WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Huoneistokeskus Oy v. Osmo Anttalainen Case No. D2008-1473 1. The Parties
The Complainant is Huoneistokeskus Oy, Helsinki, Finland, represented by Borenius & Kemppinen Ltd., Finland.
The Respondent is Osmo Anttalainen, Espoo, Finland. 2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2008. On September 30, 2008, the Center transmitted by email to OnlineNic, Inc. d/b/a China-C a request for registrar verification in connection with the disputed domain name. On October 6, 2008, OnlineNic, Inc. d/b/a China-C transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details / disclosing registrant and contact information for the disputed domain name. 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 October 9, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 29, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 30, 2008.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on November 5, 2008. 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 has submitted evidence that it is the owner of the following trademark registrations:
HUONEISTOKESKUS, class 16, 36 and 41 with Finnish trademark registration number 221284, filed April 19, 2000 and registered August 15, 2001.
Figure mark including the word HUONEISTOKESKUS, class 16, 35, 36 and 41 with Finnish registration number 220450, filed April 25, 2000 and registered March 15, 2001.
The disputed domain name was registered by the Respondent on May 26, 2005. 5. Parties' Contentions A. Complainant
The Complainant is a Finnish limited liability company and has provided real estate services since 1953. The Complainant has approximately 600 employees in more than 70 offices throughout Finland. The Complainant is the owner of two registered trademarks in Finland. Furthermore, the trademarks should be regarded as well-known in Finland as the Complainant is the leading real estate agency in Finland.
The Complainant has been unaware of the disputed domain name until recently.
The disputed domain name is identical to the complainant's trademarks as it incorporates the word HUONEISTOKESKUS in its entirety. On the website to which the disputed domain name resolves, the Respondent has distorted the Complainant's trademarks by using the same logotype but spelling the mark wrongly as “huonoisokeskus”. In Finnish, the word “huono” means “bad” or “poor” in quality and thus the Respondent is warping the meaning of the trademark inappropriately. Furthermore, the Respondent is making direct references to the Complainant which indicates that the Respondent is clearly aware of the Complainant's prior rights.
The Respondent has no connection or affiliation with the Complainant or its business and he has not been granted any license or consent, expressed, or implied, to use the trademarks in a domain name or any other manner. The Respondent has not acquired any rights in the disputed domain name.
The content of the website shows that the disputed domain name was registered and used in order to cause harm to the Complainant's business. The disputed domain name is not used for a bona fide offering of goods or services but only to cause harm to the Complainant's business and management. The Respondent is deliberately using the disputed domain name in a way that creates a likelihood of confusion concerning the source of the website. The Complainant's customers may accidently choose the Respondent's website instead of the Complainant's website . Furthermore, the Respondent's website contains a direct hyperlink to the Complainant's website. The Respondent has no rights to or legitimate interest in the disputed domain name.
The Respondent's website, to which the disputed domain name resolves, is created to cause harm to the Complainant's business, goodwill and to distort the Complainant's trademarks. Although the Respondent is not a competitor and thus not falling under paragraph 4(b)(iii), the behavior intended to cause direct harm to the Complainant's business should be regarded as evidence of bad faith since the list of circumstances in paragraph 4(b) is not exhaustive. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant is, according to the submitted evidence, the owner of the registered trademark HUONEISTOKESKUS which predates the registration of the disputed domain name .
The disputed domain name contains the trademark HUONEISTOKESKUS in its entirety.
Having the above in mind, the Panel concludes that the disputed domain name is identical to the Complainant's trademark HUONEISTOKESKUS and that the Complainant has proved the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(a) that he has made 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 prior to the dispute; or
(b) that he is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) that he intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Complainant has not licensed or otherwise consented to the Respondent's use of the Complainant's trademark HUONEISTOKESKUS in connection with the disputed domain name which is identical to the trademark.
From the submitted evidence in this case, it is established that the Respondent's website (in the Finnish language), to which the disputed domain name resolves, contains direct references to the Complainant as well as a hyperlink to the Complainant's website. Furthermore, the submitted evidence shows that the Respondent's website contains a misspelled version of the Complainant's figure trademark, giving the trademark a derogatory meaning in the Finish language. In this Panel's view, the Respondent's use of the disputed domain name serves the purpose of tarnishing the trademark and the Complainant's business and such use does not establish a right or legitimate interest in the disputed domain name.
Although provided the opportunity, the Respondent has not submitted any evidence indicating for example that he has made preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute or that the Respondent is the owner of any trademark rights or is commonly known by the disputed domain name.
By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain name. Thus, there is no evidence in the case that refutes the Complainant's submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include:
(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or
(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.
The Complainant's registered trademark HUONEISTOKESKUS predates the registration of the disputed domain name . The circumstances in the case before the Panel indicate that the Respondent was aware of the Complainant's trademark HUONEISTOKESKUS when registering the disputed domain name, as the website to which the disputed domain name resolves contains references to the Complainant and its business. It has also been shown that the Respondent's website contain a link to the Complainant's website.
The Respondent is using the disputed domain name in a way that creates a likelihood of confusion concerning the source of the website. The website, to which the disputed domain name resolves, is designed to have almost the same color scheme as the Complainant's registered figure trademark. Furthermore, the Respondent is displaying a misspelled version of the Complainant's trademark on the website giving the trademark a derogatory meaning in the Finnish language.
It has been argued by the Complainant that the Respondent registered the disputed domain name primarily for the purpose of distorting the Complainant's trademark and disrupting the business of the Complainant.
Although the Respondent's behavior does not automatically fall under the provision of paragraph 4(b)(iii) as the Respondent does not appear to be a competitor to the Complainant, the list of circumstances indicating bad faith in paragraph 4(b) is not exhaustive. It has been held in previous proceedings that damage to goodwill via use of a domain name can be considered an additional circumstance evidencing bad faith. See e.g Fibox Oy Ab v. Ville Muilu,WIPO Case No. D2007-1429.
There is no evidence in the case that refute the Complainant's submissions.
The Panel concludes that the Complainant has proved the requirements under paragraph 4(b) of the Policy and that the domain name has been registered and used in bad faith. 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 be transferred to the Complainant.
Johan Sjöbeck
Sole Panelist
Date: November 19, 2008
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