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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Helsingin yliopiston ylioppilaskunta and HYY Group Ltd v. Paul Jones
Case No. D2002-1164
1. The Parties
The Complainants are Helsingin yliopiston ylioppilaskunta (The Student Union of the University of Helsinki) (hereinafter HYY) and HYY Group Ltd, both of Helsinki, Finland (hereinafter jointly referred to as the Complainant); represented by Fennica Attorneys-at-law Ltd. of Finland.
The Respondent is Paul Jones, an individual resident, 154387 Moscow, the Russian Federation (hereinafter the Respondent).
2. The Domain Name and Registrar
The disputed domain name <hyy.info> is registered with 1 eNameCo.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 23, 2002. On December 24, 2002, the Center transmitted by email to 1 eNameCo a request for registrar verification in connection with the domain name at issue. On January 9, 2003, 1 eNameCo 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 January 13, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2003. The Response was filed with the Center on February 1, 2003.
The Center appointed Mr. Peter G. Nitter as the sole panelist in this matter on February 7, 2003. 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.
On February 7, 2003, the Complainant made a supplemental filing, which the Panel received in full February 13, 2003.
4. Factual Background
4.1 Complainant’s Identity and Activities
HYY is a public entity founded in 1968, having its domicile and principal place of administration in Helsinki, Finland. HYY has over 30.000 members which are students at the University of Helsinki.
HYY is a service organization, rendering several types of services to it’s members as well as to the University of Helsinki. HYY is the sole owner of HYY Group Ltd., see below.
b) HYY Group Ltd
HYY Group Ltd is the HYY Group’s Finnish parent company being incorporated and existing under the laws of Finland, and having domicile and principal place of business in Helsinki, Finland. The net sales of HYY Group in 2001 were 232,9 million euros. The average number of employees in the HYY Group in 2001 exceeds 800. HYY Group Ltd. is active in real estate, travel, restaurant and other business.
Neither HYY or HYY Group Ltd. have registered trademark or service marks to "HYY" or "HYYINFO".
On December 23, 2002, HYY Group Ltd. filed for registration of the HYY and the HYYINFO trademarks for goods and services in the classes 35, 36, 41, 43 in Finland.
HYY Group Ltd. holds the rights to the registered trade name HYY Group Ltd.
HYY Group Ltd. has registered and uses as one of its information channels a website under the domain name <hyy.fi>. The site is used jointly by HYY and HYY Group Ltd.
4.2 Respondent’s Identity and Activities
The Respondent is Paul Jones, an individual resident at the address Street 1:31 Y, Andropov Ave, 154387 Moscow. Paul Jones is the registrant of the domain name <hyy.info>.
The Respondent operates a website at <hyy.info>. The site contains information about the Complainant, among other matters newspaper articles about the Complainant. On top of the front page of the Respondent’s site there are two hyperlinks to the Complainant’s sites at <hyy.fi>.
5. Parties’ Contentions
The factual and legal contentions made by the Complainant are as follows:
Each of the three elements in paragraph 4(a) of the Uniform Policy are applicable to this dispute.
Identical or Confusingly similar
The domain name <hyy.info> is identical or confusingly similar to the service mark of HYY in which the Complainants have rights.
HYY has been using HYY as a service mark for its different services for over a century. These services include, but is not limited to: Student housing, student restaurants, free legal advise, youth and student travel agency, the student card and commercial real estate services. The service mark has been used constantly in connection with services recognized throughout Finland to be the best option for college and university students. HYY is by the number of members and by assets the largest student union in Finland.
HYY’s name has become unique and its services are identified by the students solely by the use of HYY. HYY as a service mark is unquestionably very well known by literally all Finnish college and university students, international students and the staff of the universities. HYY is also well known as a service mark in the Finnish business community. Establishment is unarguably acquired by the unique, long term history of using the trade symbol in question in relation to professional activities. The service mark HYY is distinctive for HYY’s and HYY Group’s goods and services. Thus the service mark HYY is established, and protected as such.
It is a fact that HYY is an essential part of the companies names / trade names, and that according to Finnish practice, trade names enjoy protection, the scope of which is close to protection of trademarks.
The Complainant has filed for the registration of the HYY trademark and the HYYINFO trademark, and a comprehensive preliminary examination of the registrations of the trademarks has been carried out by the Finnish National Board of patents and Registration. The results of these examinations were that there are no known obstacles for the registrations of the trademarks.
The HYY trademark is filed for in order to avoid any doubt, and to affirm and clarify the legal status of the established service mark HYY. The HYYINFO trademark is designated to amplify the concept of information service of the Complainant.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in respect of the domain name at issue.
The Respondent is an individual person, and nothing indicates that he would have any rights or legitimate interests in the domain name in dispute.
The Respondent is not making any legitimate and fair use of the domain name.
The Respondent does not have any trade name or registered or established trademark, which includes the abbreviation HYY.
There is nothing to indicate that the Respondent is using or planning to use the domain name in connection with any bona fide offering of goods and services.
Registered and Used in Bad Faith
The Respondent has registered and is using the domain name in bad faith.
The domain name <hyy.info> misleads students and other customers of the Complainant to seek information about the Complainant from the sites of <hyy.info> which is not maintained by the Complainant. The information on the sites is solely information on the Complainant, its directors, officers and advisors and its affiliated companies. The target group of the information provided on the Respondent’s pages on <hyy.info> is those who needs information about the Complainant. The content of the Respondent’s pages clearly indicates the Respondent’s awareness of the service mark and trade name of HYY by the time of registration of <hyy.info>. The domain name is bound to confuse the customers of the Complainant. The intent and aim of the Respondent is to maintain confusing pages.
It can be concluded that by using the domain name <hyy.info>, the Respondent seems to have intentionally attempted to attract Internet users to his web site by creating a likelihood of confusion with the Complainants mark as to the source, sponsorship and affiliation of the Respondent’s website.
The actions of the Respondent must be regarded primarily of bad faith, and being as such used to disrupt and disturb the marketing and provision of the services of the Complainant.
The factual and legal contentions made by the Respondent are as follows:
Identical or Confusingly Similar
No trademark or service mark identical or confusingly similar to the domain name <hyy.info> exists in Finland. The Complainant has not registered or used any trademarks or service marks consisting of the letters HYY or HYYINFO.
The fact that the Complainant has filed two applications to the Finnish registration authorities for the trademarks HYY and HYYINFO on the same day it filed the complaint with the WIPO should be neglected, because the applications have no judicial value as evidence.
Furthermore, the Complainant is likely to face difficulties in obtaining trademark rights for the letters HYY, because the National Board of Patents and Registration of Finland has registered many trademarks including the letters HYY for associations fully independent from the Complainant.
The letters HYY is an established abbreviation of the Student Union of the University of Helsinki, which is a public corporation producing public services and which uses public authority. HYY’s purpose as defined in paragraph 3 of the rules of the Student Union of the University of Helsinki is as follows: "The Student Union acts as a liaison for its members and promotes their societal, social and intellectual aims, as well as their goals for their studies and the position of students in society." More than 30.000 students own the HYY, and uses the supreme authority of decision of the HYY through the students representative council. This council also specifies the strategic objectives and operating principles of HYY Group Ltd.
The Complainant does not sell any products or services with the name HYY or HYYINFO. Judicially independent limited companies, foundations or associations produce all the services mentioned by the Complainant. None of them has a combination of letters HYY or HYYINFO in their names, ref. The Complainants annual report. The fact that the above mentioned limited companies happen to be Complainant’s subsidiaries does not mean that any goods or services would either now or in the future be produced with the name HYY.
The HYY Group Ltd. serves as an administrative parent company, which itself has never produced any products or services for students or other consumers. The Complainant describes the company’s business as follows in its annual report: "HYY Group Ltd. owns and manages the companies in its corporate group in accordance with the objectives laid down by its owner, the Student Union of the University of Helsinki. The company’s aim is to organize the operational and corporate structure of the HYY Group and attend to its strategic management, attend to the financing of the HYY Group, produce internal services for the HYY Group and its owner, examine and develop new business, implement centralized changes and engage in long-term investment activities. HYY Group Ltd does not seek to achieve distributable earnings of its own."
The Complainant has never used the name HYYINFO in any connection. The Complainant has only started to present demands in regard to the name HYYINFO after the Complainant has become aware of the existence of the site hyy.info.
Rights or Legitimate Interests
The Respondent has a right and a legitimate interest in respect of the domain name.
When the Respondent registered the domain <hyy.info> on the October 6, 2001, he was – and still is – the executive director of HYY Reviewers. The HYY Reviewers is a nongovernmental, nonprofit Finnish association, which was founded in 1994. It is an association which defends the values of truth and fairness. The Respondent gave the domain immediately into the use of this association. The primary purpose of the Respondent when registering the domain was to leave it for the use of HYY Reviewers, which name includes the letters HYY.
The Complainant deliberately presents false claims that nothing would prove the Respondent’s rights to the abbreviation HYY. The Complainant is surely aware the activity and existence of HYY Reviewers, otherwise the Complainant could simply acquire additional information about the association from the Respondent just by sending an e-mail to the address published on the Respondent’s site.
Thus, the Respondent has a right and a legal interest to register the domain <hyy.info>.
Registered and Used in Bad Faith
The Respondent has not registered or used the domain name in bad faith.
The Respondent’s purpose is not to sell, rent or in any other way transfer the domain <hyy.info> to the Complainant, but to use it in connection with HYY Reviewers.
The Respondent does not have any trading activities on the site <hyy.info>. The site’s purpose is to defend the freedom of speech by publishing information about the socially significant matters and their backgrounds, including HYY.
The Respondent has not disturbed or confused Complainant’s business. The front page of the Registrant’s site carries two easily findable hyperlinks to the Complainant’s sites. Through the hyperlinks pointing to the Complainant’s home pages, the Respondent has promoted these home pages.
Reverse domain name hijacking
The Respondent asks the Panel to make a finding of reverse domain name hijacking according to paragraph 15(e) of the Rules.
The factual and legal contentions made by the Respondent regarding this matter are as follows:
The main purpose of the Complainant’s actions is harassment of the Respondent and to hijack the domain name. The Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
This is supported by the fact that the Complainant has not presented any claims for or taken any action to transfer the following gTLDs based on the abbreviation HYY:
The Complainant has distinctly failed to show that:
- The Respondent has registered the Complainant’s trademark or service mark
- The Respondent has no right or legal interest in the domain name
- The Respondent has registered and used the domain in bad faith
Further it seems as though the Respondent is of the opinion that the Complaint was filed for other reasons than the above mentioned, namely that the Respondent has published documents on five legal proceedings between Mr. Jari Kajas and the Complainant on his sites.
6. Discussion and Findings
The first question to be dealt with is whether or not the further submission filed after the initial Complaint and Response can be allowed if such submission is not made on the request of the Center or the Panel. The Rules do not provide for the possibility of filing further submissions with the exception of art. 12 where it is said that the Panel may, in its sole discretion, request further statements or documents from the Parties. In the present case, the facts presented to the Panel do not seem to justify a further submission. Thus, the further submission in this case will not be taken into account.
The Panel will also state that the content in the additional submission from the Complainant would not affect the decision even if it were taken into account.
Rules and principles of law
According to Paragraph 15(a) of the Rules, the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that 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
2) that the Respondent has no legitimate interests in respects of the domain name; and
3) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant lacks a trademark registration for the marks HYY and HYYINFO. The Complainant has not produced evidence of any such registrations in the name of anybody else whom they represent.
The Panel observes that the Complainant has filed trademark applications regarding the trademarks HYY and HYYINFO in Finland. These applications do not in themselves constitute a right.
The Complainant emphasises that HYY is registered as a part of the registered trade name HYY Group Ltd, which owns the rights to it. Further the Complainant refers to Finnish practice where trade names enjoy protection, the scope of which is close to the protection of trademarks.
Without registration the Complainant must, according to the Finnish trademark act, prove that the HYY or HYYINFO has been established as a trademark or service mark through extensive use as such. The Finnish trademark act (Section 2, subsection 1 and 3) states that:
"The exclusive right to a trademark may also be acquired without registration when the trademark is established by use.
A trademark is considered to be established by use when it is well known within the circle of trade concerned in this country as a distinctive sign for someone’s goods."
The question is whether HYY has been established as a service mark through use.
The primary function of a trademark or service mark is to identify the proprietor as the source of the goods or services to which the mark has been applied and, in so doing, to distinguish the proprietor’s goods or services from the goods or services of other traders.
In order to obtain rights to an unregistered trademark or service mark, evidence has to be presented.
It is evident to the Panel that the abbreviation HYY identifies:
- The Student Union of the University of Helsinki
- The HYY Group Ltd.
The abbreviation HYY seems to be well known in parts of the Finnish society, namely among students, university staff and members of the business community, identifying both the Student Union and HYY Group Ltd (ref. annex 1 to the Complaint).
The Complainant has documented that HYY Group Ltd. is the parent company for the following companies which are categorised under four divisions:
Real Estate division: HYY Real Estate and Kaivopiha Ltd.
Travel Group: KILROY travels International A/S and its subsidiaries
Restaurants: Oy UniCafe Ab, and Oy Vanha Ylioppilastalo Ab
Other Companies: University Press Finland Ltd, Oy Academica Hotels Ltd. And Oy UniCard Ab.
One of the companies, HYY Real Estate, also have a company name containing HYY. The Complainant has produced evidence ref. Annex 1 and the content at <hyy.fi> that HYY is used as a service mark also for HYY Real Estate’s or services.
For some of the other companies in the HYY Group Ltd., it is evident that other names than HYY are used to identify products and services offered by the HYY Group Ltd., e.g. the student card "UniCard" provided by UniCard Ab. This will, however, not change the fact that the abbreviation HYY is well known as to identify Complainants services.
Complainant has produced documentation that HYY is used as a service mark for a number of services ref. annex 1 to the Complaint and the content on <hyy.fi>. The services include: Student housing, restaurants, legal advise, commercial real estate services, youth and student agency and provision of student cards.
The Panel finds that it is proved that HYY is established as a service mark through use.
The Panel therefore accepts that the Complainant has rights in the (unregistered) word mark HYY and that the domain name <hyy.info> of the Respondent is identical to such service mark.
B. Rights or Legitimate Interests
The abbreviation HYY is a mark in which the Complainant has protected rights in Finland. There is no doubt that the Complainant has not authorized the Respondent to use the mark HYY. Even if the Complainant uses HYY for a restricted number of services, it is in view of the high degree of recognition of the abbreviation HYY as identifier of the Complainant, difficult to imagine any use of that term which would not be automatically associated, in the mind of large parts of the Finnish society, with the Complainant. Therefore an assumption speaks in the Complainant’s favour that the Respondent infringes Complainant’s rights by using a domain name identical to the Complainant’s protected mark. It must be considered whether the Respondent has put forward arguments and evidence that proves his rights or legitimate interests in the domain name <hyy.info>.
The Respondent personally registered the domain name on October 6, 2001. He claims that he immediately left it for the use of the association HYY Reviewers. One could therefore ask why the domain name was not registered by the association as such.
It seems as though the Respondent at present is using the domain name in connection with a free offering of services, namely information services regarding the Complainant. The Panel accepts that it is in principle legitimate to operate a domain name for this purpose. The Panel further finds that the Respondent makes use of the domain name without intent for commercial gain to misleadingly divert consumers.
The panel does not however, believe that the right to use the domain name as mentioned extends to occupying someone else’s service mark. Anyone wishing to contact a service mark owner, has the right to contact the owner by addressing himself to the owner’s exact identifier, followed by the top level suffix, in this case .info, and to thereby reach the service mark owner, and not a third party, who itself does not have rights in that mark.
It must have been evident to the Respondent on the time of registration of the domain name that users of the Internet could be misled by the domain name <hyy.info>. Based on the Panel’s findings under section A above regarding HYY as a well known identifier to Complainant and its services, and by reason of the content on Respondent’s sites, it must have been evident to the Respondent that HYY is a service mark in which the Complainant has rights. Further it is fully possible for the Respondent to operate his information services without using <hyy.info> as his domain name.
The Respondent’s interest in the domain name can therefore not be deemed as legitimate or fair. Further the Respondent’s offering of information services can neither be deemed to be a bona fide offering.
The Panel therefore finds, based on its evaluation of all evidence presented, that it is proved that the Respondent has no rights or legitimate interests in respect of the domain name.
C Registered and Used in Bad Faith
Paragraph 4(b) of the Policy contains an illustrative list of circumstances which, when present in a particular case, shall constitute evidence of "the registration and use of a domain name in bad faith". After careful examination of the evidence submitted by both parties in the present case, the Panel has found that:
- It is not proved that the Respondent has registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant
- It is not proved that the Respondent has engaged in a pattern of registrations of domain names to prevent owners of trademarks or service marks to reflect the mark in a corresponding domain name
- It is not proved that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor
- It is not proved that the Respondent, by using the domain name, has intentionally attempted to attract for commercial gain, Internet users to his web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on his web site.
The Complainant and the Respondent are not competitors in business. The Panel does, however, find that the information services offered by the Respondent are closely connected to the Complainant. The information on the sites of the domain name <hyy.info> is about the Complainant, and the Complainant is also characterised in critical terms. Even if the Respondent did not primarily register the domain name for the purpose of disrupting the Complainants business, the registration will however involve a certain disruption.
Regarding the creation of a likelihood of confusion, the Panel finds that the Respondent has made it clear that his sites does not have any connection with the Complainant when the disclaimer on top of the sites states that:
"On these sites you will find those matters, which you won’t find from the home sites of the Student Union of the University of Helsinki, (HYY) or the HYY Group owned by it".
The lack of connection is also made clear by the direct hyperlinks in this text which leads directly to the Complainants web sites. This, however, is only relevant when a Internet user already is on the Respondent’s site.
The Panel does not find that the listed circumstances directly describes the situation in this case. It must, however, be recalled that the circumstances identified in paragraph 4(b) are without limitation – that is, paragraph 4(b) expressly recognises that other circumstances can be evidence that a domain name was registered and is being used in bad faith.
The Panel finds that HYY must have been well known to the Respondent as a service mark in which the Complainant has rights, at the time of registration and for the subsequent period, ref. section A above. The Respondent must therefore have anticipated that by registering the domain name <hyy.info> he would be violating Complainant’s rights. These findings, together with the finding under section B above, that the Respondent has no rights or and legitimate interests in the domain name, leads the Panel to conclude that the domain name <hyy.info> has been registered and is being used in bad faith.
The Panel concludes that the Complainant has proved that the Respondent has registered and used the domain name in bad faith.
Reverse domain name hijacking
The Respondent claims that the main purpose of the Complainant’s actions is harassment of the Respondent and to hijack the domain name, and that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
The Panel finds that the Complainant has met the requirements of Paragraph 4(a) of the Policy.
The Panel does not find that the Complainant brought the Complaint in bad faith.
The Panel, accordingly, decides that the Complainant has proven each of the three elements of paragraph 4a of the Policy, and requires that the registration of the domain name <hyy.info> be transferred to the Complainant.
Peter G. Nitter
Dated: February 21, 2003