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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sampo Insurance Company plc and Leonia plc v. FLCitigroup, Inc

Case No. D2000-0865

 

1. The Parties

The Complainants are Sampo Insurance Company plc, a company incorporated and existing under the laws of Finland, having its principal place of business in Turku, Finland, and Leonia plc, a company incorporated and existing under the laws of Finland, having its principal place of business in Helsinki, Finland. The Respondent is FLCitigroup, Inc., the legal status of which is not clear. The address of the Respondent as contained in the domain name registration is Aninkaistenkatu 5 A, 20100 Turku, Finland.

 

2. The Domain Name and Registrar

The domain name at issue is "sampoleonia.com", which domain name is registered with Network Solutions, Inc. ("NSI"), Herndon, Virginia, United States of America.

 

3. Procedural History

A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on July 25, 2000 and in hardcopy on July 26, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainants, dated July 26, 2000. An amendment to the Complaint was received by e-mail on August 1, 2000 and in hardcopy on August 3, 2000.

On July 26, 2000 a Request for Registrar Verification was transmitted to the Registrar requesting it to:

(1) confirm that a copy of the Complaint was sent to the Registrar by the Complainants, as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy, Paragraph 4(b);

(2) confirm that the domain name at issue is registered with the Registrar;

(3) confirm that the Respondent is the current registrant of the domain name(s);

(4) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the Registrar’s WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact;

(5) confirm that the Uniform Domain Name Dispute Resolution Policy applies to the domain name(s);

(6) indicate the current status of the domain name(s).

On July 31, 2000 the Registrar confirmed by e-mail that the domain name "sampoleonia.com" was registered with the Registrar and that the Respondent was the current registrant of the name. The Registrar also forwarded the requested WHOIS details, confirmed that the Uniform Domain Name Dispute Resolution Policy was in effect and stated that the domain name was in "Active" status.

In its response the Registrar also stated that it was not in receipt of the Complaint. The Complainants did however send the amended Complaint to NSI on August 1, 2000.

Effective January 1, 2000 the Registrar adopted the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"). There is no evidence that the Respondent ever requested that the domain name at issue be deleted from the domain name database. Accordingly, the Respondent is bound by the provisions of Policy.

A Formal Requirements Compliance Checklist was completed by the assigned WIPO Center Case Administrator on July 26, 2000. The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Uniform Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "WIPO Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount by the Complainants.

No formal deficiencies having been recorded, on August 4, 2000 a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainants, NSI and ICANN), setting a deadline of August 23, 2000 by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in NSI’s WHOIS confirmation, as well as to "postmaster@sampoleonia.com"; no e-mail addresses were found at any web page relating to the disputed domain name. In addition, the Complaint was sent by telefax and express courier to all available postal addresses.

On August 23, 2000 the Respondent submitted its Response to the WIPO Center. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated August 23, 2000. On September 4, 2000 the WIPO Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date. This Notification informed the parties that the Administrative Panel would be comprised of a single Panelist, Mr. Jonas Gulliksson.

The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and WIPO Supplemental Rules.

The Administrative Panel shall issue its Decision based on the Complaint, the Response, the Policy, the Uniform Rules and the WIPO Supplemental Rules.

 

4. Factual Background

The Complainants and their Registered Trademarks

Sampo Insurance Company Plc, is proprietor of the following trademark registrations:

Mark Country Reg.number Class

SAMPO-YHTIÖT Finland 121120 36

SAMPO Spain 1996722 36

SAMPO Ireland 201578 36

SAMPO U.K. 2042981 36

SAMPO Italy 718800 36

SAMPO Austria 162500 36

SAMPO Greece 126936 36

SAMPO Latvia 38563 36

SAMPO Lithuania 29345 36

SAMPO Norway 178544 36

SAMPO Portugal 313598 36

SAMPO France 95595309 36

SAMPO Sweden 313431 36

SAMPO Germany 39544258 36

SAMPO Switzerland 432674 36

SAMPO The Netherlands 582676 36

SAMPO Denmark 81/1996 36

SAMPO Russia 151152 36

SAMPO Estonia 24415 36

Sampo Insurance Company plc is using the mark for the following services, that belong into international class 36, according to the Nice Agreement for the classification of goods and services:

Insurance, Capital investments.

Leonia Plc, is proprietor of the following trademark registrations:

Mark Country Reg.number Class

LEONIA EU (CTM) 816157 36

LEONIA Russia 185983 36

LEONIA Latvia 44875 36

LEONIA Norway 196347 36

LEONIA Switzerland 459.632 36

LEONIA Japan 4374879 36

LEONIA Singapore 36

LEONIA Estonia 36

Applications pending

LEONIA Canada 893,796 36

Leonia plc is using the mark for the following services, that belong into international class 36, according to the Nice Agreement for the classification of goods and services:

Banking; brokerage; capital investments; financial consultancy; insurance consultancy; credit card services; real estate agencies; money exchanging; financing services; deposits of valuables.

Sampo Insurance Company started its operation in 1909, and Leonia (under the name Postipankki) in 1886.

Sampo has been using the name Sampo as a specific symbol for the company and its services, from the date of establishment of the company. Leonia in its turn adopted the name LEONIA in connection with a company reorganization in 1998.

Sampo Insurance Company plc is quoted in the Helsinki Stock Exchange, and Leonia Plc, fully owned by the State of Finland, is the second largest banking enterprise in Finland.

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 would adopt a holding company structure whereby the parent company would have as its name a combination of the 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 Sampo-Leonia.

 

5. Parties’ Contentions

A. Complainants

The Complainants conclude that each of the three elements specified in paragraph 4(a) of the Uniform Policy are applicable to this dispute.

In relation to element (1), the Complainants note 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. The Complainants refer to the decision in case Number NAF FA0094933, MedicaLogic/Medscape, Inc., vs. The Domain Name You Have Entered Is For Sale, where the panel concluded, inter alia that:

"Complainant has rights in the mark ‘MedicaLogic/Medscape’.

Prior to the merger, MedicaLogic and Medscape each individually owned their specific trademark. The merger does not alter their rights to their marks. The combined mark is unusual and distinctive and the Complainant has exclusive rights to the combined mark."

In relation to element (2), the Complaints wish to 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 wish to point out 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.

In relation to element (3), the Complainants point out that evidence of bad faith registration and use is established by the following circumstances:

First, the Respondent has apparently provided false company and/or address information for the purposes of its domain name registration, in breach of the Respondent’s warranty under paragraph 2(a) of the Uniform Policy, as no existing company under the name F & L Citigroup, Inc. can be found on the Finnish Trade register.

Secondly, 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.

Thirdly, 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.

Fourthly, 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 prior to commencement of the proceedings at hand.

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

Further indications of bad faith

The Respondent 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 in Finland and other Nordic countries even before the plan was formally announced, the circumstances do indicate 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.

Even if the Respondent does not, this far appear 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". The Complainants refer to the decision in case Number D2000-0003, Telstra Corporation vs. Nuclear Marshmellows, where the panel concluded, inter alia 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 of paragraph 4 (a), iii.

Finally, the Complainants have requested the Administrative Panel to determine that the contested domain name "sampoleonia.com" shall be transferred to Complainants as joint proprietors.

B. Respondent

In its response, the Respondent has stated the following.

1. The Complainant claims that the Respondent has II B. [6) "for the purposes of registration the domain name, announced a place of business in Finland".

The domain name at issue is registered with Network Solutions CadVision PSINet, Canada and the Administrative Contact and the Billing Contact are domiciled in Finland. The company’s address is however Blake Street, New Haven 06511 CT, USA.

2. It is correct that it is not possible to identify the legal entity conducting business in Finland under the Respondent’s name. The Respondent has never done business in Finland. The Respondent has never provided any false company and/or address information.

3. The Complainants may have registered the trademarks SAMPO and LEONIA in Finland (Estonia, Latvia, Lithuania, etc.), but they have never have used their marks or business names in the United States of America.

4. If e.g. SAMPO has been used in business from 1909 they would have had time enough to make even one application in the USA.

5. The Complainant tries to evidence that they have used the name LEONIA since 1886. The name of the bank had been Leonia Bank, (actually Leonia Pankki Oyj) until 1998.

6. The Complainants published their merger plan on October 13, 1999. The Respondent registered "sampoleonia.com" in August 1999. The Complainants state that "Especially among investors in Finland and Sweden, the companies were expected to merge from approximately June-August 1999." The Respondent has however not belonged to the investors. The Complainants announced on their Net site that the Finnish Parliament received the proposal regarding the merger on March 2, 2000. If the Complainants knew so early that they would merge why did they not register the domain name at the same time?

7. The Complainants (or somebody else) have registered the domain-name "Sampo-Leonia.com" which is a better description of the merged companies than "sampoleonia.com".

8. There is no bad faith registration:

First, if a company cannot be found in the Finnish Trade register it is not an evidence of anything else than that the company is not registered in Finland.

Secondly, it is possible that the names Sampo and Leonia belong to the best known service marks in Finland. The name Sampo-Leonia was however not known until the merger plan was published in October 1999. If this procedure would be accepted no one could ever register a domain name consisting of two combined names since the holders of the separate parts of the name could get the registration cancelled.

Thirdly, there is no evidence that members of the public in Finland would believe that the entity who registered the domain name "sampoleonia.com" is the parent company created by the merger of the Complainants or in some way associated with the Complainants. The Respondent has no intention to do business in Finland and the Complainants have had no intention to do business on the US market the last hundred years.

Fourthly, the Complainants allege that "any realistic use of the domain name must misrepresent an association with the Complainants and their goodwill, resulting in trademark infringements". Further, the Complainants allege that the mark must be considered well known and thereby subject to broad protection in accordance with the Finnish Trademarks Acts. The Complainants further allege that "Thus, the Respondent can not have made himself generally known by the subject domain name prior to commencement of the proceedings at hand". According to the American trade rules there is no obstacle to register a free domain name as "sampoleonia.com".

No indications of bad faith

The Respondent has never tried to sell the domain name at issue.

The Respondent runs a consultancy service for small and midsized entrepreneurs in the United States of America and in the Caribbean area.

The Respondent’s clients have never heard about Sampo and Leonia in Finland.

The mere act of registration cannot be any evidence of bad faith in this case. The registration has not been done for the purpose of selling the domain name or in any way using it against the Complainants. There is no evidence of such circumstances. The Complainants do not run any business in the same area as the Respondent and there is no danger of confusion between the parties.

The Complainants claim that the registration does factually prevent them from reflecting the combination of their above referenced trademarks in a corresponding domain name. There are however thousands of possibilities to register the combination of their trademarks in a corresponding domain name.

 

6. Discussion and Findings

According to Paragraph 15 (a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph 4 (a) of the Policy directs that the Complainants must prove each of the following:

1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainants has rights; and,

2) that the Respondent has no legitimate interests in respects of the domain name; and

  1. the domain name has been registered and is being used in bad faith.

It is obvious from the facts that each of the Complainants are owners of prior trademark rights in the word-marks SAMPO and LEONIA. None of these are to be considered as generic or descriptive. Both trademarks individually are sufficiently distinctive to fulfil the requirements of trademark protection.

The fact that the name Sampo originates from Kalevala is of no relevance in this case.

Even if the Complainants had referred only to their respective trademark in two different complaints the words LEONIA and SAMPOLEONIA and SAMPO and SAMPOLEONIA would have been considered similar in the sense of the Nordic Trademarks Acts since the combination contains a distinctive element of the prior mark.

In view of the Complainants’ uncontested allegations that Sampo Insurance Company started its operations in Finland already in 1909 and Leonia in 1886 it can be concluded that both marks have acquired a reputation individually due to their long existence on the Finnish market. Consequently, the use of them as a part of a combined domain name "sampoleonia.com" would take undue advantage of the goodwill pertaining to their respective marks.

The Respondent has not proven that he has any prior rights or legitimate interests in the domain name.

The prerequisites in the Policy, Paragraph 4 (a) (i) and (ii) are therefore fulfilled.

Paragraph 4 (a) (iii) of the Policy further provides registration and use in bad faith.

Paragraph 4 (b) regulates which kind of evidence that is required.

According to the WHOIS database and the Registrar the domain name "sampoleonia.com" is registered by FLCitigroup Inc. The address of the company as contained in the domain registration is Anunkaistenkatu 5 A, 20100 Turku, Finland. The Respondent has in its Response, however, stated that it is an American company having its principal place of business in New Haven, USA.

According to Paragraph 2 of the Policy, anyone who applies to register a domain name shall represent and warrant to ICANN that the statements in the Registration Agreement are complete and accurate. In view of this rule and the fact that the Respondent has not submitted any proof of its domicile in USA the Panel will in its decision assume that the information in the WHOIS database is correct.

It is not conceivable that Respondent has selected and registered the combination of the two marks as its domain name without knowledge of at least both of the marks separately.

The fact that the Respondent has indicated a Finnish address also indicates that Respondent has been aware of these prior trademarks and that the registration therefore was made in bad faith.

It is obvious from the facts in the case, i.e. the prior rights by Complainants of confusingly similar trademarks, the identity between the dominating elements in the company names SAMPO and LEONIA and the domain name at issue, the fact that it is highly improbable that the Respondent had selected the name without first having noticed the Complainantsґs rights to the trademarks and their reputation in the words SAMPO and LEONIA on the Finnish market and the contents of the Policy Paragraphs 4 (a) (i-iii) and 4 (b) (i) that the domain name has been registered and used in bad faith. Cf. Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003.

Consequently, all the prerequisites for cancellation or transfer of the domain name according to Paragraph 4 (i) of the Rules are fulfilled.

The Complainants have requested transfer of the domain name.

 

7. Decision

In view of the above circumstances and facts, the Panel decides that the domain name registered by the Respondent is identical or confusingly similar to the trademarks and service marks in which the Complainants have rights, and that the Respondent has no rights or legitimate interests in respect of the domain name, and that the Respondent’s domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4 (i) of the Policy, the Panel requires that the registration of the domain name "sampoleonia.com" be transferred to the Complainants as joint proprietors.

 


 

Jonas Gulliksson
Presiding Panelist

Dated: September 15, 2000

 

Источник информации: http://www.internet-law.ru/intlaw/udrp/2000/d2000-0865.html

 

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