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Suomen Osuuskauppojen Keskuskunta v. Gammaart Nexus [2004] GENDND 1491 (16 November 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Suomen Osuuskauppojen Keskuskunta v. Gammaart Nexus

Case No. D2004-0561

1. The Parties

The Complainant is Suomen Osuuskauppojen Keskuskunta of Helsinki, Finland, represented by Berggren Oy Ab, of Helsinki, Finland.

The Respondent is Gammaart Nexus of Madrid, Spain.

2. The Domain Name and Registrar

The disputed domain name <sokoshotels.com> is registered with Fabulous.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2004. On July 29, 2004, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain name at issue. On August 2, 2004, Fabulous.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, billing, 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 August 24, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September 13, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 27, 2004.

The Center appointed Christophe Imhoos, Geert Glas and Mario A. Sol Muntañola as panelists in this matter on November 2, 2004. The Panel finds that it was properly constituted. Each member of 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.

It is to be mentioned that the notification of the Complaint to the Respondent and notification of its default did not reach the Respondent. The Panel is nevertheless satisfied that the Center has complied with its obligations under paragraph 2(a) of the Rules “to employ reasonably available means calculated to achieve actual notice to Respondent” (see Charles Schwab & Co, Inc. v. Polanski, WIPO Case No. D2001-0959).

4. Factual Background

The Complainant presents itself as one of the leading entrepreneurs in Finland in the field of hotel, café and restaurant services; its hotel chain, SOKOS HOTELS, is the biggest hotel chain in Finland, and its hotels are widely marketed all around the world in order to attract businesses, visitors and tourists travelling, visiting and staying in Finland and Estonia for business and pleasure. The hotel chain consists presently of 37 hotels in 26 cities all around Finland, and one in Tallinn, Estonia.

The Complainant is the owner of the Finnish trademark registration No. 206272 SOKOS HOTELS, registered on June 16, 1997, and the corresponding International trademark registration No. 732916 SOKOS HOTELS, with the following designated countries: Estonia, Latvia, Lithuania and Russian Federation. The trademarks are registered and used for “Hotel, café and restaurant services” in class 42.

The Complainant is also the owner of the Finnish trademark registrations No. 213298 SOKOS HOTEL PLAZA, registered on March 15, 1999, and No. 217275 SOKOS HOTEL NIGHT, registered on April 14, 2000, in class 42, registered and used for “Hotel, café and restaurant services.”

Further, the Complainant and its affiliate, Oy Sokos Ab, belonging to the same group, are the owners of a variety of other trademark registrations for the trademark SOKOS in Finland (reg. Nos. 220952 and 220953), Denmark (reg. No. 1973 VR00325), Estonia (reg. No. 27812), Latvia (reg. No. M41637) and Switzerland (reg. No. 264559), registered and used for a wide range of goods and services, including “Hotel, café and restaurant services” in class 42, except for Denmark, where registered in class 30 and in Switzerland, where registered in classes 24 and 25 (Annex 3 to the Complaint).

The Complainant is also the owner of the ccTLD domain name registration <sokoshotels.fi>, registered on February 5, 2002, and is visibly marketing and promoting its services on the said website (Annex 4 to the Complaint).

5. Parties’ Contentions

A. Complainant

The Complainant’s main submissions are as follows:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The domain name <sokoshotels.com> is identical to the SOKOS HOTELS trademarks mentioned above, registered and used by the Complainant, in which the Complainant has rights.

Further, the domain name <sokoshotels.com> includes the dominant and distinctive prefix “sokos,” which is identical to the SOKOS trademarks (listed above) registered and used by the Complainant and its affiliate, Oy Sokos Ab.

(ii) The Respondent has no rights or legitimate interests in respect of the domain name.

The Respondent is not in any way affiliated with the Complainant, and there has been no permission given to the Respondent for the use of the Complainant’s trademarks SOKOS HOTELS or SOKOS in any form.

The Respondent has not been able to show any evidence of having legitimate rights or interests in the disputed domain name; the Respondent has not even tried to claim having any legitimate rights or interests when contacted.

The Respondent is not using the domain name in connection with a bona fide offering of goods or services.

The Respondent is not commonly known by the name SOKOS HOTELS or SOKOS, neither does the Respondent own any trademark or service name rights in the terms.

The Respondent is not making legitimate non-commercial or fair use of the domain name, without the intent to misleadingly divert consumers for commercial gain or to tarnish the Complainant’s trademarks at issue.

The fact that the Respondent is offering bookings for SOKOS HOTEL rooms, (the hotels owned by the Complainant), for sale on his website, among bookings for a large variety of other hotels, does not provide the Respondent any rights or legitimate interests in using the domain name <sokoshotels.com> for his own benefit.

(iii) The domain name was registered and is being used in bad faith.

At the time the Respondent registered the domain name in dispute, the Complainant was already the owner of a variety of trademark registrations, as well as the company name which the said domain name is identical to. Likewise, at the time the Respondent registered the domain name, the Complainant was already a well-known entrepreneur in the field of hotels and restaurant services and their hotel chain was widely know by the name and trademark SOKOS HOTELS, especially to the entrepreneurs in the same field of business.

The prefix SOKOS in the Complainant’s trademark SOKOS HOTELS is highly distinctive and imaginative and the Respondent cannot credibly claim that it had just accidentally or by coincidence come up with a totally identical domain name registration to which the Complainant owns rights to and which has been registered as the Complainant’s trademark and company name over several years, especially as the Respondent is an entrepreneur in the same field of business as the Complainant and is, among other services and hotels, offering SOKOS HOTELS bookings on their websites.

Since the Respondent is an entrepreneur in the same field of business as the Complainant, it must have been especially well aware of the Complainant’s prior rights to the trademark and company name SOKOS HOTELS and the domain name in question. Further, the Respondent is offering “Hotel Booking Discount Services” on the related website, including and featuring services and hotels of the Complainant, as well as displaying the trademark SOKOS HOTELS, which clearly demonstrates that the Respondent is well aware of the existence of the Complainant, the Complainant’s prior rights and the Complainant’s trademarks (Annex 5 to the Complaint).

The Respondent was contacted several times by the Complainant and informed of the Complainant’s rights in the SOKOS HOTELS trademarks, the company name SOKOS HOTELS and the domain name at issue. The Respondent made no offer to give up the domain name, even though it was given the opportunity, on several occasions, to settle the matter amicably. The Complainant offered to compensate the appropriate and reasonable costs which the Respondent would incur for transferring the domain name to the Complainant, registering a new domain name and moving the website content to a new Internet location. The Respondent only showed interest when asked what amount of money it would be interested in to sell the domain name to the Complainant. While the Respondent was offered the amount of EUR 400,- it made it clear that it would not sell the domain name for that amount, but instead might be interested in selling it for a considerably higher sum of money and referred to the amount of USD$2.000.-. The contact letters were not sent by registered mail to the Respondent, since the mail address provided by the Respondent in the contact details clearly appears to be fake and defective (Annexes 6 and 7 to the Complaint).

The contact details given by the Respondent and recorded for the Respondent’s domain name registration in the Registrar’s Whois database clearly appear to be fake, at least inaccurate and defective, with the Registrant’s family name spelled in two different ways (Kudrov/Kurdov), the postal code totally missing and apparently a fake telephone number given (error message received when tried to call). This should clearly indicate that the Respondent did not act in good faith when registering the domain name. Had the Respondent been acting in good faith, it would have had no reason to hide and to give fake and defective details.

Based on the above facts, the Complainant considers that the Respondent has registered and is using the domain name in bad faith with an obvious intent to misleadingly divert Internet users to their commercial website offering, among other things, “Hotel Discount Booking Services” (offering hotel bookings for a large variety of different hotel chains, including the Complainant’s hotel chain) and, in so doing, the Respondent is intentionally attempting to attract, for financial gain, Internet users to its website by creating a likelihood of confusion with the Complainant and its trademarks as to the source, sponsorship, affiliation or endorsement of the website “www.sokoshotels.com” and the services offered on the said website. The Respondent is receiving financial gain for the reputation and good-will that is associated with the Complainant’s trademarks SOKOS HOTELS and SOKOS. The good-will for the said trademarks has been created and developed by the Complainant through investing in and promoting their quality hotel chain and the hotel, café and restaurant services offered by the chain.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Concerning the proceedings, in particular the notification of the Complaint to the Respondent, the Panel considers, from the reading of the documents available in the file, that the Center has discharged its responsibility, pursuant to Paragraph 2(a) of the Rules, in forwarding the Complaint to the Respondent in the manner prescribed therein.

As regards the merits, it is to be recalled that Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Administrative Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that:

(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) Respondent’s domain name has been registered and is being used in bad faith.

The Complainant must prove in the administrative proceeding that each of the aforesaid three elements is present so as to warrant relief, according to Paragraph 4(a) of the Policy.

The Administrative Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to Paragraph 15(a) of said Rules.

In accordance with Paragraph 5(e) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

A. Identical or Confusingly Similar

The domain name <sokoshotels.com> is identical to the SOKOS and SOKOS HOTELS trademarks.

The Complainant has established prior trade mark rights with various registrations for such a name, basically based on the Finnish national trade mark SOKOS HOTELS (plus graphic) in class 42 (hotels and restaurant services), used to identify services covered by this class offered worldwide by the Complainant (see Annex 3 to the Complaint).

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances to be proved based on the Panel’s evaluation of all evidence submitted, which if found by the Panel shall demonstrate rights to or legitimate interests in the domain name in dispute. Those circumstances are described as follows:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent has not invoked any of the circumstances which could demonstrate, pursuant to Paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the domain name in dispute. This entitles the Administrative Panel to draw any such inferences from such default as it considers appropriate pursuant to Paragraph 14(b) of the Rules (see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009, p.6 or Isabelle Adjani v. Second Orbit Communications, Inc., WIPO Case No. D2000-0867, p.6).

As already stated, the Complainant has established that its trademarks for SOKOS HOTELS have been known for a significant period of time (see Annex 3 to the Complaint).

As underlined in its Complaint and absent evidence to the contrary, the Complainant has not granted any license or otherwise permitted the Respondent to use such trademarks or to apply for any domain name incorporating the said trademarks; in addition, the Respondent has neither been known under the corresponding domain name <sokoshotels.com> nor affiliated in any manner with the Complainant.

Having examined the documents submitted by the Complainant (e.g. Annex 5 to the Complaint), especially those related to the Respondent’s web site where hits on the domain name in question were re-routed, it does not appear that the Respondent has any legitimate claim on the domain name. Nor did the Respondent bring forward any allegation to sustain such a claim when contacted by the Complainant (see Annexes 6 and 7 to the Complaint).

Under these circumstances, the Administrative Panel is unable to find any evidence that would tend to establish that the Respondent has rights or legitimate interests in respect of the domain name at stake.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following behaviors is sufficient to support a finding of bad faith:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.

As already mentioned, the Respondent has failed to invoke any circumstance which could demonstrate his good faith in the registration or use of the domain name at issue.

Nevertheless, the Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000-0944).

The Administrative Panel finds that there is evidence that the registration and use of the domain name has been done in bad faith.

Firstly, the fact that the Respondent’s activity is the booking of hotel rooms in various countries, amongst which Finland (i.e. the country in which Complainant’s main activities take place, and in which Complainant has registered several trademarks and the domain name <sokoshotels.fi>), makes it hard to believe that he did not know about the Complainant’s trademark. As a matter of fact, the Respondent’s offer includes hotels belonging to the Complainant’s chain, bearing its trade mark.

Secondly, the way in which the Respondent uses the domain name, i.e. by re-routing consumers to his own webpage of hotel bookings, points to the fact that the true purpose was to take advantage of the trade marks’ reputation in the relevant market, generating confusion amongst users of this type of service and, thus, intentionally attempting to attract, for commercial gain, Internet users to his website.

Thirdly, the fact that the Respondent apparently gave false contact data upon registering the domain name is further evidence that the Respondent registered the domain name in bad faith (see UDRP precedents referred to by the Complainant: Kelemata S.p.A. v. Mr. Bassarab Dungaciu, WIPO Case No. D2003-0849, Annex 8 to the Complaint; Chanel v. 1, WIPO Case No. D2003-0218; Action Instruments, Inc. v. Technology Associates, WIPO Case No. D2003-0024; Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775; Royal Bank of Scotland Group v. Stealth Commerce v. a.k.a. Telmex Management Services, Inc., WIPO Case No. D2002-0155; Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362; and Home Director, Inc. v. HomeDirector, WIPO Case No. D2000-0111).

Fourthly, the Respondent demonstrates his bad faith by his readiness to sell the domain name for a sum higher than USD$2000. (refusing Complainant’s offer to purchase the domain name for 400 EUR), thus offering the domain name for sale at a price well exceeding Respondent’s out-of-pocket costs directly related to the domain name. Several UDRP precedents have accepted bad faith of the Respondent where the Respondent - in answer to the Complainant’s request to purchase the domain name - offers to sell the domain name for a sum in excess of the out-of-pocket costs (see Merck KGaA v. Sunmeet Jolly, WIPO Case No. D2004-0195; Scania CV AB v. Hong, Hee Dong, WIPO Case No. D2004-0340; and The Royal Bank of Scotland Group plc and The Royal Bank of Scotland plc v. "Christopher Graham" or "John Graham" dba GRA Marketing CL, WIPO Case No. D2001-0626).

The Administrative Panel considers the above behavior as evidence both of bad faith registration and bad faith use of the domain name <sokoshotels.com>, within the meaning of Paragraphs 4(b)(i) and (iv) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <sokoshotels.com> be transferred to the Complainant.

Christophe Imhoos
Presiding Panelist

Geert Glas
Panelist

Mario A. Sol Muntañola
Panelist

Dated: November 16, 200