WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Komatsu Ltd. and Komatsu America International Company v. RKWeb Ltd.
Case No. D2000-0995
1. The Parties
The complainants are Komatsu Ltd., a corporation of Japan, of 2-3-6 Akasaka Minato-Ku, Tokyo, Japan and Komatsu America International Company of 440 North Fairway Drive, Vernon Hills, Illinois 60061-8112, United States of America, a partnership between two United States corporations ultimately owned by Komatsu Ltd., namely Komatsu America Corporation and U.S. Komatsu, Inc.
The respondent is RKWeb Ltd., of 348. SOK. No. 4/3 B7 BLOK � Karakusunlar, Ankara 06530, Turkey.
2. The Domain Names and Registrar
The disputed domain names are "" and "" and the registrar in each case is Network Solutions Inc., of Herndon, Virginia, USA.
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, in accordance with the Rules for the Policy, approved by ICANN on October 24, 1999 ("the Rules") and the Supplemental Rules for the Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The complaint was received by the Center by email on August 9, 2000 and in hard copy on August 14, 2000. It was acknowledged on August 15, 2000. On August 23, 2000, registration details were sought from the registrar. On August 24, 2000, registration details were confirmed by the registrar. On August 30, 2000, the Center drew to the complainant�s attention what appeared to be typographical errors in the complaint and, on August 31, 2000, the complainant corrected these. On August 31, 2000 the Center satisfied itself that the complainant had complied with all formal requirements, including payment of the prescribed fee. On September 19, 2000, the Center printed out copies of the disputed web pages and formally notified the respondent by post/courier, fax and email of the complaint and of the commencement of this administrative proceeding and sent copies to the complainant, the registrar and ICANN.
The complainant notified the Center on September 30, 2000 that the hard copy of the complaint which the complainant had sent by courier to the respondent upon the filing of the complaint had been returned as undeliverable. The hard copy of the complaint sent to the respondent by the Center was delivered to the respondent on September 22, 2000. The receipt was signed by A Kilic.
The last day specified in the notice for a response was October 8, 2000. On October 12, 2000 the Center notified the respondent that it was in default and that the Center would proceed to appoint an administrative panel.
On October 31, 2000, the Center invited Alan L. Limbury to serve as panelist. That day, Mr. Limbury accepted the appointment and submitted a Statement of Acceptance and Declaration of Impartiality and Independence. On November 3, 2000 the Center transmitted the case file to the panel and notified the parties of the projected decision date of November 17, 2000.
The language of the proceeding was English.
The panel is satisfied that the complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the panel agrees with the Center�s assessment concerning the complaint�s compliance with the formal requirements; the complaint was properly notified in accordance with paragraph 2(a) of the Rules; no response was filed and the administrative panel was properly constituted.
4. Factual Background (uncontested facts)
"Komatsu" means "little pine tree" in Japanese. Since 1960 Komatsu Ltd. and companies associated with it have used the trademark KOMATSU in relation to construction machinery such as earth moving vehicles and a wide range of related products, equipment and parts.
Komatsu Ltd. is the owner of United States registrations of the mark KOMATSU, Nos. 2041661, 1199389, 1071304 and 0900177 covering a wide variety of goods and services in international classes 7, 9 and 12. The earliest of these registrations is 1970.
On November 2, 1999, Komatsu America International Company applied in the United States to register the service mark KOMATSU REMARKETING in class 37 in respect of services in the field of maintenance and support of construction equipment and buying, selling and marketing used construction equipment. The dates of first use and first use in commerce specified in the application were August 4, 1999.
The respondent registered the disputed domain name "" on March 10, 1999 and the disputed domain name "" on April 4,1999. Both names are listed for sale on GreatD, with offers invited. On August 8, 2000, when the complainant printed out the relevant pages from the GreatD site, the details for "" included the words "very good domains for a spare parts dealer!"
The registration details for "" include the statement "Registrant: RKWeb Ltd. � THIS DOMAIN IS FOR SALE (KOMATSU-PARTS-DOM)." In addition to the disputed domain names, the respondent has registered 16 other domain names, of which 3 have similar "for sale" statements. The remaining domain names include "", "" and "", to name some of the least explicit ones.
5. Parties� Contentions
A. Complainant
Identity or confusing similarity
The disputed domain names contain the word KOMATSU, which is identical to the complainants� registered trademarks. They also contain the word PARTS. The description of many of the goods in respect of which the mark is registered include parts. The complainants sell parts using the registered trademark KOMATSU. Adding the word PARTS after the word KOMATSU in the domain names contributes to the confusion over the source of the complainants� goods.
Illegitimacy
The respondent has no rights or legitimate interests in respect of the disputed domain names, which were registered primarily for the purpose of selling or transferring them to the owners of the trademark or a competitor for a price exceeding the costs of registration.
Bad faith
The disputed domain names were registered in bad faith. The respondent has tarnished the KOMATSU trademark by placing it for sale in a portfolio of pornographic domain names offered for sale.
B. Respondent
There was no response or other communication from the respondent.
6. Discussion and Findings
To qualify for cancellation or transfer, a complainant must prove each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is 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 domain name; and,
(iii) the disputed domain name has been registered and is being used in bad faith.
Identity or confusing similarity
Each of the domain names "" and "" is virtually identical to the Komatsu Ltd�s registered trade mark KOMATSU. See Minnesota Mining & Mfg. Co. v. Taylor, 21 F. Supp. 2d 1003, 1005 (D. Minn. 1998) (finding "" and "Post-It" to be the same); Interstellar Starship Servs. Ltd. v. Epix, Inc., 983 F. Supp. 1331, 1335 (D. Or. 1997) ("In the context of Internet use, [��] is the same mark as [�EPIX�]"); Planned Parenthood Federation of America, Inc. v. Bucci, 1997 U.S. Dist. LEXIS 3338, No. 97-0629 (S.D.N.Y. Mar. 24, 1997) (concluding that "" and "Planned Parenthood" were essentially identical), aff�d, 152 F.3d 920 (2d Cir. 1998), cert. denied, 119 S. Ct. 90 (1998).
Neither the suffix "parts" nor the suffix ".com" detract from the overall impression of the dominant part of the name in each case, namely the trademark KOMATSU, recognizable as denoting the goods of the complainants.
Virtual or essential identity is sufficient for the purposes of paragraph 4(a)(i) of the Policy. The panel finds the complainants have established both sufficient identity and confusing similarity.
Illegitimacy
Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish the registrant�s rights or legitimate interests to the disputed domain name. The respondent has made no attempt to demonstrate any of these or any other circumstances of legitimacy and the panel may draw appropriate inferences from this.
Nevertheless, the complainants have the onus of proof on all issues.
In State Farm Mutual Automobile Insurance Company v. Rocky E. Faw (Case FA94971) the respondent was found to have no legitimate interests in respect of the domain name where he had neither used nor developed the domain name for a legitimate noncommercial or fair purpose and was not using the domain name in connection with a bona fide offering of goods or services. See also Leland Stanford Junior University v. Zedlar Transcription & Translation (Case FA94970).
Here there has been no use other than to offer the disputed domain names for sale to the highest bidder. As mentioned below in relation to the topic of bad faith, it is more likely than not that the respondent knew of the complainants� trademark at the time of registration of the disputed domain names.
Under these circumstances, the panel finds the complainants to have established that the respondent has no rights or legitimate interests in either of the disputed domain names.
Bad faith
In SportSoft Golf, Inc. v. Hale Irwin�s Golfers� Passport (Case FA94956) a finding of bad faith was made where the respondent "knew or should have known" of the registration and use of the trade mark prior to registering the domain name. Likewise Marriott International, Inc. v. John Marriot (Case FA94737); Canada Inc. v. Sandro Ursino (Case AF-0211) and Centeon L.L.C./Aventis Behring L.L.C. v. E (Case FA95037).
The registration details of "" indicate it was the respondent�s intention to sell that name at the time it was registered, a few days after the respondent had registered "". The inclusion of the statement THIS DOMAIN IS FOR SALE as part of the identity of the registrant ensures that the statement is reproduced when a search is done against the name of the respondent for its registered domain names.
The only use to which the disputed domain names have been put, on the evidence, is to offer them for sale by auction through GreatD. On the GreatDomains page offering for sale "", the reference to "very good domains for a spare parts dealer!" indicates an awareness on the part of the respondent of the trademark KOMATSU and its use in relation to original equipment for which spare parts are normally required.
The panel finds it more likely than not that the respondent knew of the registration and use of the trademark KOMATSU when it registered the disputed domain names and that the respondent registered them primarily for the purpose of selling them to one of the complainants or to a competitor of the complainants for a price exceeding the costs of registration.
Accordingly, the complainants have established that the disputed domain names were registered and are being used in bad faith, within the meaning of paragraph 4(b)(i) of the Policy.
7. Decision
Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the panel requires the domain names "" and "" to be transferred to the complainants.
Alan L. Limbury
Presiding Panelist
Dated: November 13, 2000
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