WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Werner Sderstrm Osakeyhti v. SZK.com and Zerbo Gioacchino

Case No. D2008-0555

 

1. The Parties

The Complainant is Werner Sderstrm Osakeyhti, of Finland, represented by Attorneys-at-Law Juridia ltd., Finland.

The Respondents are SZK.com and Zerbo Gioacchino, of Italy.

 

2. The Domain Name and Registrar

The disputed domain name <wsoy.com> is registered with Tuonome.it.srl.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2008. On April 11, 2008, the Center transmitted by email to Tuonome.it.srl a request for registrar verification in connection with the domain name at issue. On April 17, 2008, Tuonome.it.srl 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”).

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 April 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 8, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 9, 2008.

The Center appointed Johan Sjbeck as the sole panelist in this matter on May 23, 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 of the following trademark registrations and applications:

Finnish trademark WSOY, class 9, 16, 28, 35, 38, 39, 40, 41 and 42 with registration number 234642, filing date March 18, 2005 and registration date November 15, 2005.

Community trademark SANOMA-WSOY, class 9, 16, 18, 25, 35, 38, 39, 41 and 42 with registration number 001103233, filing date March 11, 1999 and registration date February 20, 2001.

Community trademark application WSOY, class 9, 16, 35, 40 and 41 with number 006459416 and filing date November 23, 2007.

The disputed domain name <wsoy.com> was registered by the first Respondent on November 25, 2001 and transferred to the second Respondent on or about January 16, 2008.

 

5. Parties’ Contentions

A. Complainant

The Complainant, Werner Sderstrm Osakeyhti, is a public company limited by shares and incorporated under the laws of Finland with place of incorporation and principal place of business in Helsinki, Finland.

The Complainant has requested that both named Respondents shall be accepted as Respondents in the proceeding as the first Respondent transferred the disputed domain name to the second Respondent as soon as the Complainant informed the first Respondent that the Complainant intended to file a UDRP Complaint. This activity of transferring disputed domain names to another party in order to avoid becoming a Respondent in a domain name dispute is often referred to as “cyberflying”.

The Complainant’s roots date back to the 1870’s, more than 130 years ago. The abbreviation WSOY was created from Mr. Werner Sderstrm’s initials “WS” combined with the abbreviation of the word “osakeyhti” (in English: limited liability company), “OY”. The company WSOY was established in 1878 and on May 1, 1999, WSOY merged with Sanoma Corporation and other Finnish companies, and the new company group was named SanomaWSOY Group.

Ever since the beginning of the Complainant’s business activities the company has been known by its abbreviation WSOY and has used the trademark WSOY in its publishing business since the 1930’s.

The Complainant is the owner of the registered trademarks WSOY and SANOMA-WSOY. Furthermore, the trademark WSOY has been used by the Complainant for several decades in Finland and internationally.

The Complainant is Finland’s leading book publisher and a significant European educational publisher with 322, 5 M€ net sales in 2007 and was in the top ten of the largest publicly listed companies in Finland already in 2000. The Complainant has published books in the Italian language in Italy, the home country of the Respondents.

The Complainant has gained exclusive rights to the trademark WSOY decades ago due to its long-standing and extensive use of the trademark WSOY. The trademark WSOY has been used extensively also on the internet at “www.wsoy.fi” since 1996.

The Respondents do not have trademark registration for the word “wsoy” in Italy. It is not known to the Complainant that the Respondents would have trademark or company name registrations for the word “wsoy” anywhere. To the best of the Complainant’s knowledge the Respondents are not commonly known by the domain name.

According to Italian dictionary, the word “wsoy” does not have any meaning in Italian and according to the Merriam-Webster’s On-Line English Language Center the word “wsoy” does not have any meaning in English.

Almost all of the first results for a Google search for “wsoy” are related to the Complainant, both in the international version of Google and in the Italian version of Google.

The Complainant has not licensed or otherwise permitted any of the Respondents to use its company name and trademark WSOY.

On April 29, 2005, the Respondent’s website contained material related to the Complainant, namely links to online book stores and also to SanomaWSOY and Helsinki. Similar content is currently on the website, and the current website also includes photos of books and the text “For resources and information on Books and Helsinki”. It is indisputable that both Respondents are well aware of WSOY in Finland.

The Complainant’s investigations show that the first Respondent has registered almost 7.000 generic domain names alone using registrant name SZK.com and e-mail address chiccodin@aol.com and the second Respondent has registered at least 225 generic domain names. These domain name lists prove that the Respondents do regularly register domain names which infringe third party rights. Both Respondents have been Respondents in numerous UDRP disputes and also in previous cases have the Respondents transferred domain names after receiving cease and desist letters from trademark owners.

The website to which the disputed domain name resolves contains several advertisement links providing “revenue-per-click” income when Internet users visit the Respondents’ website expecting to reach a site associated with the Complainant.

By using the disputed domain name for advertising purposes, the Respondents intentionally attempt to attract users to the Respondents’ website for commercial gain.

The Complainant first offered to buy the disputed domain name from the first Respondent for EUR 300 – 500, but the fist Respondent considered the offer “very low” and refused to sell the domain name.

The Complainant then sent a cease and desist letter to the first Respondent explaining the Complainant’s rights and demanding voluntary transfer of the disputed domain name. The first Respondent never responded. Instead, the first Respondent transferred the domain name to the second Respondent to avoid the UDRP proceeding.

B. Respondents

The Respondents 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 Respondents’ domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondents have 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

According to the submitted material, the Complainant is the owner of the registered trademark SANOMA-WSOY since 1999 and the registered trademark WSOY since 2005. Furthermore, in addition to the trademark registrations above, the submitted evidence indicates that the Complainant has trademark rights in the term WSOY due to extensive and long-tem use in the publishing business.

The disputed domain name <wsoy.com> incorporates the trademark WSOY in its entirety.

Having the above in mind, the Panel concludes that the disputed domain name <wsoy.com> is identical to the Complainant’s trademark WSOY 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 Respondents have no rights or legitimate interests with respect to the disputed domain name. The Respondents 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:

(i) that they have 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

(ii) that they are commonly known by the domain name, even if they have not acquired any trademark rights; or

(iii) that they intend 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.

According to the Complainant’s references to dictionaries, the word “wsoy” does not have any particular meaning in Italian or in English. Furthermore, the Complainant has submitted a printout from a search executed in the Italian trademark database indicating that the Respondents do not own any trademark registration for the word “wsoy” in Italy.

The Complainant has not licensed or otherwise consented to the Respondents’ use of the WSOY trademark in connection with the disputed domain name <wsoy.com> which is identical to the trademark.

From the submitted evidence in this case, it is clear that the Respondents’ website, to which the disputed domain name resolves, contains numerous sponsored commercial links. It has also been established that the Respondents’ website contains hyperlinks to the Complainant.

The Respondents’ use of the disputed domain name serves the purpose of generating revenue via advertised “pay-per-click” products and links and it has been held in previous cases that such use in the circumstances does not represent a use in connection with a bona fide offering of goods and services. See e.g., Sigikid H. Scharrer & Koch GmbH & Co. KG, MyBear Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v. Bestinf, WIPO Case No. D2004-0990.

By not submitting a Response, the Respondents have 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.

It has been argued by the Complainant that the disputed domain name was registered in order to prevent the Complainant from reflecting the mark in a corresponding domain name and that the Respondents have engaged in a pattern of such conduct. The Complainant has provided references to numerous previous UDRP proceedings where the Respondents have been Respondents and where domain names have been transferred to other trademark owners.

From the submitted evidence it is clear that the Complainant’s right to the WSOY trademark due to use predates the registration of the disputed domain name <wsoy.com>. Furthermore, the circumstances in the case before the Panel indicate that the Respondents were aware of the Complainant’s use of the WSOY trademark when registering and when transferring the disputed domain name.

The Complainant has submitted screenshots showing that the disputed domain name resolves to a website which contains numerous advertising links to websites promoting online book stores, including not only links to the Complainant but also material relating to the Complainant as such. Such exploitation of the reputation of trademarks to obtain click-through commissions from the diversion of Internet users is an indication of use in bad faith.

The submitted evidence in the case before the Panel indicate that the disputed domain name <wsoy.com> has intentionally been and is being used in an attempt to attract, for commercial gain, Internet users to the Respondents’ website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on a website.

The Complainant has provided printouts showing that the disputed domain name was registered by the first Respondent on November 25, 2001 and transferred to the second Respondent on or about January 16, 2008, soon after the Complainant sent a cease and desist letter. Transferring a domain name after learning of a complaint can be seen as a violation of paragraph 8(a) of the Policy. An attempt to avoid or delay the UDRP proceeding may constitute an indication of bad faith registration and use under paragraph 4(b) of the Policy. See for example Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696.

As the Respondents have not submitted a Response to the Complaint 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 <wsoy.com> has been registered and is being 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 <wsoy.com> be transferred to the Complainant.


Johan Sjbeck
Sole Panelist

Dated: June 6, 2008