name was registered in order to prevent the Complainant from registering its trademark in a corresponding domain name; and finally

- by using the domain name, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trademark infringement (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-l698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110; Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843; AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327; BWT Brands, Inc. and British American Tobacco (Brands), Inc. v. NABR, WIPO Case No. D2001-1480; Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505).

The disputed domain name wholly incorporates the distinctive part of Complainant’s trademarks ENSOCOAT and ENSOGLOSS, used in connection with forest products. The fact that the word “lumber” is added to the distinctive part ENSO of Complainant’s trademarks does not eliminate the similarity between these trademarks and the disputed domain name, as “lumber” is a descriptive component of the disputed domain name. In numerous cases, it has been held that a domain name that wholly incorporated the distinctive part of a complainant’s registered mark may be sufficient to establish confusing similarity for purposes of the Policy despite the addition of descriptive words.

It is also well established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429).

The Panel thus finds that the domain name <ensolumber.com> is confusingly similar to the trademarks in which the Complainant has exclusive rights and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no right or legitimate interest in the disputed domain name. However, it is consensus view among Panelists that if Complainant makes a prima facie case that the Respondent has no rights or legitimate interests, and Respondent fails to show one of the three circumstances under Paragraph 4(c) of the Policy, then the Respondent may lack a legitimate interest in the domain name.

Complainant asserted that the Respondent has neither a license nor any other permission to use the Complainant’s trademarks. The Respondent has not denied these assertions. The Panel thus finds that the Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.

The Respondent has not provided evidence of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name.

The fact that Respondent operates under the same company name and the same address as the Complainant and used the disputed domain name for a website offering competing products as those of Complainant’s clearly shows that Respondent has not used the domain name in connection with a bona fide offering of goods or services pursuant to paragraph 4(a) (i) of the Policy.

Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) is also satisfied.

C. Registered and Used in Bad Faith

The Panel is also convinced that Respondent registered and has been using the domain name in bad faith.

The Complainant’s trademark has been used internationally both as a company name and a trademark in connection with the sale of forest products since 1889. The Respondent has registered a domain name which is identical with the distinctive part of Complainant’s trademarks ENSOCOAT and ENSOGLOSS and uses the domain name for a website offering products which are competing with those of the Complainant. It is therefore inconceivable that Respondent registered the disputed domain name unaware of the Complainant’s rights in its ENSO marks.

This, and the fact that the Respondent uses an address which is identical with Complainant’s address leads to the conclusion that the Respondent registered the domain name in order to prevent the Complainant from reflecting its mark in a corresponding domain name, or to otherwise profit commercially from likely Internet user confusion of the disputed domain name with the Complainant and it’s mark and thus capitalize on the goodwill of the Complainant’s trademark.

This qualifies as bad faith under paragraph 4(b)(iv) in that the Respondent’s use of the domain name attempts to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion with Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website.

Respondent’s default in this proceeding reinforces an inference of bad faith. If Respondent had arguments that it acquired the domain name in good faith, and had good faith bases for using the domain name, it should have asserted them.

The Panel therefore concludes that Respondent registered and is using the domain name <ensolumber.com> in bad faith and that the requirement of the paragraph 4(a)(iii) of the Policy is satisfied.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <ensolumber.com> be transferred to the Complainant.

Torsten Bettinger
Sole Panelist

Dated: September 7, 2007