NATIONAL ARBITRATION FORUM
URS DEFAULT DETERMINATION
Fiskars Oyj Abp v. Privacy protection service - whoisproxy.ru
Claim Number: FA1408001577267
DOMAIN NAME
<fiskars.club>
PARTIES
| Complainant: Fiskars Oyj Abp Teija Kopio of Helsinki, Finland | |
|
Complainant Representative: Kolster Oy Ab
Joose Kilpimaa of Helsinki, Finland
|
| Respondent: Privacy protection service - whoisproxy.ru Privacy protection whoisproxy.ru of Moscow, Moscow, II, Russian Federation | |
REGISTRIES and REGISTRARS
| Registries: .CLUB DOMAINS, LLC | |
| Registrars: Regional Network Information Center, JSC dba RU-CENTER |
EXAMINER
| The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding. | |
| Saravanan Dhandapani, as Examiner |
PROCEDURAL HISTORY
| Complainant Submitted: August 28, 2014 | |
| Commencement: August 29, 2014 | |
| Default Date: September 15, 2014 | |
| Having reviewed the communications records, the Examiner finds that the National Arbitration Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules"). |
RELIEF SOUGHT
| Complainant requests that the domain name be suspended for the life of the registration. |
STANDARD OF REVIEW
| Clear and convincing evidence. |
FINDINGS and DISCUSSION
| Procedural Findings: | ||
| Multiple Complainants: No multiple Complainants are involved in this proceeding. This Complaint and findings relate to the domain name <fiskars.club>. No domain name is dismissed from this Complaint. | ||
| Multiple Respondents: No multiple Respondents are involved in this proceeding. This Complaint and findings relate to the domain name <fiskars.club>. No domain name is dismissed from this Complaint. | ||
| Findings of Fact: Complainant states inter-alia that they are the owner of the trademark ‘FISKARS’ vide Registration No.010091775, a proof of use has been submitted to and validated by the Trademark Clearinghouse; FISKARS trademark is extremely well-known globally; the Registration has no affiliation to Fiskars Corporation; the trademark FISKARS is also registered in Russia, where the Registrant is based, so the Registrant is aware of the Complainant’s trademark rights; the Registrant has not been in contact with the Complainant regarding the present domain name; thus, the Registrant has no legitimate right or interest to the present domain name; the domain <fiskars.club> has been registered by the Registrant without the consent of the Complainant; as the Registrant has no affiliation to the Complainant, nor has made any contact to the Complainant in relation to the registration of the domain name <fiskars.club>, it means that the domain name was registered for the purpose of selling, renting or otherwise transferring the domain name registration; by registering the domain name <fiskars.club> the Registrant intentionally attempts to take advantage of the well-known trademark FISKARS with the purpose of attracting Internet users to the Registrant’s website by creating a likelihood of confusion with the Complainant’s trademark as to source, sponsorship or affiliation of Registrant’s website or location; since the corresponding trademark has been added to the Trademark Clearinghouse, the Registrant was aware of the Complainant’s trademark rights when the domain name was registered; and the website <fiskars.club> is not in use at the moment. Complainant therefore requests that the Domain Name be suspended for the duration of the registration. |
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Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar
to a word mark: Determined: Finding for Complainant The Complainant has proved by documentary evidence being CTM file information, filed along with the URSS Complaint that they are the registered owner of trademark i.e., “FISKARS” vide Registration No.010091775. As noted, the Disputed domain Name <fiskars.club>, composes of “fiskars” and “.club”. “FISKARS” is identical to the Complainant’s “FISKARS” trademark. “.club” is a generic code top-level domain name (gTLD) suffix. It is non-distinctive and is incapable of differentiating the Disputed Domain Name from the Complainant’s registered trademark. Based on the “FISKARS” being a registered trademark of the Complainant, the Examiner determines that URS 1.2.6.1 (i) covers the domain name at issue in this case. [URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name. Determined: Finding for Complainant Based on .club WHOIS data it is evident that the Respondent has registered the domain name on June 28, 2014. On the other hand, the Complainant had registered their trademark “FISKARS” as early as in the year 2011. The fact that the Complainant’s adoption and first use of the registered trademark predates the Respondent’s Disputed Domain Name has the practical effect of shifting the burden of proof to the Respondent in establishing that the Respondent has legitimate rights and/or interests in the Disputed Domain Name. The Respondent is in default and has not filed any Response. Although, the Complainant is not entitled to relief simply by default of the Respondent to submit a Response, the Arbitral Tribunal can however and does draw evidentiary inferences from the failure of the Respondent to respond. The Complainant has established a prima facie case of lack of rights and legitimate interest and the Respondent has failed to rebut the presumption of absence of rights or legitimate interests. Based on the record, the Respondent does not have rights or legitimate interests in the disputed domain name. Hence, the Examiner determines that URS 1.2.6.2 covers the domain name at issue in this case and that the Respondent has no legitimate right or interest to the domain name.
[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
Determined: Finding for Complainant It is well established that the Respondent’s registration and use of the Disputed Domain Name must involve malafides where the registration and use of it was and continues to be made in the full knowledge of the Complainant’s prior rights in the “FISKARS” trademark, when the Complainant’s trademark “FISKARS” is also registered in Russia where the Registrant is based, and in circumstances where the Respondent did not seek permission from the Complainant, as the owner of the trademark, for such registration and use. The Panel Examiner comes to irresistible determination due to the facts that (i) the Disputed domain Name is identical to the Complainant’s “FISKARS” trademark; (ii) the Respondent’s name does not correspond to the Disputed Domain Name; (iii) the Respondent was aware of the Complainant and its trademark when it registered the Disputed Domain Name; (iv) Respondent’s registration of Disputed Domain Name might be for the purpose of selling, renting or otherwise transferring the domain name registration to competitor of that Complainant for valuable consideration in excess of documented out-of pocket costs directly related to the domain name or for the purpose of attracting Internet users to the Registrant’s domain name by creating a likelihood of confusion with the Complainant’s trademark; and v) there is no indication of any authorization to use the Complainant’s mark, it is lawful to infer that the Disputed Domain Name was registered and is being used in bad faith. Hence, the Examiner determines that URS 1.2.6.3 (a) and (d) covers the domain name at issue in this case and that the Respondent has no legitimate right or interest to the domain name. FINDING OF ABUSE or MATERIAL FALSEHOOD The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods. The Examiner finds as follows:
DETERMINATION
After reviewing the parties’ submissions, the Examiner determines that the Complainant
has demonstrated all three elements of the URS by a standard of clear and convincing
evidence; the Examiner hereby Orders the following domain name(s) be SUSPENDED for
the duration of the registration:
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Saravanan Dhandapani Examiner
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