WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fortum Corporation v. Aviada Group Oy, Antti Liljander

Case No. D2012-1790

1. The Parties

The Complainant is Fortum Corporation of Fortum, Finland represented by Bech-Bruun, Denmark.

The Respondent is Aviada Group Oy, Antti Liljander of Espoo, Finland.

2. The Domain Name and Registrar

The disputed domain names <fortumheat.com>, <fortumpower.com> and <fortumenergy.com> are registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2012. On September 7, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <fortumheat.com>. On September 7, 2012, the Registrar 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” or “UDRP”), 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 September 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 30, 2012. Due to a possible postal error, the Response due date was extended to October 1, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 2, 2012.

The Center appointed Jonas Gulliksson as the sole panelist in this matter on October 15, 2012. 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.

On October 4, 2012, the Complainant submitted a request for inclusion of the two additional domain names <fortumpower.com> and <fortumenergy.com>, which are also held by the Respondent, in the case.

The Panel accepted the inclusion of the domain names in accordance with the Policy and prior decisions of UDRP panels (See below and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.8). Therefore, the Panel issued an Administrative Panel Procedural Order No. 1 on October 26, 2012, in which the Panel inter alia granted the Complainant’s request to add the domain names <fortumpower.com> and <fortumenergy.com> to the proceeding and requested the Center to notify the Respondent of the added domain names giving the Respondent 20 days to respond.

The Center forwarded the referenced documents to the parties on October 29, 2012, providing November 18, 2012 as due date for the Respondent to respond. No response was received.

4. Factual Background

The Complainant is the holder of:

- the registered Finnish trademark No. 219626 FORTUM, registered on December 15, 2000 in the classes 1, 3, 4, 6, 7, 9, 11, 12, 16, 19, 35, 36, 37, 38, 39, 40, 41 and 42 of the International Classification;

- the registered Community trademark (“CTM”) No. 007064575 FORTUM, registered on March 15, 2001 in the classes 4, 6, 7, 9, 11, 35, 36, 37, 38, 39, 40, 41 and 42 of the International Classification;

- the registered United States Patent and Trademark Office (“USPTO”) service mark No. 3214421 FORTUM, registered on March 6, 2007.

The disputed domain name <fortumheat.com> was registered on April 18, 2012; <fortumpower.com> and <fortumenergy.com> were both registered on April 17, 2012. The three disputed domain names are hereinafter jointly referred to as the disputed domain names.

5. Parties’ Contentions

A. Complainant

The Complainant is a leading energy company within the Nordic countries, the Russian Federation, Poland and the Baltic Rim area providing generation, distribution and sales of electricity and heat and related services. The Complainant employs approximately 10,800 employees. The business areas of the Complainant are divided into four operational divisions: Power, Heat, Russia and Electricity Solutions and distributions. The complainant is inter alia the fourth largest heat producer in the world.

The FORTUM trademark is registered in several jurisdictions worldwide, including Finland.

The Complainant has not permitted the Respondent to use the Complainant’s FORTUM trademark in any way.

A cease and desist letter was sent to the Respondent on July 10, 2012 requesting the Respondent to transfer the disputed domain name <fortumheat.com> to the Complainant.

Each of the disputed domain names is confusingly similar to the Complainant’s FORTUM trademark. The words “heat”, “power” and “energy” are generic and of Complainant’s business descriptive terms. Neither of “heat”, “heating”, “power” nor “energy” are descriptive words of goods or services offered by the Respondent. The additions of these words and the gTLD “.com” do not detract from the overall impression of the distinctive part of the disputed domain names being the Complainant’s FORTUM trademark.

The Respondent has no rights or legitimate interests in the disputed domain names. The registration of a domain name does not establish rights or legitimate interests in the name. The Respondent is not making a legitimate non-commercial or fair use of the disputed domain names but is using the disputed domain names to attract Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the websites linked to the disputed domain names. There has been no active use of the disputed domain names. The websites linked to the disputed domain names referrer to a parking website. The Respondent cannot actively use the disputed domain names without creating a false impression of association with the Complainant. The Respondent is not connected to or associated in any way with the Complainant or licensed or authorized to use the FORTUM trademark.

The disputed domain names were registered and are being used in bad faith. The Respondent’s passive holding is to be considered as in bad faith. The FORTUM trademark is well known world wide and the Respondent, answering the Complainant’s cease and desist letter regarding <fortumheat.com> alleging that it is a customer and shareholder of the Complainant, had knowledge of the Complainant’s rights when registering the disputed domain names.

The Respondent has offered the disputed domain name <fortumheat.com> for sale to the Complainant, proving the Respondents intent to commercially gain on a domain name transfer.

The Respondent is using the disputed domain names to divert Internet traffic to its own websites for its own commercial gain, thereby potentially depriving the Complainant of visits by Internet users.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, each of the three following elements must be satisfied for each of the disputed domain names:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and is being used in bad faith.

Paragraph 4(a) of the Policy further states that the burden of proving that all three elements are present lies with the Complainant.

Preliminary question

On October 4, 2012, the Complainant submitted to the Center its request for inclusion of the additional domain names <fortumpower.com> and <fortumenergy.com>. The Panel was appointed on October 15, 2012. In accordance with the Rules, paragraph 10(a) and 10(b), the Panel has to conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and the Rules and it shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. In Société Air France v. Spiral Matrix, WIPO Case No. D2005-1337, the panel found that “In the proceeding at issue, a separate Complaint is clearly liable to be consolidated with the principal Complaint, the additional and initial Complaints are closely connected as to the factual background in a way that it is expedient to hear and determine them together in order to avoid the risk of irreconcilable decisions resulting from separate proceedings and the additional Complaint is filed against the same Respondent.” and “In considering whether to allow the additional Complaint, the Panel paid heed to fundamental procedural safeguards of equal treatment of the parties and the principle of providing both parties with a fair opportunity to present their case.” The Panel has found that the Complaint and the request for inclusion of additional domain names have almost identical factual background and that it is expedient to hear and determine them together. Therefore, the Panel has allowed the Complainant to amend its Complaint by including the disputed domain names <fortumpower.com> and <fortumenergy.com> and it has given the Respondent a fair opportunity to present its case, all in accordance with the Rules and the Policy and with reference to Société Air France v. Spiral Matrix, supra.

A. Identical or Confusingly Similar

The Complainant has established registered rights to the FORTUM trademark.

The disputed domain names were registered after the FORTUM trademark registration and they contain the Complainant’s trademark in its entirety. According to well-established consensus, the Panel does not find the addition of the top level domain “.com” to be distinguishing. In accordance with this, the disputed domain names and the registered FORTUM trademark only differ by the generic, and of Complainant’s business descriptive, words “heat”, “power” and “energy”. The Panel finds the addition of the words “heat”, “power” and “energy” to the trademark insufficient to avoid a finding of confusing similarity under the first element of the Policy (See Lime Wire LLC v. David Da Silva/Contractprivacy.com, WIPO Case No. D2007-1168; see also SAP AG v. Hugo Hector Ferreyra, WIPO Case No. D2011-0073).

Consequently, this Panel finds the disputed domain names confusingly similar to the trademark in which the Complainant has established rights. The first element of the paragraph 4(a) of the Policy is thus fulfilled.

B. Rights or Legitimate Interests

In cases when a respondent fails to present a response, the complainant is still required to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, see WIPO Overview, 2.0, paragraph 2.1., and The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064, and Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465. Further, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.

In the present case, the Complainant has asserted that no permission to register the disputed domain names has been granted to the Respondent. Moreover, the Complainant has stated that the Respondent has no rights of its own or legitimate interests to the disputed domain names which entirely incorporate the Complainant’s trademark FORTUM. Also, the Complainant has asserted that the disputed domain names are linked to a website which is used by the Respondent to refer to a parking website.

In the submitted answer by the Respondent to the Complainant’s cease and desist letter, the Respondent claims to be a shareholder and customer of the Complainant and alleges that the disputed domain name <fortumheat.com> was not registered in bad faith.

Having considered the submissions of the Complainant, and the lack of Response to the Complaint from the Respondent, the Panel finds that the Respondent is not connected with the Complainant in a way that gives the Respondent rights to use the Complainant’s trademark and that the Respondent is not commonly known by the disputed domain names. The Panel finds that being a shareholder or customer of the Complainant does not entitle the Respondent under the circumstances to use the Complainant’s trademark in a domain name. Further, the Panel finds that the words “heat”, “power” and “energy” are used in the disputed domain names with an intention to derive commercial advantage of the Complainant’s trademark. Such use by the Respondent is not a legitimate noncommercial or fair use and does not confer any rights or legitimate interests in flavor of the Respondent. The Panel, in the absence of a translation to English, does not find that the Complainant has proven how the websites linked to the disputed domain names are used. However, in the light of what is stated above, the Panel still finds that the Complainant has made out a prima facie case that the Respondent lack rights or legitimate interests in the disputed domain names.

The Respondent has not proved otherwise.

Therefore, the Panel finds that the second element of the paragraph 4(a) of the Policy is fulfilled.

C. Registered and Used in Bad Faith

The UDRP Policy paragraph 4(b), inter alia, states that circumstances indicating that someone has registered or used a domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to a complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name or if, by using the domain name, someone has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on someone’s website or location, this shall be evidence of the registration and use of a domain name in bad faith.

From the e-mail sent by the Respondent as an answer to the Complainant’s cease and desist letter, the Panel finds that the Respondent has asked for “some kind of compensation” if it was to transfer the disputed domain name <fortumheat.com> to the Complainant. However, this does not prove that the Respondent has demanded valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name as a condition for a transfer. No other evidence has been submitted proving that the Respondent has demanded compensation in a way that proves or indicates bad faith registration.

However, the Panel finds the fact that the registration of the disputed domain name <fortumheat.com> was made after the Complainant’s registrations of the FORTUM trademark as an indication of bad faith. Further, the Panel finds it highly improbable that the Respondent has selected arbitrarily the disputed domain names’ word combinations with “heat”, “power” and “energy” without having prior knowledge of the Complainant’s rights and business. Also, in its response to the Complainant’s cease and desist letter, the Respondent claimed to be a shareholder and a customer and having asked for permission in advance to register the disputed domain name <fortumheat.com>. In light of the above, the Panel finds that the Respondent had knowledge of the Complainant’s rights to the FORTUM trademark and the Complainant’s business when registering the disputed domain names.

The Respondent has not refuted the Complainant’s statement that the websites linked to the disputed domain names are used to present a parking website.

Prior UDRP panels have found that lack of active use of the domain name (passive holding) does not prevent a finding of bad faith. All circumstances of the case must be examined to determine the question of bad faith. Examples of circumstances indicating bad faith without active use is the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity, see paragraph 3.2 of WIPO Overview 2.0.

In the case at hand, the Panel considers that the Respondent was aware of the Complainant’s trademark rights and trademarks and no Response has been filed to the Complaint. Further, the Panel has found that the Respondent lacks rights or legitimate interests in the disputed domain names, which were all registered within two days, and it does not find it possible to conceive of a plausible circumstance in which the Respondent could legitimately use the disputed domain names. Also, the Respondent registered the disputed domain name <fortumheat.com> after allegedly contacting the Complainant asking for permission to register it but without permission from the Complainant.

It is the Panel’s view that the Respondent has registered the disputed domain names in awareness of the Complainant with the clear aim of taking advantage of the confusion between the disputed domain names and the Complainant’s trademarks.

All in all, the Panel finds under the circumstances that the Complainant has proved the Respondent’s registrations and use of the disputed domain names to have been in bad faith.

The third element of the paragraph 4(a) of the Policy is thus fulfilled.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <fortumheat.com>, <fortumpower.com> and <fortumenergy.com> be transferred to the Complainant.

Jonas Gulliksson
Sole Panelist
Date: November 29, 2012