The Complainant is Finlandia-Uistin Oy, Kalkkinen, Finland, represented by Heinonen & Co., Attorneys-at-Law Ltd., Finland.
The Respondent is Juha P. Raatikainen, Jericho, Vermont, United States of America, representing himself.
2. The Domain Name and Registrar
The disputed domain name <nilsmaster.com> is registered with Register.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2007. On April 17, 2007, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On April 17, 2007, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that 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 April 20, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2007. The Response was filed with the Center on May 8, 2007.
On May 16, 2007, the Complainant filed an unsolicited supplementary submission. The Respondent objected to its admission, save for one paragraph, in relation to which he submitted his own comments on May 22, 2007. The Panel has taken neither of these submissions into account for the reasons set out in section 6 below.
The Center appointed Alan L. Limbury as the sole panelist in this matter on May 24, 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.
The language of the proceeding is English.
4. Factual Background
The Complainant manufactures fishing tackle which it has marketed under the name NILS MASTER in approximately 20 countries, including the United States of America, since the 1960s. It registered the mark “FROM FINLAND NILS MASTER surrounding a stylized circular design [of a Viking helmet]”, in some cases with a disclaimer as to “from Finland”, in various countries including Finland (on August 5, 1993, No. 127378) and the United States of America (on July 11, 1989, No. 1547506).
The Respondent is the President of Nils Master USA, Inc. The disputed domain name was registered on February 9, 1998. At that time, the Respondent was the authorized United States of America distributor of the Complainant’s products. The distributorship terminated on October 23, 2006 on terms requiring the Respondent to cease using the NILS MASTER mark in its business except on NILS MASTER products and packaging.
5. Parties’ Contentions
A. Complainant
The Complainant contends the following:
The Complainant says the domain name is identical or confusingly similar to the distinctive part of its registered FROM FINLAND NILS MASTER trademark. Although that mark is a design and word combination, the Complainant also claims trademark rights in the words NILS MASTER alone arising from longstanding use and promotion and says the domain name is identical to that mark.
The Complainant says the Respondent has no rights or legitimate interests in the domain name and that Nils Master means “Nils the master” in Finnish, has no other meaning in any other language and is to be considered a name. Since the termination of the distributorship, the Respondent no longer has any licence to use the NILS MASTER trademark. Therefore he cannot have any right or legitimate interest in the domain name. He has no Finnish or European trade name, trademark, association or foundation name or any similar right to the trademark NILS MASTER. He registered his company Nils Master USA, Inc. without the Complainant’s consent and has not agreed to change the company name despite the Complainant’s demands. Because of the Complainant’s industrial property rights, it is not possible for a third party to obtain rights in the NILS MASTER name in Finland, all the other European Union-member countries, the United States of America, Canada, Australia and the Russian Federation without the Complainant’s consent.
The Complainant says the Respondent registered and is using the domain name in bad faith. There can be no doubt the Respondent knew the trademark belonged to the Complainant when he registered the domain name, since he was the Complainant’s distributor at the time. He registered both his company and the domain name without the consent of the Complainant. The Complainant has never consented to the registration of its trademarks, domain names or trade names by its authorized distributors.
The Complainant draws an analogy with the case of UVA Solar GmbH & Co K.G. v. Mads Kragh, Abell Group,
WIPO Case No. D2001-0373, saying that even if the Respondent were to be considered as having registered the domain name in good faith (despite no consent from the Complainant), the registration must be considered to have lost its bona fides since the Respondent has continued to hold the domain name even after the termination of the distributorship and refuses to transfer it to the Complainant.
In Solahart Industries Pty Ltd. v. Ciccarelli Luigi,
WIPO Case No. D2006-0051 registration of the domain name with knowledge of the Complainant’s trademark registration and without the Complainant’s consent was held to constitute bad faith registration. Complainant says it has never given the Respondent permission to register the disputed domain name and that the Respondent cannot deny this.
In a written agreement signed on October 23, 2006, the Respondent acknowledged the Complainant’s Finnish and United States trademark registrations and agreed to cease using the NILS MASTER mark in its business otherwise than when included in NILS MASTER products and their packaging. However, the Respondent has sought payment of 50,000 Euros, clearly more than his out-of-pocket costs, to transfer the domain name to the Complainant. Such conduct by a former distributor constitutes bad faith registration and use: All Packaging Machinery Supplies, Corp. v. Crystal Flex Packaging Corp.,
WIPO Case No. D2002-0383.
The website at “www.nilsmaster.com” is being used to sell fishing equipment other than NILS MASTER branded goods but the name Nils Master is still being used in a trademark sense without authorization from the Complainant despite the Respondent’s agreement to cease use of that trademark.
The Complainant submits that the only possible conclusion is that the Respondent registered and is using the domain name in bad faith.
B. Respondent
The Respondent contends the following:
The Respondent says he has marketed the Complainant’s products since 1994. The company Nils Master USA, Inc. was established in 1995 and is known by that name in connection with numerous products not connected with the Complainant.
The Respondent says that he registered the disputed domain name in good faith in 1998 with the full co-operation and authorization of the Complainant, which reimbursed him the domain name registration costs and annually reimbursed his expenditure on advertisements in which the domain name was highly visible.
Further, the Respondent says that since 1998 the Complainant has provided to the Respondent materials for uploading to that section of the Respondent’s website selling the Complainant’s products and that the Complainant was fully aware that other products were sold through the website. He says that since the establishment of the domain name in 1998 there has not been a single request from the Complainant to transfer the ownership until 2006.
When relations were severed by the Complainant in February 2006, the Respondent discontinued sections of the website relating directly to the Complainant but continued marketing items in stock to deplete inventory. The Complainant has made no offer to pay for thousands of dollars of out-of-pocket costs over 10 years in maintaining and promoting the domain name.
The Respondent denies that ‘Nils Master’ means ‘Nils the master’ in Finnish and says it should not be considered a name or a distinctive mark. He says his use of the domain name in connection with the bona fide offering of goods and services to the general public has been a legitimate and fair use for a good faith business purpose and has been necessary to sell the existing stock of nearly $50,000.00 worth of the Complainant’s products.
The Respondent contends that this claim is so clearly lacking in merit that it must have been brought in an attempt to harass him in his business and therefore constitutes reverse domain name hijacking.
6. Discussion and Findings
Paragraph 12 of the Rules states that the Panel may in its sole discretion request further statements or documents from either of the parties. Thus, no party has the right to insist upon the admissibility of additional evidence: SembCorp Industries Limited v. Hu Huan Xin,
WIPO Case No. D2001-1092. It is appropriate to consider the circumstances of each case before deciding whether to admit unsolicited additional submissions: Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd.,
WIPO Case No. D2000-0802.
This is not a case of discovery of evidence not reasonably available to the Complainant at the time of its initial submission, nor of arguments by the Respondent that the Complainant could not reasonably have anticipated: see Goldline International, Inc. v. Gold Line,
WIPO Case No. D2000-1151. Indeed the Complaint did anticipate the Respondent’s arguments and its supplementary submission seeks, for the most part, to reiterate points made in the Complaint. Accordingly the Panel does not admit the Complainant’s unsolicited submission. It follows that the Respondent’s reply is also rejected.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The top level domain “.com” is not to be taken into account when considering whether the domain name is identical or confusingly similar to the trademark: 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 is satisfied on the evidence that the Complainant has established rights in the trademark NILS MASTER through long use and promotion. The domain name is identical to that mark. Further, the Panel finds the domain name to be confusingly similar to the Complainant’s registered FROM FINLAND NILS MASTER figurative mark since the distinctive feature of that mark is the phrase NILS MASTER.
The Complainant has established this element.
B. Rights or Legitimate Interests
In support of his contention that the Complainant authorized him to register and use the domain name, the Respondent annexes a copy of an invoice from Nils Master USA, Inc. to the Complainant dated June 29, 1998 for advertising expenditure which includes an item of $100.00 for “Internet Reg”. This was an item amongst many invoices that were paid by the Complainant. He also produces copies of advertisements placed in the name of his company which included references to the “www.nilsmaster.com”, for which the company was reimbursed by the Complainant, and an email dated July 18, 2005, to the Respondent from the Complainant enquiring whether the website “www.nilsmaster.com” would be updated and suggesting linking that with the Complainant’s website “www.nilsmaster.fi”.
Having regard to the fact that the Complainant paid the Respondent’s company for the registration of the disputed domain name and to the period of approximately 8 years during which the Respondent was the Complainant’s distributor, with a corporate name which included the Complainant’s trademark, operating the “www.nilsmaster.com” and promoting that in advertisements for which the Complainant also paid, the Panel concludes that the Complainant did authorize the Respondent to register the domain name and acquiesced in and had no objection to the Respondent’s corporate name nor to his activities in relation to the domain name while the distributorship continued.
In the strikingly similar circumstances of UVA Solar GmbH & Co K.G. v. Mads Kragh,
WIPO Case No. D2001-0373, it was held that the respondent did have rights and legitimate interests in respect of the domain name in issue but only for the duration of his distributorship of the complainant’s products. That distributorship having come to an end, the Respondent no longer had any rights or legitimate interests in respect of the domain name and the complainant was found to have established this element. In similar vein, in Safiag Lepeltier Demarchi and Assurexia v. Salesrep,
WIPO Case No. D2007-0382, this panelist held that the relevant time for the assessment of whether a respondent has rights or legitimate interests in a domain name is the date of the Complaint, following Lonely Planet Publications Pty Ltd v. Mike Tyler,WIPO Case No. D2004-0670 and the cases there cited.
In this case, although the Respondent, in his capacity as President of the Complainant’s United States distributor, used the domain name for approximately 8 years prior to any notice of this dispute in connection with the bona fide offering of the Complainant’s goods, and during that time had rights and legitimate interests in the disputed domain name for the purposes of the Policy, upon the termination of the distributorship in October, 2006 on terms requiring the Respondent to cease using the NILS MASTER mark in its business except on NILS MASTER products and packaging, the position changed and the Respondent lost the rights and legitimate interest in the domain name that he previously had. At the relevant date, the date of the Complaint, he had none, not even by virtue of the corporate name Nils Master USA Inc., since the obligation to cease use of the NILS MASTER mark in his business necessarily required abandonment of that corporate name.
The Complainant has established this element.
C. Registered and Used in Bad Faith
The Complainant must establish both bad faith registration and bad faith use. It is clear from the Panel’s earlier findings that the domain name was registered in good faith, for the purpose of the authorized distributorship of the Complainant’s products.
In UVA Solar GmbH & Co K.G .v. Mads Kragh,
WIPO Case No. D2001-0373, the learned panelist posed the question:
“As to registration in good faith, can one registration originally made in good faith subsequently become one made in bad faith? Put another way, if authority to register the domain name was given subject to certain terms and conditions, does subsequent breach of such conditions negative what would otherwise have been a bona fide registration?”
He answered the question in the affirmative. See also, to like effect, Exel Oyj v.KH Trading, Inc,
WIPO Case No. D2004-0433.
Other distributorship cases have reached a different conclusion on this point: Green Tyre Company Plc. v. Shannon Group,
WIPO Case No. D2005-0877; Western Holdings, LLC v. JPC Enterprise, LLC d/b/a Cutting Edge Fitness and d/b/a Strivectin SD Sales & Distribution,WIPO Case No. D2004-0426 and International E-Z UP, Inc. v. PNH Enterprises, Inc., NAF Case No. FA0609000808341.
This Panel finds those cases more persuasive, on the basis that distributorship cases do not constitute a special category and that the reasoning in Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc.(SAMI),WIPO Case No. D2001-0782 is of general application:
“If a domain name was registered in good faith, it cannot, by changed circumstances, the passage of years, or intervening events, later be deemed to have been registered in bad faith”.
“While the wording of paragraph 4(b)(iv) of the Policy provides scope for arguing that subsequent bad faith use of a domain name can constitute bad faith registration and use for the purposes of the Policy even though the domain name was registered in good faith, panelists have consistently held that for a complaint to succeed under the Policy the respondent’s intentions at time of registration must have been mala fide. The Panel adopts the same approach.”
A separate factual question may arise in cases where for example what may appear at first instance to have been a bona fide arrangement involving registration of a domain name comes to an end in circumstances suggesting that an element of mala fides may in fact have been present at the initial point of registration. Under either approach, there is in any case no evidence here that the Respondent’s intentions at the time he registered the domain name were mala fide. Quite the reverse. The Complainant has failed to establish this element.
D. Reverse Domain Name Hijacking
Rule 1 defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. See alsoRule 15(e).
To prevail on such a claim, a respondent must show either that the complainant knew of the respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith: Sydney Opera House Trust v. Trilynx Pty. Ltd.,
WIPO Case No. D2000-1224 and Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151 or that the Complaint was brought in knowing disregard of the likelihood that the respondent possessed legitimate interests: Smart Design LLC v. Carolyn Hughes,
WIPO Case No. D2000-0993; or that the complainant knew it had no rights in the trademark or service mark upon which it relied and nevertheless brought the Complaint in bad faith: Dan Zuckerman v. Vincent Peeris,
WIPO Case No. DBIZ2002-00245; HER MAJESTY THE QUEEN, in right of her Government in New Zealand, as Trustee for the Citizens, Organisations and State of New Zealand, acting by and through the Honourable Jim Sutton, the Associate Minister of Foreign Affairs and Trade v. Virtual Countries, Inc., WIPO Case No. D2002-0754.
Here the Complainant knew the Respondent registered the domain name in good faith but had every reason to believe the Respondent had lost its former legitimate interest in the domain name and was using the domain name contrary to the terms on which the distributorship was terminated. Having regard to the decision in UVA Solar GmbH & Co K.G. v. Mads Kragh,
WIPO Case No. D2001-0373, on which the Complainant relied in submitting that good faith registration had become bad faith registration following the Respondent’s failure to comply with the termination requirements, this Panel considers the Complainant had reasonable grounds to believe in the merits of its case, even though, in the event, it has been unsuccessful. Accordingly the Panel is not prepared to make a finding of reverse domain name hijacking.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Alan L. Limbury
Sole Panelist
Dated: May 31, 2007
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