Fortum Corporation v. Li. Yen Chun

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Fortum Corporation

v. Li. Yen Chun

Case

No. D2002-0324

1. The Parties

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.

2. The Domain Name and

Registrar

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 26th

Ave., San Francisco, CA 94116, United States of America.

3. Procedural History

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.

4. Factual Background

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:

"Thank you for your

email but I am sorry that we will not comply.

Please be informed that

the domain name "fortum.net" was registered for use of one of our

web sites. Furthermore, actually we were not aware of your client’s existence

before we registered this domain name. We would like to be helpful to resolve

this problem amicably but would never accept threat and harassment like this.

We just consulted with our attorney and some domain name dispute experts and

we were told that we are also in a very good possition (sic) to retain this

domain name. If you really owned this domain before, it may be your problem

with your registrar which resulted in any loss to you because we didnt (sic)

do anything illegally to acquire it. Moreover, we would like to help if you

want this domain name but if you continue to threat us, I promise you that we

will refuse to further negotiate with you and we will be expecting for any of

your actions and challenges with regard to domain name "fortum.net".

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.

5. Parties’ Contentions

A. The Complainant

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.

B. The Respondent

The Respondent did not

file a Response.

6. Discussion and Findings

Language of the proceeding

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.

Substantive elements of

the Policy

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.

Domain name is identical

or confusingly similar to a trademark or service mark in which the Complainant

has rights

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".

No legitimate rights or

interest in the disputed domain name

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.

Domain name has been registered

and is being used in bad faith

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.

7. Decision

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

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