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Fortum Corporation v. Li. Yen Chun [2002] GENDND 929 (21 June 2002)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Case No. D2002-0324

The Complainant is Fortum Corporation, a corporation incorporated in Espoo, Finland, having its place of business at Keilaniementie 1, 02150 Espoo, Finland. It is represented by Mr. Tuukka Airaksinen of Benjon Oy, Fredrikinkatu, Helsinki, Finland.

The Respondent is Li. Yen Chun, whose address is given as 4F, No. 6, Lane 79, Chienkwo S.Rd. Sec. 2, Taipei, Taipei, Taiwan, Province of China.

The domain name at issue is <fortum.net>. The Registrar with which the disputed domain name is registered is OnlineNIC, Inc. D/B/A China-Channel.com, 2315 26^th Ave., San Francisco, CA 94116, United States of America.

On April 5, 2002 a Complaint was received via email by the WIPO Arbitration and Mediation Center ("the Center") for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999. The hard copy was received by the Center on April 9, 2002.

On April 25, 2002 the Registrar responded to a request for Registrar Verification and confirmed:

- The details of the Respondent;

- That the Policy applied to the disputed domain name;

- That the current status of the name was "active".

- That the language of the registration agreement was Chinese.

On April 29, 2002, the Center wrote to the Complainant stating that the language of Complaint (English) was not the language of the Registration Agreement (Chinese). The Center advised that according to paragraph 11 of the Rules, unless otherwise agreed by the parties, or otherwise specified in the Registration Agreement, the language of the administrative proceeding (including the Complaint) must be the language of the Registration Agreement.

On May 3, 2002, the Center received a request from the Complainant to establish English as the language of the administrative proceeding, on the following grounds (inter alia):

- There was a de facto agreement with the Respondent that the case should be administered in English. By setting up a website in English, inviting offers to buy the domain name in English and by entering into correspondence with the Complainant’s representative in English the Respondent effectively agreed that English was the language of the proceedings.

- The Respondent is fully capable of using English and is also familiar with the UDRP proceedings. The respondent is fully capable of defending the case before the Panel in English.

- The Respondent has appeared as a Respondent in two prior UDRP cases that were conducted in English.

On May 7, 2002 the Center transmitted a Notification of Complaint and Commencement of Administrative Proceedings to the Respondent, advising that a Response was required within 20 calendar days i.e. by May 27, 2002.

No Response was received and on May 28, 2002, the Center issued a Notification of Respondent Default.

On June 7, 2002, a Panel consisting of a single member was constituted. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.

According to the Complainant’s website at <fortum.com>, the Complainant is one of the Nordic countries’ leading energy companies. It is involved in the production of oil, gas and power, as well as refining, distribution and marketing and energy related engineering, operation and maintenance.

Also according to its website, the Complainant is the market leader in the production and marketing of high-quality environmental oil products in the Baltic Rim and has a presence in more than 30 countries.

The Complainant states that in 2001, its net sales totaled EUR€10,410 million and that its average number of employees was 14,800. The Complainant’s shares are quoted on the Helsinki Stock Exchange.

The Complainant has provided evidence that its trademarks FORTUM and FORTUM and device have been registered in the European Union. Applications for these marks are also pending in the United States of America.

The Respondent registered the disputed domain name on December 30, 2001. The website displays the prominent statement "For sale, contact us". The site also operates as a portal to different sites relating to various topics.

On March 12, 2002, the Complainant’s Representative wrote to the Respondent in respect of the registration of the disputed domain name. The requirement put the Respondent on notice of its registered trademarks and requested the Respondent transfer the disputed domain name to it.

On March 13, 2002, the Respondent replied as follows:

After several further emails exchanges between the parties, on March 24, 2002 the Respondent offered to sell the disputed domain name to the Complainant for US$1,500.

The Complainant claims that the disputed domain name is identical to the Complainant’s trademark and company name "FORTUM" and is confusingly similar to the Complainant’s device mark, which is the Complainant’s company logo. The Complainant points out that the addition of ".net" is a necessary element of any domain name registered under that root, and is therefore not distinctive.

The Complainant provided evidence of its trademark registrations in the European Union and its applications for registration in the United States of America. In the European Union it has a registration for the word mark FORTUM in 13 different classes and a registration for a logo including prominent use of the word FORTUM in 15 different classes.

The Complainant further states that the Respondent has no right or legitimate interest in the domain name because:

(a) The Respondent has not registered the disputed domain name as a trademark or service mark anywhere in the world;

(b) The Respondent has not used the mark in relation to the offering of goods or services;

(c) The Respondent is not commonly known by the name Fortum;

(d) Searches for the terms <fortum.net>, "fortum", "taipei", "yen chun"" and "fortum", "taipei", "yen", "chun" yielded zero hits;

(e) The Complainant has not licensed or otherwise permitted the Respondent to use the trademark FORTUM and there is no relationship between the Complainant and the Respondent;

(f) The website at <fortum.net> appears to offer legitimate services. However, the fact that the services offered appear to be legitimate does not mean that the Respondent has legitimate rights to the domain name – legitimate business can be driven under an illegitimate domain name;

(g) There are hundreds of domain names directed to the same website. The Respondent has engaged in a pattern of registering domain names and directing them to the same website, at which the Respondent offers each domain name for sale.

The Complainant also contends that the Respondent registered, used, and is still using the contested name in bad faith. It bases these contentions on the grounds that:

(a) The disputed domain name is for sale. The Respondent invited Internet users to make an offer to purchase the disputed domain name. The Complainant contends that the fact that it was publicly for sale and the Respondent invited offers indicates that the Respondent’s intention was to get the highest possible price for the domain. In all probability, this would have exceeded the Respondent’s out-of-pocket costs directly related to the disputed domain name. The Respondent also tried to sell the domain to the Complainant for US$1,500, which the Complainant states clearly exceeds the Respondent’s out-of-pocket costs for registering the disputed domain name;

(b) The Respondent registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name and has engaged in a pattern of such conduct. The Respondent has been a Respondent in at least two previous UDRP cases. In both cases, the Complainants prevailed;

(c) The Respondent has registered at least 345 different domain names, some of which are in the name of different registrants, such as Domain Seller, Domain Reseller, IA Consulting, Inc and Wang Chuan Sheng;

(d) The Respondent is operating a portal-like website under the domain. While the offering of portal services is legitimate, in this case the Complainant claims it does not constitute bona fide use of the disputed domain name. The Complainant claims that the only reason the Respondent is operating the portal services is to disguise himself and to "distract" trademark owners as to the legitimate interest and bad faith elements because at first sight the Respondent appears to be offering bona fide services. The Complainant claims, however, that if the website was genuinely a bona fide website offering portal services, it would promote and advertise the website and try to attract new users. Instead, the Respondent is seeking to sell the domains under which the website is operated. The Complainant claims that it is not normal business practice to offer services under a domain name and simultaneously try to transfer the domain;

(e) The Complainant states that it is one of the leading energy companies in the Nordic countries. When the word "fortum" is entered in a google search, at least the first 29 hits refer to the Complainant or websites associated with the Complainant. The Complainant owns and operates websites at <fortum.com> and <fortum.org>. The word has no common meaning. The Complainant claims that the Respondent was aware or should have been aware of the Complainant and the Complainant’s trademark;

(f) The Respondent has used the Complainant’s trademark in order to attract visitors to his website for commercial gain. (The commercial gain the Complainant refers to is the sale of the disputed domain name and the sale of the other domain names pointing to the same site);

(g) The Respondent warehouses hundreds of domains and actively sells these. The Complainant claims that the Respondent is a "normal cyber-squatter" operating in a more sophisticated manner in order to make trademark owners believe that he has legitimate rights in the domains.

The Respondent did not file a Response.

A preliminary point which must be determined before considering the substantive elements of the Policy is the language in which the administrative proceeding should be conducted. In this case, the language of the Registration Agreement is Chinese, yet the Complaint was submitted in English.

As indicated above, paragraph 11 of the Rules provides that the language of the administrative proceeding, including the Complaint, must be the language of the Registration Agreement, unless otherwise agreed by the parties or otherwise specified in the Registration Agreement.

It is common ground that there was no express agreement between the parties that the language of the administrative proceeding should be anything other than Chinese, the language of the Registration Agreement. The Complainant alleges, however, that there was a de facto agreement with the Respondent that the language of the administrative proceeding should be English. It based this claim on factors including the fact that the disputed domain name was offered for sale in English, the website was set up in English and pre-Complaint correspondence between the Complainant and the Respondent was conducted in English.

In light of this, and in the absence of any objection from the Respondent (who is obviously capable of using and understanding English), the Panel accepts that there was a de facto agreement or understanding that any administrative proceeding would be conducted in English.

Paragraph 15(a) of the Rules instructs the Panel to:

"decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".

The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:

- 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

- That the Respondent has no rights or legitimate interests in respect of the domain name; and

- That the domain name has been registered and is being used by the Respondent in bad faith.

As set out above, the Complainant is the registered proprietor of the trademark FORTUM in the European Union. It also has trademarks pending in the United States of America. FORTUM is an unusual and distinctive mark which the Complainant states has no common meaning. The word is not found in the Shorter Oxford Dictionary.

The Panel finds that the domain name <fortum.net> is identical to the Complainant’s registered trademark FORTUM and it is confusingly similar to the Complainant’s device mark "FORTUM".

The Policy outlines (paragraph 4(c)) circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interest in the domain name. These circumstances are:

(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with the 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 consumers or to tarnish the trademark or service mark at issue.

Although there has been no Response filed by the Respondent, the Panel has considered each of these provisions.

The Panel finds that paragraph 4(c)(iii) is not applicable. The disputed website <fortum.net> is operating as a portal site, linking to other sites. The disputed website displays a prominent statement "For Sale Contact Us". In addition, the Complainant has shown that the 345 or so other domain names registered by the Respondent each resolve to the portal. In the circumstances the use which the Respondent is making is not legitimate non-commercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

As to sub-paragraph 4(c)(ii), the Complainant has undertaken a number of searches, none of which indicate that the Respondent has been commonly known by the disputed domain names. The Panel accepts this to be the case, particularly in light of the fact that the Respondent has registered more than 345 domain names. The chances of the Respondent being commonly known by all of those domain names seems remote.

The real issue of contention therefore is whether, within para 4(c)(i) before any notice to the Respondent of the dispute, the Respondent made any use of, or demonstrable preparations to use, the disputed domain name in connection with the bona fide offering of goods or services.

The Complainant asserts that the provision of the portal services are nothing but a front for the Respondent’s real activity, which is trading in domain names, and that therefore the goods and services offered are not "bona fide". In light of the sheer number of domain names registered by the Respondent and the fact that these are all offered for sale on the Respondent’s website, the Panel accepts that one of the Respondent’s activities is in the selling of domain names.

At the time the Complainant first contacted the Respondent, the domain name <fortum.net> was already active. It was only active in the sense, however, that it was being directed to a separate portal site to which hundreds of other domain names were already directed. No additional goods or services were offered specifically in conjunction with the disputed domain name.

Weighing up all of the evidence, the Panel considers that there was no use of the domain name in connection with the bona fide offering of goods or services before notice of the dispute to the Respondent such as to establish a legitimate right under paragraph 4(c)(i).

The Panel notes that the Respondent has not filed a Response to the Complaint. The Panel finds it appropriate to draw an adverse inference from the fact that the Respondent failed to file a Response (SSL International v Mark Freeman, WIPO Case No. D2000-1080 and Alta Vista Company v Grandtotal Finances Limited, WIPO Case No. D2000-0848).

Finally, although it is not part of its reasoning, the Panel notes that in two other UDRP cases Panels have held that this Respondent has been involved in the bad faith registration of domain names and ordered that these be transferred accordingly.

Accordingly, the Panel finds that the Respondent has no legitimate rights or interest in the disputed domain name.

Paragraph 4(b) of the ICANN Policy states:

"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location."

It should be noted that the circumstances of bad faith are not limited to the above.

As noted above, the Panel has accepted that one of the Respondent’s activities is as a seller of domain names, including the disputed domain name <fortum.net>.

The fact that at least 345 domain names, including the disputed domain name, each resolve to the same portal and all have the same "For Sale Contact Us" statement shows that there is a pattern of registration of different names for sale rather than use of each individual domain name for a specific purpose. Registration by the Respondent of several of his 345 domain names under the trading name "Domain Seller" is confirmation of the Respondent’s activities and intentions as a reseller of domain names.

The trade mark FORTUM is an unusual one with no meaning either in English or in any of the languages of the Nordic countries. The Complainant is a large and prominent company in Europe and already operates the domain names <fortum.com> and <fortum.org>. It would be a remarkable coincidence if the Respondent has registered the domain name <fortum.net> without being aware of the Complainant.

The disputed domain name has been offered for sale to the general public via the Respondent’s website. It was also offered for sale to the Complainant for US$1,500 in response to a letter sent by the Complainant’s representative. This sum is almost certainly in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name.

The Panel accepts that the Respondent’s primary purpose in registering the disputed domain name was to sell the domain name to the Complainant or to a competitor of the Complainant and that bad faith has been demonstrated under paragraph 4(b)(i).

The Policy requires the Complainant to demonstrate both that the disputed domain name was registered and that it is being used in bad faith. The disputed domain name resolves to an active site, albeit one which has no obvious connection with the word "fortum". The Panel is prepared to find that this use is sufficient to demonstrate that the disputed domain name was registered and is being used in bad faith. However, since the decision of TelstraCorp v. Nuclear Marshmallows, WIPO Case No. D2000-0003, even a passive holding of a domain name in the context of strong evidence of bad faith registration will not frustrate a Complainant’s allegation of bad faith registration and use.

This is enough to find bad faith registration and use.

The Panel also strongly suspects that the activities of the Respondent fall within paragraph 4(b)(iv) – in that use of the unusual trademark FORTUM as part of the disputed domain name involves attracting for commercial gain Internet users to the portal by creating a likelihood of confusion with the Complainant’s mark. Internet users – particularly those in Europe and Nordic countries who are familiar with the Complainant’s trademark and wide range of goods and services - will have cause to believe that <fortum.net> is operated by the Complainant. If the Internet users click on any one of the topic headings on the Respondent’s site, a list of third party commercial sites relating to the selected topic is displayed. These in turn contain various commercial offers.

There is no direct evidence as to what financial gain the Respondent receives from referrals of Internet users to different third party commercial websites via his portal. The Panel strongly suspects that there is a commercial gain to the Respondent from such referrals. In the absence of direct evidenced, however, the Panel is not able to make any firm finding that there has been commercial gain and therefore a breach of para 4 (b)(iv) as well.

For the foregoing reasons, the Panel decides that:

(a) The disputed domain name is identical to the trademark FORTUM in which the Complainant has rights and confusingly similar to the logo mark incorporating the word FORTUM to which the Complainant also has rights;

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name;

(c) The disputed domain name was registered and is being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the disputed domain name <fortum.net> be transferred to the Complainant.

Andrew Brown
Sole Panelist

Dated: June 21, 2002