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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Grey-Hen Oy v. Cerebrum Oy (Cerebros Consulting)

Case No. D2009-0913

1. The Parties

The Complainant is Grey-Hen Oy of Espoo, Finland, represented by Adbon Ltd, Adbon Trademarks, Finland.

The Respondent is Cerebrum Oy of Turku, Finland, represented by Krogerus Attorneys Ltd, Finland.

2. The Domain Name and Registrar

The disputed domain name <autovista.com> is registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 8, 2009. On July 8, 2009, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On July 8, 2009, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 16, 2009. The Center verified that the Complaint together with the amendment to 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 July 17, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 6, 2009. The Response was filed with the Center on August 4, 2009.

The Center appointed Kristiina Harenko as the sole panelist in this matter on August 11, 2009. 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.

The Complainant made a supplemental filing on August 7, 2009 providing an affidavit of the President and CEO of the Complainant. The Rules do not provide for the parties to make supplemental filing as of right. It is at the sole discretion of the Panel pursuant to paragraph 12 and general powers under paragraph 10 of the Rules to determine the admissibility of such supplemental filing. In this case, after consideration of Complainant`s proposed supplemental submission, the Panel has concluded that there is no basis for supplementing the record. First, exercising its discretion, the Panel has concluded that it can decide this case on the record submitted, and that it does not require any further submissions from the Parties. Second, the factual allegations submitted in the Complainant`s proposed supplemental submission did not constitute new facts that were not available at the time of the Complaint.

4. Factual Background

The Complainant is a Finnish limited liability company having its domicile and principal place of business in Espoo, Finland.

The Complainant is the owner of the following registered trademarks:

- Finnish trademark registration

- AutoVista

- Registration number 206830, date of filing 24 October 1996, date of registration July 15, 1997

- Community Trademark registration

- AUTOVISTA

- Registration number 004496031, date of filing 20 June 2005, date of registration December 15, 2006.

The Finnish trademark is registered for classes 9 (data processing apparatus, computer programs, 16 (printed program manuals, prints) and 35 (business assisting services). The Community trademark is registered for classes 35, 36, 38, 41 and 42 including, inter alia, Application Service Provider ("ASP") services, in particular ASP services relating to information on the car industry, and data mining.

Both trademarks are registered as word marks.

AUTOVISTA trademark is in use in several European countries for different kinds of service products and tools that give information on car industry. The website "www.autovista.eu" informs of these products. AUTOVISTA trademark is especially used for Saas service concerning regional pricing of cars and stock management of cars. It has been in use for these products several years and the product range has been constantly widening. The trademark was first in use in Finland but is currently in use in several European Union ("EU") countries and countries outside EU.

Respondent registered the disputed domain name on November 9, 1998.

5. Parties` Contentions

A. Complainant

The Complainant contends that the Respondent`s domain name <autovista.com> is identical to Complainant`s trademark AUTOVISTA.

The Complainant submits it has valid trademark rights to word AUTOVISTA with the priority from the date October 24, 1996. The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the domain name since the Respondent has no trademark protection for the word AUTOVISTA and did not have any trademark protection at the time of registration of the domain name <autovista.com> on November 9, 1998 and the domain name is not properly used. The website "www.autovista.com" includes an advertisement "looking for a new car?" and a hyperlink to website "www.digiforum.com" at which the domain name <autovista.com> is for sale. The Complainant assumes that the advertisement has been posted on the website by the registrar. If the Respondent had any proper interest to the disputed domain name, it would have secured its domain name rights with trademark protection and/or with proper use of the domain name. The Respondent has had over ten years time to utilize and benefit from the domain name if it had any proper interest in it.

For a long time the WhoIs database has shown that the registrant`s address is in the United States of America. Just recently the address has been changed to Finland. The same nationality of the Complainant and Respondent lessens the possibility of coincidence taking into account the non-use of the domain name. The non-use of the domain name indicates that the registrant has apparently registered the domain name for the purpose of selling it further. Otherwise the Respondent seems not to have any real interest in it. The Respondent seems not to offer any goods or services under the domain name. The website "www.autovista.com" diverts to a parking site, apparently maintained by the registrar, and offering new cars. The domain name is for sale at "www.digiforum.com" for 200,000 EUROs. The Complainant concludes that the Respondent has registered the domain name for the purpose of selling it further with valuable consideration in excess of the out-of-pocket costs. Moreover there are no elements that could justify the Respondent`s registration of the domain name under the Policy. As the Respondent has now turned to have Finnish background, it is apparent that Respondent is well aware of Complainant and has registered and used the domain name in bad faith.

B. Respondent

The Respondent submits the disputed domain name may be considered an established trade symbol under the Finnish Trademark Act (7/1964). The domain name <autovista.com> has been registered to the Respondent on November 9, 1998. The Complaint is dated July 7, 2009. The span between the registration of the disputed domain name and the action of the proprietor of the registered trademark is nearly eleven (11) years. The Complainant was aware of the registration of the disputed domain name in 2005 and has remained passive until July 7, 2009. According to the Finnish Trademark Act the Complainant`s right to invoke its trademark rights in connection with the Policy is precluded.

The Respondent submits it has rights and legitimate interests in respect of the domain name. The webpage "www.autovista.com" is properly in business use and has been prepared and maintained by the Respondent. The website contains hyperlinks to CarPrices.com and InsWeb, the services with which persons who are looking for a new automobile may receive price, finance and insurance quotes. The Respondent says it has for several years conducted business with this traffic generator site by displaying advertisements that generate revenue on a pay-per-click basis. Consequently there is evidence of the Respondent`s use of the disputed domain name in connection with a bona fide offering of services. In accordance with paragraph 4 (c)(i) of the Policy, the circumstances described above in the Respondent`s view demonstrate that the Respondent has legitimate interests in respect of the domain name <autovista.com> for the purpose of paragraph 4(a)(ii).

It is further submitted that the operations model of the Respondent is in every way to avoid conflicts with pre-existing trademark or service mark rights with respect to its domain name registrations. With the exception of the present dispute the Respondent has not received a single complaint about its domain names. The Respondent has always had the policy of making search queries into the United States of America and United Kingdom trademark databases, which are the Respondent`s primary market areas. Prior to receiving notice of the dispute, the Respondent has not been aware of the registered trademark AUTOVISTA. The Respondent asserts and presents evidence that at the time of the domain name registration, in 1998, the Respondent duly and properly made enquiries with regard to its primary market area, anglophone market. The Respondent submits that for this reason it had not, regardless of its location, any reason to check up the Finnish trademark database.

According to the Trademark Electronic Search System of the United States Patent and Trademark Office, an application for the word mark AUTOVISTA was first filed on December 9, 1999 (by an unrelated entity, trademark no longer valid) and the application for the Complainant`s Community trademark was filed on June 20, 2005. Both of these applications are subsequent to the registration of the disputed domain name. Consequently, there has not been an intentional registration of a domain name that is identical to a trademark in which the Complainant has rights inasmuch as the Respondent had made the customary trademark searches with regard to the primary market areas, accordingly the Respondent asserts that <autovista.com> has been registered in genuine good faith.

The Respondent submits that the domain name was not registered for the purpose of selling the domain name registration to the Complainant or to a competitor thereof, for the Respondent was not even aware of the Complainant at the time of registration. The mere offering, selling or other marketing of a domain name is not, in accordance with paragraph 4(b) of the Policy, evidence of registration and use in bad faith. None of the circumstances set forth in paragraphs 4(b)(i) – 4(b)(iv) are present in this case, whereupon the domain name cannot be deemed to be registered and used in bad faith.

As regards the United States address of the Respondent referred to in the Complaint, the Respondent simply used the Registration Provider`s ordinary Whois privacy service, which is commonly used in international domain name registrations in order to prevent the misuse of contact information. According to the Respondent the Complainant has been well aware of the Respondent`s nationality, inasmuch as a person who was and still is in the employment of the Complainant already in 2005 bid for the disputed domain. The Respondent rejected the offer. The e-mail correspondence attached to the Response is in the Finnish language.

The Respondent concludes that:

(a) the Complainant has due to long-time passivity waived its right to invoke the trademark rights thereof under the Finnish Trademark Act;

(b) the Respondent has registered and is using the disputed domain name in connection with offering of services in good faith and thereby has legitimate rights therein; and

(c) the Respondent has registered the domain name with due care and diligence and is not using the domain name in contravention of the Policy.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove the following elements:

(i) that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and

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

(iii) that the disputed domain name has been registered and is being used in bad faith.

Under paragraph 15(a) of the Rules, this Panel must "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".

A. Identical or Confusingly Similar

The disputed domain name <autovista.com> contains the Complainant`s trademark AUTOVISTA in its entirety. The ".com" suffix denoting the top level domain does not affect the determination that the disputed domain name <autovista.com> is identical to Complainant`s trademark AUTOVISTA.

B. Rights or Legitimate Interests

According to the Complainant the Respondent has no rights or legitimate interests in respect of the domain name since it has no trademark rights and had not properly used the domain name.

The Respondent has invoked to Finnish Trademark Act and claimed that it has an established trademark right to the disputed domain name and that the Complainant`s right to prevent the use of the domain name is precluded since the Complainant has not reacted to the use in reasonable time. Under the Finnish law it is possible to have unregistered trademark rights. The Respondent has however not supported its assertions in this respect with any evidence. The Panel thus approves the Complainant`s assertion that the Respondent does not on the present record appear to have any trademark rights. The lack of proved trademark right as such does however not preclude the possibility of the Respondent having legitimate interest in the domain name within the terms of the Policy.

The Complainant has claimed that the domain name is not properly used and has asserted that the website at the disputed domain name is an empty parking site maintained by the registrar and that the domain name is only registered for the purpose of selling it further with valuable consideration in excess of the out-of-pocket costs. The Respondent has rejected these allegations and asserted that the website is maintained by the Respondent at the disputed domain name. The page contains hyperlinks to CarPrices.com and InsWeb that provide price, finance and insurance quotes for persons who are looking for new car. The Respondent says it has for several years conducted business with this traffic generator site by displaying advertisements that generate revenue on a pay-per-click basis.

Pursuant to paragraph 10(a) of the Rules, the Panel considers itself competent to independently visit the Respondent`s website in order to obtain more information about the use of the domain name. The visit to the website and public records relating to the website assures the Panel that the website belongs to and is maintained by the Respondent.

The Panel notes that business with traffic generator site is not itself illegitimate activity. The Panel finds and also refers to the next heading of this decision that the Complainant has failed to demonstrate that the website at the disputed domain name is used for the purpose of exploiting the fame and goodwill of the Complainant`s trademarks in a way constituting use in bad faith. In this Panel`s view nothing in the Policy can be construed as requiring a person registering a domain name to carry out a prior trademark search in every country of the world for conflicting trademark rights, as advocated by the Complainant. As stated in Red Nacional De Los Ferrocarriles Espanoles v. Ox90, WIPO Case No. D2001-0981 and several other UDRP decisions, the Policy does not impose on a respondent any affirmative obligation to make extensive trademark searches, but panels have noted that a respondent cannot ignore the obvious. See, e.g, mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141. Panels have also questioned whether the mere offering of pay-per click services may be sufficient of itself to constitute a bona fide offering of goods or services. See, e.g., Trade Me Limited v. Vertical Axis Inc, WIPO Case No. D2009-0093. At the same time it must also be taken into account in this case that the concept of constructive notice has generally not been held to apply under the Policy. It is therefore of questionable application in the present case, and in order for the Complainant to be able to succeed, the Complainant would need to present evidence from which the Panel could infer actual knowledge and intent to target Complainant`s mark. In this case the Respondent has expressly denied actual knowledge and asserted that its services are directed to other market area than Finland. The Complainant has not provided any evidence of facts or circumstances which would allow the Panel to make the inference that the Respondent knew of the Finnish trademark registration, such as a direct relationship between the parties or a wide reputation of or extensive publicity in connection with the Complainant`s trademark or activities at the time of registration of the disputed domain name. Nor has it been shown that the Respondent would be particularly active in the Finnish market despite it being located in Finland.

The Panel refers also to its findings under the next heading of this decision, and in view of same, finds it unnecessary to make a finding under the second element of the Policy.

C. Registered and Used in Bad Faith

The third clause of paragraph 4(a) has two separate parts; the Complainant must demonstrate registration and use in bad faith. To establish registration in bad faith, the Complainant, which bears the burden of proof under each Policy element, is required to show that the registration was undertaken with knowledge of Complainant and its mark, Janet E.Sidewater v. Worldwide Media Inc., WIPO Case No. D2006-1281 and that the Respondent "targeted" the Complainant. Gold Medal Travel Group plc v. Damir Kruzicevic, WIPO Case No. D2007-1902. Given the nature of Policy proceedings, with no discovery or witness confrontation, this may be proven inferentially. Net2phone Inc v. Delta Three Inc., WIPO Case No. D2007-0644 fn. 8 – 12. This is especially so in this case, as the Respondent has expressly denied actual knowledge.

The Complainant asserts that the Respondent registered and used the domain name in bad faith for the purpose of selling it further with valuable consideration in excess of the out-of pocket costs. The Panel notes that the mere offering, selling or other marketing of domain names is not, of itself, sufficient evidence of registration and use in bad faith. Neither is the Panel convinced in this particular case of the Complainant`s assertion on the Respondent`s use of false contact details, based solely on the Respondent`s apparent prior use of a whois privacy service. Previous panels have recognized that such services are in wide use, and the use of same without more is not of itself necessarily evidence of bad faith. See, e.g., The iFranchise Group v. Jay Bean / MDNH, Inc. /Moniker Privacy Services [23658], WIPO Case No. D2007-1438. In any event, the Complainant appears to have brought the present Complaint against the true registrant and proper Respondent.

Here, the Panel finds on the available record, that the Respondent, at the time of registration of the disputed domain name, did not specifically target the Complainant and its trademark. The Panel notes that the disputed domain name was registered after the Finnish trademark registration was issued but the lapse of time between these registrations was relatively short. The Respondent has submitted proof of trademark searches on the USPTO showing no valid trademark registrations for the term "autovista" in the United States where the Respondent asserts it is operating. The Complainant has not presented any evidence showing Respondent`s activity in the Finnish market at that time. The Respondent has also submitted proof of it having rejected the Complainant`s request to buy the disputed domain name in 2005. In the same year the Complainant filed the community trademark application for AUTOVISTA. The Panel also notes that, even though not a dictionary term, the disputed domain name is not clearly arbitrary but consists of the two terms "auto" and "vista", the use of which may be considered reasonable in the business area the Respondent is using it.

Accordingly, the Panel finds it is not demonstrated that the Respondent at the time of registration of the domain name <autovista.com> in 1998 knew of the existence of the Finnish trademark AUTOVISTA, and that there is no evidence establishing that the domain name <autovista.com> has been chosen by the Respondent with the intent to profit or otherwise abuse Complainant`s trademark rights. The Panel therefore finds that the Complainant has failed in this case to prove the third element pursuant to paragraph 4(a) of the Policy.

The Complainant has not proven on the present record that Respondent registered the disputed domain name in bad faith. The Policy`s requirements are conjunctive, so the Complaint must be denied.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Kristiina Harenko
Sole Panelist

Dated: August 24, 2009