The Complainant is Fiskars Corporation of Helsinki, Finland, represented by Petillion, Belgium.
The Respondent is Contact Privacy Inc. Customer 0139591733 of Toronto, Ontario, Canada / Sergei Voitovich, Private Person of Rovno, Belarus.
The disputed domain name <fiskars.market> is registered with Tucows Inc. (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 8, 2017. On August 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 8, 2017, 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 August 14, 2017, 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 August 17, 2017. The Complainant filed a second amended Complaint on the same day.
The Center verified that the Complaint together with the amended Complaints 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 August 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 10, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 13, 2017.
The Center appointed Antony Gold as the sole panelist in this matter on October 2, 2017. 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.
The Complainant is a global supplier of branded consumer products for the home, garden and outdoors. It has traded for a very substantial period under the brand name "Fiskars" and it has a prominent presence in social media and on the Internet. It has registered a number of domain names in order to conduct business online, including <fiskars.com>, <fiskarsgroup.com> and <fiskars.eu>.
The Complainant is the owner of a number of registered trade marks including:
- international trademark registration number 1084535 for FISKARS in word form, registered on July 14, 2011 in classes 6, 7, 8, 9, 11, 12, 16, 17, 19, 20, 21, 25, 27, 35, 37 and 41. This is in force in various countries, including in the Russian Federation and Belarus;
- United States of America trademark registration number 4287500 for FISKARS in stylised form, registered on February 12, 2013 in classes 2, 6, 7, 8, 9, 11, 16, 17, 19, 20, 21, 27, and 41.
The disputed domain name was registered on March 13, 2015. It points to a website, the content of which is mainly in Russian script. The website purports to offer for sale products which are identical or similar to the Complainant's products. The website features prominent use of the Complainant's branding and its FISKARS trade marks.
The Complainant says that the disputed domain name is identical or confusingly similar to a trade mark in which it has rights. In this respect, it draws attention to its many registered trade marks for FISKARS, details of two of these marks being set out above.
The Complainant says that the generic Top-Level Domain ("gTLD") suffix ".market" can be disregarded for the purpose of comparing the disputed domain name with its FISKARS trade mark. On this basis, the disputed domain name is identical to the Complainant's trade mark. In addition, however, it points out that, having regard to the nature of the Complainant's business, the ".market" suffix reinforces the suggestion of a connection between the Complainant and the disputed domain name. Accordingly, taken in its entirety, the disputed domain name is confusingly similar to the Complainant's trade mark.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant says that, to its knowledge, the Respondent is not known by the disputed domain name. The Complainant says, further, that the Respondent has not acquired any trade mark rights in FISKARS and that its use and registration of the disputed domain name was not authorized by the Complainant. It says that, in the absence of any licence or permission from the Complainant to use its FISKARS trade mark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed by the Respondent. Moreover, it says, the use of the disputed domain name to point to a website which uses the Complainant's trade marks and offers for sale products which are identical or similar to the Complainant's products does not constitute a legitimate noncommercial or fair use of the disputed domain name.
The Complainant adds that, even if the Respondent had a right to resell or distribute its FISKAR-branded products, this would not give it a right to use a domain name which is identical or confusingly similar to, or which otherwise wholly incorporates, the Complainant's trade mark. The Complainant says that the inherent character of the disputed domain name suggests a commercial relationship between the Complainant and the Respondent whereas, in reality, there is no relationship between the Parties.
The Complainant draws attention to earlier panel decisions under the UDRP and, in particular, to the decision of the panel in Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. In those proceedings, the panel held that it was sufficient for a complainant to make a prima facie case that a respondent had no rights or legitimate interests in a domain name, at which point the burden of production shifted to the respondent to come forward with evidence to rebut the complainant's prima facie case.
Lastly, the Complainant says that the disputed domain name was both registered and is being used in bad faith. The Complainant draws attention to the non-exclusive list of factors set out at paragraph 4(b) of the Policy which can establish bad faith registration and use.
The Complainant says that, as at the date of registration of the disputed domain name, the Respondent should have known about the Complainant and its trade marks and points out that a trade mark search would have revealed the Complainant's trade mark registrations. Moreover, it draws attention to the offer for sale by the Respondent of FISKARS-branded products and the use of the Complainant's photographs of its products as well as its use of specific trade marks of the Complainant such as "FISKARS SMARTFIT". It says that these factors indicate actual knowledge by the Respondent of the Complainant and its trade mark rights as at the date of registration. Whether or not the Respondent had actual knowledge of the Complainant, as it had no rights or legitimate interests in the FISKARS trade mark, the disputed domain name was registered in bad faith. The Complainant adds that the registration of the disputed domain name prevents the Complainant from reflecting its trade mark in a corresponding domain name and asserts that this will impede Internet users who are seeking the Complainant's websites from finding them.
So far as bad faith use is concerned, the Complainant says that the use of its figurative trade marks on the Respondent's website reinforces an association with the Complainant. The Complainant also suspects that the products sold on the Respondent's website are counterfeit because the prices at which goods are offered for sale are substantially lower than the Complainant's prices.
For these reasons, the Complainant says that the Respondent has registered and used the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant and its FISKARS trade mark as to the source, sponsorship, and/or affiliation with the Respondent's website.
The Complainant also says that there is no conceivable non-infringing use to which the Respondent could put the disputed domain name. It also draws attention to the fact that the Respondent took active steps to conceal his identity by the use of a privacy/proxy service and comments that previous decisions under the UDRP have indicated that the use of a privacy service by an operator of an inactive website will support inferences that a registrant registered and used a domain name in bad faith.
The Respondent did not reply to the Complainant's contentions.
Dealing, first, with the Respondent's failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant has produced evidence of its ownership of three trade mark registrations for FISKARS, including the two trade mark registrations in respect of which full details are provided above. It has accordingly established rights in its FISKARS trade mark.
The disputed domain name comprises the Complainant's trade mark followed by the gTLD suffix ".market". In many circumstances it is appropriate to disregard the gTLD suffix for the purpose of considering whether a domain name is identical or confusingly similar to a complainant's trade mark. In this case, if the gTLD suffix is disregarded, the disputed domain name is identical to the Complainant's trade marks.
The Panel accordingly finds that the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights.
The Policy sets out at paragraph 4(c) examples of circumstances, without limitation, by which a respondent may demonstrate rights or legitimate interests in a disputed domain name.
How these provisions are usually applied in practice is explained in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Jurisprudential Overview 3.0"), section 2.1. "While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ʻproving a negativeʼ, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element."
There is no evidence that either the privacy service or the person named as the underlying registrant is known by the disputed domain name. Nor is there any evidence that the Respondent has acquired any trade mark rights in FISKARS. Moreover, the registration and use of the disputed domain name by the Respondent has not been authorized by the Complainant. In the absence of any licence or permission from the Complainant to use its FISKARS trade mark, no actual or contemplated bona fide or legitimate use of the disputed domain name can reasonably be claimed by the Respondent. As discussed below, the Respondent's use of the disputed domain name creates a misleading impression of association with the Respondent. Such use is not bona fide within the meaning of the Policy.
Accordingly, none of the grounds set out at 4(c) of the Policy would appear to be applicable to the current facts and the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and the burden of production shifts to the Respondent to show that it does have such rights or interests. The Respondent has failed to respond to the Complaint and has thereby declined to take the opportunity available to it to provide evidence which might suggest that it might do so, whether on the specific grounds set out at paragraph 4(c) of the Policy or on any other basis.
Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests with respect to the disputed domain name.
The Complainant has established that, as at the date of registration of the disputed domain name by the Respondent in March 2015, it conducted business in many countries. Its FISKARS name was very well established and well known and protected by trade mark registrations in many jurisdictions. The FISKARS trade mark is distinctive. The fact that the Respondent chose to register a domain name which comprises the Complainant's trade mark in its entirety in combination with a gTLD suffix, ".market", which accurately characterizes the Complainant's trading activities, points clearly to an awareness by the Respondent of the Complainant and its business as at the time of registration. This is reinforced by the only known use to which the Respondent has put the disputed domain name, which is to point it to a website which, in effect, masquerades as website operated by the Complainant.
As many previous UDRP panels have found (see for example, Caixa D'Estalvis i Pensions de Barcelona ("La Caixa") v. Eric Adam, WIPO Case No. D2006-0464) knowledge of a corresponding mark at the time of registration is suggestive of bad faith. Also, as the panel held in Bouygues v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325, "it would have been pertinent for Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of an association with Complainant and its products."
So far as bad faith use is concerned, paragraph 4(b) of the Policy sets out, without limitation, circumstances in which, if found to be present, will be evidence of the registration and use of a domain name in bad faith. One of those circumstances, at paragraph 4(b)(iv) of the Policy, is if a respondent has by using the domain name, intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website.
The use to which the Respondent has put the disputed domain name falls precisely within these circumstances in that it points to a website which misleadingly purports to be operated by the Complainant and to offer the Complainant's products for sale. The belief of Internet users that the Respondent's website is operated by, or on behalf of, the Complainant will be reinforced because of the confusing similarity between the disputed domain name and the Complainant's FISKARS trade mark.
The Panel accordingly finds that the disputed domain name has been registered and is being used in bad faith. The Complainant's additional submissions in relation to bad faith registration and use do not therefore require consideration.
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 <fiskars.market> be transferred to the Complainant.
Antony Gold
Sole Panelist
Date: October 16, 2017