WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
YIT Corporation v. Future Media Architects Inc.
Case No. D2007-0588
1. The Parties
The Complainant is YIT Corporation, Helsinki, Finland, represented by Heinonen & Co. Ltd, Attorneys-at-Law, Finland.
The Respondent is Future Media Architects Inc., Tortola, Virgin Islands, United Kingdom of Great Britain and Northern Ireland, represented by Kenyon & Kenyon, United States of America.
2. The Domain Names and Registrar
The disputed domain names <yit.com> and <yit.net> are registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2007. On April 19, 2007, the Center transmitted by email to Moniker Online Services, LLC, a request for registrar verification in connection with the domain names at issue. On April 19, 2007, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant 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”). On April 27, 2007, the Complainant provided supplementary annexes to its Complaint.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced May 7, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response May 27, 2007. The Response was filed with the Center on May 22, 2007.
The Center appointed The Honourable Sir Ian Barker, Michelle Brownlee and Antony Gold as panelists in this matter on July 13, 2007. The Panel finds that it was properly constituted. Each member of 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, a Finnish service company, specializes in building development and in maintaining technical living environments. It started business in 1912 and today is well-established in Finland, Scandinavia, the Baltic States and the Russian Federation. Its operations are divided into building systems, construction services and industrial network services. It employs some 21,300 people in eight countries and its shares are quoted on the “Helsinki Stock Exchange”. Its revenue in 2006 was €3,284.4m. It does some marketing in the United States of America of industrial construction components under the brand “Makrotalo”. No detail was given of the scope of its business in the United States of America.
In 1977, the Complainant applied for registration of the trademark YIT as a word mark in Finland. It also has trademark registrations in those countries where it principally does business. It obtained European Union and International Trademark registrations in November 2005. Various other trademarks have been registered by it, in Finland, incorporating the letters YIT.
The disputed domain names were registered in 1996 and 2001 respectively. The Respondent is registered in the British Virgin Islands and carries on business in the State of Virginia in the United States of America. It has registered over 100,000 domain names, many of which are 3-letter combinations. Websites generated by the disputed domain names are linked to pop-up advertisements for goods and services. Revenue is generated on a ‘click-through’ basis. A list of names owned by the Respondent did not show a pattern of acquiring well-known names.
The Respondent is the owner of a United States trademark application 78/751501 for the word YIT in International Class 42 in connection with computer services, namely providing a search engine for obtaining data on a global computer network, domain name registration services on global computer networks, hosting data images and audio and video content of others on a global computer network. The application has passed through the opposition period and a notice of allowance has been issued.
Third parties own a Benelux trademark registration for YIT and a Japanese trademark registration for YITS. In addition, a Canadian media conglomerate called Yittendon Investment Trust PC, operates under the trade name YIT.
The Complainant registered the domain name <yit.fi> in 1991 but made no attempt to acquire the disputed domain names until its attorneys approached the Respondent on March 13, 2007, and suggested that an unspecified party might be interested in buying the names for approximately €500. In that communication, there was no allegation that the Respondent was wrongfully using the disputed domain names.
5. Parties’ Contentions
The domain name is identical to a trademark in which the Complaint has rights.
The Respondent has no rights or legitimate interests in respect of the disputed domain names and was not given any such rights by the Complainant.
The disputed domain names are not used in any actual business activity of the Respondent.
The disputed domain names have been registered and are being used in bad faith.
The Respondent has previously featured in other UDRP disputes such as QNX Software Systems Ltd v. Future Media Architects Inc & Thunayan K AL-Ghanim, WIPO Case No. D2003-0921, and National Rifle Association of America v. Future Media Architects Ltd, NAF Case FA0608000781430. In both cases, the Respondent was ordered to transfer the disputed domain names. The cases involved, respectively, the names <qnx.info> and <nra.net>. The panels suggested that the Respondent’s use of a disputed domain name after formal notice of the Complainant’s rights constituted bad faith.
The Respondent’s websites include advertisement links and pop-up advertisements, including one to a major competitor of the Complainant in Finland, which proves that the Respondent is aware of the Complainant’s business.
The Complainant has been marketing Makrotalo in the United States of America since the 1980’s.
The Complainant is abusing the Policy to vent its frustration over the fact that the Respondent refused to sell the disputed domain names to the Complainant. The disputed domain names are identical, not only to the name protected by the Respondent’s trademark application, but also to the trademarks held by others in Benelux and Japan. The Complainant’s case is weakened because, although it registered <yit.fi> in 1991, it did not attempt to apply to acquire the disputed domain names until now, despite the Respondent having acquired these names 11 and 6 years previously.
The Respondent purchased the disputed domain names long before it received notice of the dispute. It uses the disputed domain names to provide links to websites arranged by subject headings corresponding to the goods and services provided by those websites.
There is no bad faith on the part of the Respondent, which is an Internet development company, specializing in the development of its own Internet properties, portals and technology. The Respondent has no intention of selling the disputed domain names to the competitor of the Complainant and was not even aware of the Complainant’s existence at the time it registered the disputed domain names.
The Respondent backed up its allegations by a statement under penalty sworn by its founder and Chief Executive, Mr. AL-Ghanim. Although it owns over 100,000 domain names, it has only been ordered to transfer two in the cases referred to by the Complainant. In Bawag PSK v. Future Media Architects Inc. (WIPO Case No. D2006-0534), the complainant failed to prove that the domain name had been registered and was being used in bad faith. There was no obvious intent to confuse, create confusion with or trade on the goodwill of the complainant.
The Respondent is aware of the inherent value of three-letter domain names and has regularly acquired as many unclaimed random three-letter domain names as possible in order to market its websites. It does not intend to infringe or free-ride on the goodwill of any trademark that may have been allegedly associated with any of the three-letter domains.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain names are identical to a registered trademark in which the Complainant has rights. The fact that this trademark was registered only in Finland prior to the Respondent’s registration of the disputed domain names does not preclude this finding.
B. Rights or Legitimate Interests
The Complainant has not given to the Respondent any rights or legitimate interests in using its mark in the disputed domain names. The Respondent must prove that it comes under paragraph 4(c) of the Policy within one of the limbs. The Respondent is not known by the name YIT. However, the Respondent says that it is using the names in connection with a bona fide offering of goods and services via a ‘click-through’ website.
The business of the Respondent seems to be to “harvest” domain names, especially 3-letter ones, and use them on ‘click-through’ sites to market a range of goods and services. In addition, the Respondent has pending trademark rights in the name YIT which, in the fullness of time, may become translated into registered trademarks.
The Respondent’s trademark rights have yet to be formally recognised by the final grant of a trademark. However, assuming that there is no obstacle in the way of final registration, the trademark could be evidence of the Respondent carrying on business under the name YIT. However, there is no evidence that a business has started up, utilizing this name, or even that there have been demonstrable preparations for one.
The Panel considers that, as in many other cases under the UDRP, the considerations under ‘rights or legitimate interests’ coalesce with those under bad faith. The Respondent has made a business practice of registering as many three-letter domain names as it can acquire. It is evidently true that, as to any one of them, it uses the name to conduct business, but is not otherwise known by that name, and has no interest in the nature of the transferor’s rights.
Because the Panel has a firm view that the Complainant has not proved bad faith registration, the Panel does not find it necessary to resolve the question of whether the Respondent has proved rights or legitimate interests.
C. Registered and Used in Bad Faith
The Complainant must show that the disputed domain names were both registered in bad faith and are being used in bad faith. In the present case, the Panel cannot infer that the disputed domain names registered in 1996 and 2001 respectively, were registered in bad faith. The Complainant is a Finnish corporation with a large business in that country. The Complainant has extended its operations into other parts of Scandinavia, the Russian Federation and the Baltic States. However, although it markets some building components in the United States of America, there is no evidence of the extent of its commercial presence there. Certainly, there is nothing to suggest that its products, marketed under the name Makrotalo, are well-known in the general United States community, let alone that of the British Virgin Islands.
This is a similar situation to that decided in an early case under the UDRP, namely V2 Vermögens Zentrum AG v. Anything.com, WIPO Case No. D2000-0527. There, the evidence of a financial company restricted to Switzerland and Germany, trading as VZ, could not have reasonably have been known to a company in the Cayman Islands. There, as in the present case, there was no evidence to show that the complainant’s mark should have been known to the respondent.
In this Panel’s view, the longer the time between the registration of a disputed domain name and the assertion of the Complainant’s rights the harder, in general, the inference of bad faith registration becomes to sustain. The registrations in this case were made 11 and 6 years approximately before the Complaint was filed.
With regard to the other UDRP cases cited by the parties, the result in the NAF case is hardly surprising. The letters NRA are very well-known in the United States of America and the Complainant owned trademarks for NRA. The case perhaps shows that wholesale buyers of 3-letter combinations have to be careful when acquiring domain names.
However, the owner of the Respondent has gone on oath to say that the Respondent had not heard of the Complainant at the time of registration of the disputed domain names. The Panel has no evidence to contradict this assertion.
The situation of the Respondent here is similar to its situation in Bawag PSK v. Future Media Architects Inc., WIPO Case No. D2006-0534, where the Complainant’s activities were restricted to a geographical area in Europe. The Panel agrees with the presiding panelist in that case when he said:
“However, for the Presiding Panelist, the Respondent’s affidavit evidence that it had never heard of the Complainant until the dispute is plausible and understandable in the circumstances where the Complainant’s activity is focused on one particular geographical area (Austria) and where the Respondent has its registered office on the British Virgin Islands and is conducting its business from Virginia/USA. There does not seem to be any obvious intent to create confusion with, or trade on the goodwill of, the Austrian bank. The challenged domain name resolves to a site that appears to have exclusively English language content whereas persons familiar with the Austrian bank are presumably German speakers.”
Mutatis Mutandis, the comments apply to a Finnish manufacturer of building componentry – albeit one with a seemingly slight presence in the United States of America.
As the Panel has found that there was no bad faith registration, it is therefore unnecessary to examine the question of bad faith use. The Complainant has therefore failed and the Complaint must be denied.
For all the foregoing reasons, the Complaint is denied.
Sir Ian Barker
Dated: July 27, 2007