Westmore · UDRP DecisionSmartposti.com
The Panel ordered transfer of <smartposti.com> after finding it confusingly similar to the Complainant's SmartPOST trademark, that the Respondent lacked rights or legitimate interests, and that the domain had been registered and used in bad faith. The bad-faith finding relied on circumstances including the postal-services presentation, use of blue and yellow also used on the Complainant's website, closure of the website after contact from the Complainant, and a pre-Complaint suggestion that the domain could be sold to the Complainant.
The timeline behind smartposti.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind smartposti.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The case illustrates how a one-letter suffix added to an incorporated trademark may remain confusingly similar, particularly where the differing letter is visually minor. It also shows that bad faith may be established from the combined circumstances of website presentation, conduct after receiving notice, a sale suggestion, and the absence of any rebuttal, even where the Panel recognizes that the domain wording could theoretically have a legitimate use.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Posti Group Corporation v. Peter Centellini, Dominoff Oy Case No. D2015-1417 1. The Parties The Complainant is Posti Group Corporation, of Helsinki, Finland, represented by Heinonen & Co., Attorneys-at-Law Ltd., Finland. The Respondent is Peter Centellini, Dominoff Oy, of Imatra, Finland. 2. The Domain Name and Registrar The disputed domain name <smartposti.com> is registered with eNom (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 11, 2015. On August 12, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 12, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amendment to the Complaint on August 17, 2015. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 19, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 8, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 9, 2015. The Center appointed Tuukka Airaksinen as the sole panelist in this matter on September 16, 2015. 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. 4. Factual Background The Complainant is the proprietor of the Community Trade Mark registration No. 007242266 SmartPOST, Smart Post, Smart-post, registered on May 10, 2010 with priority from September 18, 2008. The disputed domain name was registered on March 25, 2014. The Complainant is the only major provider of postal services operating in all of Finland and has the universal postal service obligation on the basis of the Finnish Postal Act and is licensed by the Finnish Ministry of Transport and Communications. 5. Parties’ Contentions A. Complainant The disputed domain name differs from the Complainant's trademark by the addition of the last letter "i", which is not sufficient to exclude likelihood of confusion. It also incorporates the Complainant's trademark in its entirety. The Respondent has no rights or legitimate interests in the disputed domain name. There is no relationship between the Complainant and the Respondent that could give rise to any permission by which the Respondent could use the disputed domain name. The Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services nor making legitimate noncommercial or fair use of the disputed domain name. The Respondent has been aware of the Complainant's trademark when registering the disputed domain name. It has been used to mislead Russian-speaking customers in Finland by giving the impression that it is the Complainant's service. The website to which the disputed domain name resolves is imitating the impression of the Complainant's website. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element a complainant must establish is that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The disputed domain name consists of the words "smart" and "posti". The Complainant's trademark consists of three slightly different versions of the word combination "smart" and "post" and according to the Complainant's evidence, the form in which it is used is SmartPOST. The distinctive element in the Complainant's trademark is in the Panel's view the combination of the two words, "smart" and "post". This element is included in its entirety in the disputed domain name, which differs only by its last letter, “i”, from the Complainant's trademark. This different letter is also the last letter which can be viewed as being the least eye-catching element of the disputed domain name. Based on the above reasons, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark. B. Rights or Legitimate Interests. Paragraph 4(a)(ii) of the Policy requires that the Complainant establishes that the Respondent has no rights or legitimate interests in the disputed domain name. The consensus view among UDRP panels is that once a complainant has made a prima facie case indicating the absence of the respondent's rights or legitimate interests in a disputed domain name, the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 and paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). The Complainant has submitted that it is not affiliated with the Respondent, it has not authorized the Respondent to use the trademark or the disputed domain name, that the Respondent is not commonly known by the disputed domain name, and that the Respondent is not making legitimate noncommercial use of the disputed domain name and that it is not used for a bona fide offering of goods or services. The Respondent has not rebutted these arguments. The Panel finds that the Complainant has made out a prima facie case that has not been rebutted by the Respondent. Therefore, the Panel finds that the second element of the Policy is fulfilled. C. Registration and Use in Bad Faith The Complainant has contended that the Respondent was aware of the Complainant and its trademark. The Complainant submits that the Respondent closed their website after being contacted by the Complainant's representatives and that there is nothing to support that the Respondent would have come up with the name “SMART POSTI” on its own. The Complainant also contends that the Respondent creates the impression that the website would be linked with the Complainant targeting Russian speaking customers in Finland and elsewhere. The Panel notes that the website to which the disputed domain name resolves uses the colours blue and yellow, which are also used at the Complainant's website. Also, the website gives the impression that the services offered are postal services. The Panel also notes that the Respondent has also closed the website subsequent to the Complainant contacting the Respondent but before the Complaint was filed, and has not filed a response. The Respondent also suggested in the pre-Complaint correspondence that the disputed domain name could be sold to the Complainant. While there could be legitimate reasons for using the disputed domain name for postal services, the Respondent's actions and default suggest in the circumstances of this case that it was in fact targeting the Complainant's trademark. The Panel finds that disputed domain name was registered and is being used in bad faith. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, “<smarposti.com>” be transferred to the Complainant. Tuukka Airaksinen Sole Panelist Date: October 19, 2015
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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