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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Oy Eniro Finland Ab v. Domain Holdings Corp
Case No: D2002-0930
1. The Parties
The Complainant is Oy Eniro Finland Ab, Turku, Finland, represented by Sumentola Suominen & Itälä Attorneys at Law Ltd., Turku, Finland ("the Complainant").
The Respondent is Domain Holdings Corp, M. Thompson, Bangkok, Thailand, ("the Respondent").
2. The Domain Names and Registrars
The Domain Names at issue are <kaupunki-info.com>,<kaupunki-info.net>, <yritystele.com> and <yritystele.net > ("the Domain Names").
The Registrars are the following : DomainDiscover, San Diego, CA, USA, for <yritystele.com>, BulkRegister.com Inc., Baltimore, USA, for <yritystele.net> and <kaupunki-info.net> and eNom Inc., Redmond, USA, for <kaupunki-info.com> ("the Registrars").
3. Procedural History
The Complaint was filed with the World Intellectual Property Oganization, Arbitration and Mediation Center ("the Center") by hard copy on October 8, 2002, and by e-mail on October 15, 2002 ("the Complaint"). The Center acknowledged receipt of the Complaint on October 10, 2002.
On the same day the Center sent to the various Registrars requests for verification of registration data. On October 11, 2002, TierraNet dba Domain Discover indicated being the Registrar for <yritystele.com> and BulkRegister.com Inc. confirmed being the Registrar for the Domain Names <kaupunki-info.net> and <yritystele.net>. On October 12, 2002, eNom Inc. confirmed being the Registrar for <kaupunki-info.com>. For all Domain Names, the Registrars indicated Respondent’s address details as the registrant as well as the administrative, technical and billing contact.
The Panel notes at this point that the Respondent did not indicate any telephone or fax number under its contact details and that the address indicated at 2, Wireless Road in Bangkok, belongs to the Hilton Bangkok Hotel. Moreover, the two notifications which the Center sent to the Respondent by courier express did not reach their recipient and were returned back to the Center.
The Center verified that the Complaint satisfied the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules") and that payment was properly made. The Panel is satisfied that this is the case.
The Center received on November 7, 2002, via the Registrar BulkRegister.com a message signed by "Opasmedia" with the following wording :
"Our client requests 7 days to process the dispute, because the address is no longer valid and the e-mail has not reached the client. Therefore, the domains have been locked by the Registrars. We have been named as the representatives of the client and will respond within 7 days.
BulkRegister.com replied on the same day to Opasmedia with the following words :
This response needs to be directed to Domain Disputes. We are the Registrar and our role in any dispute is to carry out the requests and decisions by the arbitrator. In this case, WIPO. Yes, we have locked the Domain Name, however, this does not block the e-mail address. Locking only prohibits the Domain Name from being transferred. Thank you."
On October 16, 2002, the Complainant was notified in accordance with paragraph 2(a) of the Rules and the administrative proceedings commenced. Since no Response was received from the Respondent within the time limit set, the Center sent on November 7, 2002, a notification of default to the Respondent. On November 20, 2002, the Center notified the parties, that an administrative panel composed of a single member, Dr. Thomas Legler ("the Panel"), had been appointed and that the Sole Panelist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
No further submissions were received by the Center or the Panel.
4. Factual Background
A. The Complainant
The Complainant is Oy Eniro Finland Ab, a company that is active in the field of offline and online directories. Pursuant to the Complainant’s indications, its revenues in 2001, amounted to SEK 4,519 M and EBITDA to SEK 1,150 M. The Complainant alleges being the leading company for directories in Northern Europe, being operational in 19 countries and offering database services in another five countries. It indicates having about 4’500 employees.
The Complainant owns the domain names <yritystele.fi> and <kaupunki-info.fi>. The respective websites provide services in which Internet users can easily search information about Finnish companies and the public sector (phone numbers, addresses, information of services etc.) and where companies may place their advertisements regarding their goods and services. Complainant’s first product were the printed versions of these two websites i.e."yritystele" and "kaupunki-info". Both the printed and the Internet version are nationwide and are provided in Finnish. According to Complainant it was the first in Finland to provide this type of services. Pursuant to a survey conducted in February 2000, among Finnish businesses, a well-known polling organisation concluded that the Complainant’s business directory is the best known business directory in Finland among Finnish consumers and B to B-enterprises. Another survey conducted in April and May 2001, among Finnish Internet users led to the result that the Complainant’s business name <yritystele.fi> is amongst the one hundred most respected Internet brands in Finland.
The Complainant indicates that it is currently the holder of the trademarks Yritystele, Yritystele Plus and Kaupunki-Info which were registered respectively in 1991, 1999 and 1997 (see Complainant’s Annex 5).
The Complainant explains that since August 16, 1998, one of Oy Eniro Ab’s auxiliary business names has been Yritystele (Complainant’s Annex 6). Furthermore, the Complainant is also a partner in a general partnership called "Internetpalvelu Suomen Kaupunki-Info Ay" which produces services on the Internet.
Regarding the history of Complainant’s ownership of the trademarks, it indicates that the trademarks Yritystele Plus and Kaupunki-Info were owned by Oy Telemedia Finland Ab which has been merged with a company named Oy Telemedia Infomedia Ab. On September 22, 2000, Oy Telemedia Infomedia Ab has changed its business name into Oy Eniro Finland Ab, the present Complainant. Consequently, the Complainant has become the owner of these two trademarks by a merger, in which all the property of Oy Telemedia Infomedia Ab has been transferred to the Complainant. Oy Telemedia Finland Ab has subsequently been dissolved as a result of this merger (Complainant’s Annex 7, p. 6 and 7 as well as Annex 6, p. 3).
Apart from the address indicated as contact details by the various Registrars, and which seems to be incorrect, nothing is known about the Respondent. However, as proven by an e-mail received via the Registrar Bulkregister.com and transferred to the Center, the company "Opasmedia Oy" seems to play an important role with regard to the Domain Names. This coincides with Complainant’s indication that Opasmedia Oy is one of its competitors and originally registered the Domain Names <yritystele.net> and <kaupunki-info.net>.
5. Parties’ Contentions
The Complainant alleges that the Domain Names incorporate Complainant’s trademarks in their entirety and are thus identical to Complainant’s trademarks, to which it has rights.
The Complainant furthermore asserts that the Respondent has no rights or legitimate interests to the Domain Names or the trademarks "Yritystele" and "Kaupunki-Info". According to the Complainant’s best knowledge, the Respondent has no corresponding trademark registration for "Yritystele" or "Kaupunki-Info". Moreover, the Complainant has not authorized the Respondent to use the Domain Names. Also, the Respondent is not commonly known by one of the Domain Names, nor is it using the Domain Names in legitimate commercial, non commercial or any other fair use. According to the Complainant, the Respondent has not demonstrated that he uses or has an intent to use the Domain Names in connection with a bona fide offering of goods or services pursuant to the Policy. The Respondent has no contacts with Finland or Finnish business excluding the possible connection with "Suomen Yritysopas Oy" and "Opasmedia Oy". These two companies are competitors of the Complainant and operate in the same field of business. "Suomen Yritysopas Oy" was registered on June 22, 2000, and "Opasmedia Oy" on February 19, 2001. Complainant alleges without submitting any evidence that Opasmedia Oy registered the Domain Names <yritystele.net> and <kaupunki-info.net> whereas the Respondent registered the Domain Names <yritystele.com> and <kaupunki-info.com>. However, the name servers to both were NS1.opasmedia.com and NS2.opasmedia.com.
The Complainant sees Respondent’s bad faith in the fact that it used the Domain Names for redirecting Internet users to the sites of Suomen Yritysopas Oy and Opasmedia Oy.
According to the Complainant, <kaupunki-info.net> and <kaupunki-info.com> were at the outset redirected to the site "www.kaupunkiopas.com" which was maintained by Opasmedia Oy. Suomen Yritysopas was also mentioned in that site. <yritystele.net> and <yritystele.com> were redirected to the site "www.yritsopas.com" which was maintained by Suomen Yritysopas Oy. Later, the Domain Names disappeared from the address of the sites and became replaced by the right addresses of those sites. The Complainant asserts that the use of the Domain Names to redirect to a competitor’s website, where similar services are offered, shows bad faith and since the Domain Names are so obviously connected with Complainant, they were likely to confuse the user and make him believe that Complainant is the source or the sponsor of the services offered at those sites.
On February 2002, the Complainant became aware of the said misuse and contacted Opasmedia Oy and Suomen Yritysopas Oy in March 2002, demanding them to immediately stop using the Domain Names and to cancel their registration. The two competitors replied to have given up the ownership of the Domain Names <yritystele.net> and <kaupunki-info.net> in February 2002, and transferred them to the Respondent. They also indicated that they had demanded the Respondent to remove the links from the disputed Domain Names that used to redirect users to the sites of Opasmedia Oy and Suomen Yritysopas Oy. Indeed, according to the Complainant, Respondent removed the redirection to the sites owned by Opasmedia Oy and Suomen Yritysopas Oy but left the annotation "the service is temporarily closed". This took place in March 2002. In the sites <kaupunki-info.com> and <kaupunki-info.net> the Respondent further announced : "we recommend these sites for information about Finnish cities -kaupunki-info-" which is followed by the list of links leading into the homepages of different towns in Finland (Complainant’s Annex 8). In Complainant’s opinion, Respondent’s conduct leads the users to believe that Complainant’s services "Yritystele" and "Kaupunki-Info" are out of use and leads the users to another site that offers the same information and services than the sites "yritystele.fi" and "kaupunki-info.fi" maintained by Complainant.
The Complainant was just about to send its Complaint to WIPO when it found out that the Respondent had changed again the appearance of its sites <yritystele.com> and <yritystele.net> approximately in July 2002. A new announcement in Finnish indicates that "unfortunately the service cannot be opened, is not available at the moment" and adds "in case you are interested in enterprises, please try again later". This misleads the users to believe that Complainant’s websites are temporarily not in function and gives a very negative impression of Complainant’s services. At the same time Respondent has started to use only the Finnish language instead of English. Thus the sites are clearly directed to Finnish Internet users. Moreover, Respondent has also started to use a confusingly similar type of text font than the one used by Complainant on its own sites.
In Complainant’s view, the Respondent has been using for a long time and is still using the Domain Names primarily for the purpose of disrupting Complainant’s business. Moreover, by registering several Domain Names to which it has no legitimate rights and which are comprised of Complainant’s mark. The Respondent has also demonstrated a pattern of behavior calculated to prevent Complainant from obtaining domain names reflecting its marks. The Complainant also argues that it is possible that the Respondent is cooperating with someone else interested in disrupting Complainant’s business.
In the light of the foregoing, Complainant asks the Administrative Panel to issue a decision that the Domain Names be transferred to the Complainant.
B . Respondent
As indicated above, the Respondent failed to submit any Response. It has therefore not contested the allegations of the Complaint and the Panel shall decide on the basis of Complainant’s submissions, and all inferences that can reasonably be drawn therefrom (paragraph 14 (b) of the Rules).
6. Discussion and Findings
Paragraph 4 (a) of the Policy lists three elements that the Complainant must prove to merit a finding that the Domain Names of the Respondent be transferred to the Complainant :
(i) The Domain Names are 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 Names, and
(iii) The Domain Names have been registered and are being used in bad faith.
A. Identity or confusing similarity with a mark in which the Complainant has rights
Based on the evidence submitted by the Complainant and referred to hereinabove (paragraph 4), the Panel is convinced that the Complainant Oy Eniro Finland Ab, pursuant to the changes of its business name and the merger with Oy Telemedia Infomedia Ab, is currently the holder of the two trademarks "Yritystele" and "Kaupunki-Info".
Accordingly, the Complainant is currently the holder of the trademark "Yritystele Plus" registered on April 15, 1999, and referring to services in classes 9 and 42, in particular processing of directory entries and information in connection with numeric databases. The Complainant is also the holder of the trademark "Yritystele" registered on November 5, 1991, in classes 16 and 35, referring to directories and maintaining and supplementation of advertising catalogues. Moreover, the Complainant is the holder of the trademark (logo) "Kaupunki-Info" registered on June 30, 1997, for classes 16 and 35, in particular collecting and publishing of directories. This logo shows the word "Kaupunki-Info" followed by a design of a hand with two spread fingers typing on a keyboard.
Consequently, there is no doubt, that the Domain Names in question are identical to the trademarks Yritystele and Kaupunki-Info as registered by Complainant. Hence, the Complainant has proven the first element of the Policy.
B. Legitimate Rights or Interests in respect of the Domain Names
The second element which the Complainant is required to prove is that the Respondent has no right or legitimate interests in respect of the Domain Names. As pointed out before, the Respondent did not file a formal Response indicating any rights or a legitimate interest in respect of the Domain Names. Furthermore, there is no fact showing that the Respondent is known under the name "Yritystele" or "Kaupunki-Info". The webpages set up by Respondent under the Domain Names, which have been frequently changed in the past, do not give the impression of any serious bona fide offering of goods or services. They only show some links to other sites.
Consequently, the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the Domain Names.
C. Registration and Use in Bad Faith
For a Complainant to succeed, the Panel must be satisfied that the Domain Names have been registered and are being used in bad faith. Whereas the Respondent has not attempted to sell the Domain Names to the Complainant at any stage, other indications lead the Panel to the conclusion that Respondent has shown bad faith.
First of all, the Panel holds, based on the evidence that the Complainant’s trademarks are well-known in Finland and in many other countries. The words "Yritystele" and "Kaupunki-info" are so particularly Finnish that it is not conceivable that the Respondent would not have been aware of Complainant’s well known trademarks when it registered or acquired the Domain Names and also of the possible interest that the Complainant would have in the Domain Names. Therefore, Respondent must have realized that by registering or acquiring the Domain Names, it would create a likelihood of confusion with the Complainant’s trademarks as the public, in particular in Finland, may assume that the Domain Names are owned by an entity affiliated with the Complainant.
The Complainant alleges that behind the Respondent "Domain Holdings Corp." in Bangkok two of its competitors are hidden, i.e. "Suomen Yritysopas Oy" and "Opasmedia Oy". Unfortunately, Complainant does not submit any evidence in this respect. However, the Panel concludes from the aforementioned e-mail, addressed by the Registrar BulkRegister.com to the Center and dated November 7, 2002, that Complainant’s competitor Opasmedia Oy is indeed hiding behind the Respondent. The e-mail indicates that Opasmedia would have been named as "representative" of "the client". However, whatever may be the real nature of the association between the Respondent and Opasmedia Oy, it seems to be so close that the Respondent cannot be regarded as independent from Opasmedia Oy.
The Panel therefore draws the conclusion that the Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor in the sense of paragraph 4 (b) (iii) of the Policy.
Moreover, the Panel is of the opinion that the Respondent is holding the Domain Names with a view to preventing the Complainant from registering them and has indulged in a pattern of such behavior in the sense of paragraph 4 (b) (ii) of the Policy. The evidence of the pattern is to be found in the fact that the Respondent registered not only one but four domain names reflecting Complainant’s protected trademarks. Moreover, as the Panel has already hold hereinabove, the Respondent "Domain Holdings Corp." is very probably only a front for the original registrant. Indeed, all e-mails and also special courier service mailings in the present administrative procedure have been returned to the WIPO Center and the Panel also found that the address indicated by the Respondent to the Registrars is in fact the address of the Hilton Bangkok Hotel.
In the light of the above, the Panel finds that the Domain Names were registered and are being used in bad faith.
The Panel decides that the Complainant has proven each of the three elements of paragraph 4 (a) of the Policy.
Pursuant to paragraph 4 (i) of the Policy, the Panel requires that the registration of the Domain Names <kaupunki-info.com>, <kaupunki-info.net>, <yritystele.com> and <yritystele.net> be transferred to the Complainant.
Dr. Thomas Legler
Dated : December 4, 2002