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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sampo Insurance Company Plc and Leonia Plc v. Caspar Callerstrom

Case No. D2000-0864

 

1. The Parties

Complainants are Sampo Insurance Company Plc and Leonia Plc, jointly, both companies being incorporated and existing under the laws of Finland, and having their principal place of business in Helsinki, Finland. The Complainant’s contact details are as follows: Sampo Insurance Company Plc, 00025 SAMPO, FINLAND and Leonia plc, Eteläesplanadi 8, 00007 HELSINKI, FINLAND. The complainants are represented by Esa Korkeamäki, Attorney at Law, and Martin von Willebrand, Attorney at Law, Heikki Haapaniemi Ltd., P.O. Box 232, 00101 Helsinki, Finland.

According to Internic’s and Network Solutions’ Whois database, the Respondent in this administrative proceeding is Caspar Callerstrom, a Swedish citizen, permanently residing in Sweden, Lutzengatan 1, SE-11520, Stockholm, Sweden. It should be noted that the Respondent is sometimes named by the Complainants and the WIPO Arbitration and Mediation Center as Caspar Callerström. There are however no indications that these two different names belong to different persons. The Respondent is not represented by counsel and has filed no Response.

 

2. The Domain Name and Registrar

The domain name at issue is "SAMPO-LEONIA.COM". The registrar with which the domain name is registered is: Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, VA 20170, USA.

 

3. Procedural History

On July 26, 2000, the complaint was received by the WIPO Arbitration and Mediation Center ("the Center") in hard copy in compliance with the requirements of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("the Supplemental Rules"). The appropriate fees were paid by the Complainant.

On July 26, 2000, a Request for Registrar Verification was transmitted to the Registrar. On July 31, 2000, the Registrar confirmed by e-mail to the Center that it had received the Complaint from the Complainants, that the Registrar is the registrar of the domain name "sampo-leonia.com", that the Respondent is the current registration of the said domain name, that the Network 4.0 Service Agreement is in effect, and that the said domain name is in "Active" status.

On August 3, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding relating to the "sampo-leonia.com" domain name to the Respondent by Post/Courier (with enclosures), by facsimile (Complaint without attachments) and by e-mail (Complaint with attachments). A copy of said Notification was sent to the authorized representative of the Complainant by e-mail. Further copies of said Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and to Network Solutions Inc., the Registrar of the "sampo-leonia.com" domain name (Complaint without attachments).

Said Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondent that the Administrative Proceedings had commenced on August 3, 2000, and that the Respondent was required to submit a Response to the Center on or before July 22, 2000.

The Respondent failed to submit a Response and on August 23, 2000, the Center sent a Notification of Respondent Default to the Respondent advising the Respondent that the consequences of said default included inter alia that the Center would proceed to appoint a single member Administrative Panel.

On September 1, 2000, the Center invited Prof. Dr. Thomas Hoeren to act as Administrative Panel in these proceedings and having received a Statement of Acceptance and Declaration of Impartiality from the said Thomas Hoeren the Center proceeded to appoint this Administrative Panel consisting of a single member on September 11, 2000. On the same date, the case file was transferred to the Administrative Panel.

In the view of the Administrative Panel, the proper procedures were followed and this Administrative Panel was properly constituted.

 

4. Factual Background

Given the Respondent's failure to file a Response in this case, the Administrative Panel accepts as true and accurate, all statements of fact made by the Complainant in its submissions (see: Talk City Inc. v. Robertson, (WIPO Case D2000-0009, February 24, 2000); Eauto, L.L.C. v. EAuto Parts, (WIPO Case D2000-0096, April 9, 2000).

Sampo Insurance Company plc, is the parent company of Sampo Insurance Group, the largest Finnish Insurance provider. Leonia plc is the parent company of Leonia banking and financial group, that consists of the parent company and its two subsidiaries, Leonia Bank plc and Leonia Corporate Bank plc. The Leonia Group is the second largest banking group in Finland.

The first of the complainants Sampo Insurance Company is listed on Helsinki Stock exchange. The second complainant, Leonia plc is owned by the Finnish government. The companies did on October 13, 1999, announce their intention to create, through merger a new financial services group, and that as a part of the merger plan, the parties will adopt a holding company structure whereby the parent company will, as its name carry a combination of the well-established and registered trademarks of the two parties: Vakuutusyhtiö Sampo-Leonia Oyj. Directly translated, the Finnish word "vakuutusyhtiö" means "Insurance company". Thus, the dominant part of the name is the combination of Sampo-Leonia.

Both of the Complainant Companies are well established in their respective fields of business. Sampo Insurance Company started its operation in 1909, and Leonia (under the name Postipankki) in 1886. The trademark "Sampo" has been used in Finland as a symbol for the complainant’s business activities from the year 1909 on. "Sampo" is registered as a trademark of the Sampo Insurance Company Plc. in Finland (Reg. No. 121129/Class 36), Sweden (313431/Class 36), and various other European states. "Leonia" is registered as a European Community Trademark of the Leonia Plc. (816157/Class 36) and in various Non-EU member states, such as Japan, Switzerland or Singapore.

 

5. Parties’ Contentions

A. Complainants

The Complainants request this Administrative Panel to issue a decision that the contested domain name be transferred to the Complainants. The Complainants assert that each of the three conditions in paragraph 4(a) of the Policy is satisfied:

(i) The Complainants submit that the "sampo-leonia.com" domain name is identical or confusingly similar to a trademark in which the Complainants have rights. It is submitted that the name "sampo-leonia.comt" domain name is identical to the Complainantsґ trademarks and service marks.

The Complainants submit that the relevant part of the domain name in issue is SAMPOLEONIA, and that this is clearly identical with the distinctive combination of the trademarks for the words SAMPO and LEONIA which are registered and owned by the Complainants, as described above.

(ii) The Complainants submit that the Respondent should be considered as having no rights or legitimate interests in respect of the "sampo-leonia.com" domain.

They point out that whereas the word SAMPO originates from the Finnish mythology (The Kalevala -saga), the Trademark LEONIA is an invented word. Therefore, the exact combination of these words is not one that traders would legitimately choose unless seeking to create an impression of an association with the Complainants. The Complainants further state that they have not licensed or otherwise permitted the Respondent to use any of their trademarks, nor have they licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating any of those marks. Accordingly, the Complainants contend that the Respondent has no rights or legitimate interests in respect of the domain name in issue.

(iii) The Complainants further submit that the said "sampo-leonia.com" domain name has been registered and is being used in bad faith. They argue that both the trademark SAMPO, and the trademark LEONIA belong to the best known service marks in Finland, and it is inconceivable for the reasons described above that the persons behind the Respondent would not be aware of this fact.

In addition, by virtue of the widespread use and reputation of the trademarks SAMPO and LEONIA, members of the public in Finland would believe that the entity owning the domain name SAMPOLEONIA.COM was the parent company created by the merger of the Complainants or in some way associated with the Complainants.

Furthermore, any realistic use of the domain name must misrepresent an association with the Complainants and their goodwill, resulting in trademark infringements. Due to the strong establishment of these trademarks, the marks must be considered well known, and thereby subject to broad protection in accordance with Article 6, subparagraph 2 of the Finnish Trademarks Act. Thus, the Respondent can not have made himself generally known by the subject domain name either prior to commencement of the proceedings at hand.

In addition, the Respondent has currently redirected the subject domain name to the domain name SAMPO.COM, owned by Sampo Insurance Company Plc., giving evidence of the Respondent’s awareness of the merger and showing thus that the domain name SAMPO-LEONIA.COM has been registered in bad faith.

The Complainants state that they are not aware of any Trademark registrations or registration applications in any country that would have been filed in the name of the defendant or any other party for the combined Trademark SAMPOLEONIA, or SAMPO-LEONIA.

As further indications of bad faith, the Complainants argue that the defendant does not own any valid Trademark registrations or pending registration applications for the combined symbol SAMPOLEONIA. The Complainants are not aware that the combined symbol would be used as a trademark for any goods or services in any country of the world by any third party, or that any preparations would have been made for the initiating of such use.

Therefore, and considering the fact that the merger plan of the Complainants was widely anticipated even before the plan was formally announced, the circumstances do indicate – according to the Complainants - that the subject domain name was initially registered for the sole purpose of selling the domain name registration to either of the Complainants for valuable consideration in excess of the domain name registrant’s out-of-pocket costs directly related to the domain name. Evidently, the registration does factually prevent the Complainants from reflecting the combination of their above referenced Trademarks in a corresponding domain name.

Finally, the Complainants refer to the decision in case Number D2000-0003, Telstra Corporation v. Nuclear Marshmellows, where the panel concluded, among others 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 the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name "being used in bad faith" is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith".

The Complainants find that the factual circumstances in the case at hand, as described above, clearly amount to the conclusion that the act of registration in this case constitutes use in bad faith, in accordance with paragraph 4(a)(iii). Even if the Respondent has not, to date, appeared to have taken any active steps (positive action) in relation to the domain name, the mere act of registration must, in the light of prior decisions of the WIPO Administrative Panels, be considered to constitute "use in bad faith".

B. Respondent

The Respondent has made no submission.

 

6. Discussion and Findings

According to Paragraph 4(a) of the UDRP, the Complainants have to prove that the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The domain name "sampo-leonia.com" includes the terms "Sampo" and "Leonia". These terms are protected by registered trademarks, "Sampo" related to the Sampo Insurance Company Ltd. and "Leonia" for Leonia Plc. The trademark registrations include the EU member states, including Sweden, the home country of the defendant. The protection also extends to the combined term "Sampo-Leonia" as the original trademarks are distinctive and prominent parts of this new term (see MedicaLogic/Medscape v. The Domain Name You have Entered Is for Sale, NAF Case FA0094933). As well, there is a likelihood of confusion with each of the trademarks as the terms "Sampo" and "Leonia" are part of the domain in question. Although it is not clear for which business the domain would be used, there is a danger that users might associate the domain with the business of the complainants which are well known at least in Finland.

As to Paragraph 4(a)(ii), the Respondent has not proven that he has a legitimate interest or right in respect of the domain name. The Complainants have stated they have not licensed their trademark rights to the Respondent. Prima facie the Respondent has not been commonly known by the said domain name. In the absence of any response filed or submissions made by the Respondent, they is no evidence that the Respondent makes any legitimate non-commercial or fair use of the said domain name.

The question where the Respondent has acted in bad faith (Paragraph 4(a)(iii) is however difficult to answer. Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) the following circumstances, in particular but without limitation, if found by the Administrative Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

None of these circumstances can be found in the existing case. In particular the Respondent has not tried to sell the domain to the complainants. Nothing indicates that he is a competitor or linked with a competitor of the complainants so that his purpose in the registration could not have been to disrupt the business of a competitor. In addition, it cannot be proven that the respondent has intentionally attempted to attract internet users to his web site. The respondent does not use the domain for building up his own web site; instead, he has redirected the domain to the website of the complainants. As a matter of fact, the Respondent prevents the Complainants from using the mark in a corresponding trademark. But there is no evidence that the Respondent has engaged in a pattern of such conduct as it has been foreseen in Paragraph 4(b)(iii).

Nevertheless, the provision of Paragraph 4(b) only contains a non-exclusive list of circumstances which indicate bad faith. Several WIPO domain name panels have broadly interpreted the term "bad faith" (cf. Telstra Corporation Ltd. v. Nuclear Marshmellows, Case No. D2000-0003, Stralfors AB v. PDS AB, Case No. D2000-0112, McNeil Consumer Brands Inc. v. Mirweb Solutions, Case No. D2000-0612). Such an extensive interpretation, however, may not be appropriate in all cases. The element of bad faith is not part of the trademark law systems of most countries. Regularly, the infringement of trademarks and similar rights can be prohibited in cases of willful and negligent actions; in the case of strict liability, the intention of the infringer is even totally irrelevant. Therefore, the UDRP only deals with a specific sector of trademark infringement, i.e. cases of willful infringements. Therefore, it is not the task of a WIPO domain name panel to solve all infringement cases; the scope of competence of such a panel is restricted compared to the possibilities of national courts.

In general, the mere registration of a domain name containing elements of a third personґs trademark does not amount to "bad faith" (see Maureen A. Healy v. Andreas Kuhlen, Case No. D2000-0698). Pursuant to Paragraph 4(b)(ii), in particular, the registration itself can only justify the assumption of "bad faith" if the respondent is shown to have engaged in a pattern. If the scope of "bad faith" is to be extended, the circumstances have to be comparable to the situation of a "pattern" or the other situations mentioned in Paragraph 4 (b). As the Panel already stated in detail in the Telstra case mentioned above (Telstra Corporation Ltd. v. Nuclear Marshmellows, sub 7.11), the registration and passive holding of a domain name can amount to bad faith "in respects of the particular facts of a specific case". The Telstra Panel introduced a test which might be used in this case as well. It has to be determined where it is possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate" (sub 7.12). Similar criteria might be found in recent decisions of European trademark courts (see for instance the English Court of Appeal in the case of British Telecom & Others v. One in a Million [1998] 4 All ER 476).

The following considerations demonstrate that there are particular circumstances which amount to bad faith:

- The Complainants are both well-known companies in Finland with very long business histories, starting in the beginning of this century. The company names "Sampo" and "Leonia" are registered in almost any EU Member State, in the case of "Leonia" even as part of a Community Trademark. Therefore, it can be asserted that "Sampo" and "Leonia" are well-known trademarks with a strong reputation, at least in Sweden where the Respondent has one of his seats.

- The Respondent has one of his seats in Sweden. It can be assumed that he is familiar with the Complainants and their business.

- In Summer 1999, the Complainants were expected to merge. According to the information on Network Solutions WHOIS-database, the domain name in question was registered on October 13, 1999. Thus, there is a close relationship in time between the merger plans and the domain name registration which leads to the assumption that the Respondent wanted to take advantage of the merger situation. This situation explains why the Respondent has chosen a domain name which combines the trademarks of the (merging) Complainants. He apparently must have been well aware of the value of the Complainantsґ trademarks when making the registration.

- The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name. In particular, there are no indications that the business of the Complainants was the subject of any public discussion at the time of registration. Therefore, it is not very probable that the Respondent could have registered the domain for the establishment of a discussion forum or even a virtual fan club (see Julia Fiona Roberts v. Russell Floyd, Case No. D2000-0210).

There are no other indications that the Respondent could have used the domain in question for any non-infringing purpose. The similarity of the names and all the surrounding circumstances lead to the conclusion that the domain name was registered to enable passing off, was adapted to be used for passing off and, if used, was likely to be fraudulently used.

 

7. Decision

With specific reference to Paragraphs 4(b) of the Policy and 15 of the Rules this Administrative Panel decides that the domain name "sampo-leonia.com" is identical or confusingly similar to the Complainantsґ trademarks, that the Respondent has no rights or legitimate interest in respect of that domain name and that the Respondent has registered and used that domain name in bad faith. Accordingly, this Administrative Panel decides that said domain name "sampo-leonia.com" should be transferred to the Complainants.

 


 

Prof. Dr. Thomas Hoeren
Presiding Panelist

Dated: September 16, 2000

 

Источник информации: http://www.internet-law.ru/intlaw/udrp/2000/d2000-0864.html

 

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