WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
YIT Corporation v. Introite
Case No. D2007-0692
1. The Parties
The Complainant is YIT Corporation of Helsinki, Finland, represented by Heinonen & Co., Attorneys-at-Law Ltd., Finland.
The Respondent is Introite of Stockholm, Sweden.
2. The Domain Names and Registrar
The disputed domain names and are registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2007. On May 9, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On May 11, 2007, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for both domain names and providing the contact details. 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 21, 2007. In accordance with paragraph 5(a) of the Rules, the due date for Response was June 10, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 12, 2007.
The Center appointed Brigitte Joppich as the sole panelist in this matter on June 19, 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant in this administrative proceeding is YIT Corporation, a public company limited by shares, incorporated under the laws of Finland. Its business was first established in 1912 and focuses today on construction and building system services as well as industrial and data network services. The Complainant is active in the Scandinavian and Baltic countries (including Sweden, where the Respondent has its place of business) as well as Russia and employs approximately 21,300 people in eight countries. Its revenue amounted to EUR 3,284.4 million in 2006.
The Complainant owns a Finnish wordmark YIT with a priority of 1977 as well as various other YIT marks in the Scandinavian countries, Russia and the European Union (the “YIT Marks”).
The disputed domain name was first registered on November 7, 2001, the disputed domain name on September 21, 2001.
5. Parties’ Contentions
A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are given in the present case:
(i) The domain names are identical with the YIT Marks.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names for several reasons: The Respondent has no registered trademarks or trade names containing the word YIT, as the results of an international Google search for YIT all refer to the Complainant, while the results of the corresponding search for “Introite” do not refer to YIT; the Respondent is not known by the domain names; the domain names are not being actively used; there are no third parties’ rights in the word YIT; and the Complainant has not licensed or otherwise permitted the Respondent to use its company name and trademarks, which are the Complainant’s exclusive property.
(iii) The domain names were registered and are used in bad faith by the Respondent primarily for the purpose of selling, renting, or otherwise transferring them to the Complainant or to a competitor of the Complainant, but also in order to prevent the Complainant from reflecting the YIT Marks in corresponding domain names. When “.biz” and “.info” gTLDs were launched in 2001, the Respondent registered the trade names of many Finnish publicly listed companies as “.biz” and “.info” domain names, thereby revealing a pattern of conduct of bad faith. As a consequence, the Respondent lost several domain name disputes and the domain names at stake were transferred to the respective complainant. Moreover, the Respondent operates in Finland and therefore knows the trade names and trademarks of Finnish companies. The Complainant contends that the passive holding of a domain name can constitute use in bad faith, especially when the domain name is held with the purpose of earning money.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements are present:
(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
The disputed domain names each fully incorporate the YIT Marks.
Furthermore, it is well established that the specific top level domain name is not an element of distinctiveness that can be taken into consideration when evaluating the identity or similarity of the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).
The domain names are therefore identical to a trademark in which the Complainant has rights and the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate its rights to or legitimate interests in the domain names for purposes of satisfying paragraph 4(a)(ii) of the Policy, i.e.,:
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Respondent did not file a response in this proceeding. Therefore, the Complainant’s assertions that the Respondent lacks rights and legitimate interests stand unrefuted. Based on the evidence before the Panel, the Respondent apparently did not make any bona fide offering of goods or services in connection with the domain names and is neither commonly known by the domain names nor contends to make a legitimate non-commercial or fair use of the domain names. Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests under paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain names in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.,:
(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.
The two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered in bad faith and is being used in bad faith.
The Complainant is a publicly listed company whose stock is quoted on the Nordic List at the Helsinki Stock Exchange. The Complainant is well-known in all Scandinavian countries and has been doing business there since 1912. While the Respondent is located in Sweden, it provided its registrar with Finnish contact details. With a view to the high level of distinctiveness of the YIT Marks, it is inconceivable under these circumstances that the Respondent registered the disputed domain names without knowledge of the Complainant’s rights therein. The Panel is therefore satisfied that the Respondent registered the disputed domain names with knowledge of the Complainant’s marks and thus in bad faith under paragraph 4(a)(iii) of the Policy.
As the domain names are not actively used by the Respondent, the Panel has to decide whether such passive holding is to be considered as use in bad faith under the Policy. The absence of an active use of a domain name does prevent a finding of bad faith. The Panel must examine all circumstances of a case to determine whether a respondent is acting in bad faith. Examples of circumstances that may indicate bad faith use include the existence of a well-known trademark, the lack of a response to the complaint, concealment of identity and the impossibility of conceiving good faith use of a domain name (cf. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574; Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131).
In the present case, the Respondent did not reply to the Complaint and has therefore not provided any argument supporting an actual or contemplated good faith use of the disputed domain names. Furthermore, the disputed second level domain names fully incorporate the Complainant’s highly distinctive YIT Marks. The Respondent appears to have registered a multitude of “.info” and “.biz” domain names reflecting at their second level trade names and trademarks of publicly listed Finnish corporations. The facts of this case do not support any plausible actual or contemplated active use of the disputed domain names by the Respondent that would not infringe the Complainant’s trademark rights. The Panel is therefore convinced that, even though the domain names are not being actively used at the moment, the Respondent’s passive holding of the domain names meets the bad faith use requirement.
As a result, the Complainant has also satisfied the requirements of paragraph 4(a)(iii) 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 names and be transferred to the Complainant.
Brigitte Joppich
Sole Panelist
Dated: July 3, 2007
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