WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Minolta Co., Ltd. v. Cupcake City
Case No. D2000-1291
1. The Parties
The Complainant is: Minolta Co., Ltd., a Japanese Corporation with its principal place of business at 3-13, 2-Chome, Azuchi-Machi, Osaka Kokusai Building, Chuo-Ku, Osaka 541-8556, Japan. Complainant is represented by: Colleen C. Butler, Esq.; Brinks Hofer Gilson & Lione, 455 N. Cityfront Plaza Dr., Suite 3600, Chicago, Illinois 60601.
The Respondent is: Cupcake City, 957 Bristol Pike, Suite D-6, Andalusia, Pennsylvania 19020. Respondent�s administrative contact is Mr. John Zuccarini.
2. The Domain Name and Registrar
The domain name in dispute is . The registrar for the disputed domain name is Network Solutions, Inc. (NSI) of 505 Huntmar Park Drive, Herndon, Virginia 20170.
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center�s Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the Supplemental Rules).
The Complaint was filed on October 2, 2000. Per the Rules Section 3(b)(iv), the Complainant elected to have a decision by a three member panel. On October 5, 2000, the Center requested that the registrar, NSI, check and report back on the registrant for the domain name . On October 6, 2000, NSI reported to the Center that the registrant was the Respondent: Cupcake City and its administrative contact John Zuccarini.
On October 9, 2000, the Center forwarded a copy of the Complaint to Respondent by registered mail and e-mail, and this proceeding officially began. Respondent did not file a response and was declared in default on November 1, 2000.
The last member of the three-member panel submitted a Declaration of Impartiality and Independence on December 13, 2000, and the Center proceeded to appoint the Panel on December 18, 2000.
The Panel finds the Center has adhered to the Policy and the Rules in administering this proceeding.
This Decision was due by December 31, 2000 but, owing to Complainant�s having specified a single member panel while paying for a three member panel, extra time was needed to clarify matters, and the Center extended the due date to January 19, 2001.
4. Factual Background
Complainant is a Japanese corporation that manufactures cameras and other optical equipment such as photocopying machines and scanners. Complainant has been marketing its products in the United States since the 1950�s, and in Japan for some years before that. In 1962 Complainant adopted the corporate name Minolta Camera Kabushiki Kaisha (Minolta Camera Co., Ltd.) and used that name until 1994, when it adopted the name Minolta Kabushiki Kaisha (Minolta Co., Ltd.). On June 27, 1999, Respondent registered the disputed domain name . Around April 7, 2000, Complainant wrote to Respondent asserting Complainant�s trademark rights and insisting that Respondent turn the domain name over to Complainant.
Respondent never answered Complainant, and Complainant seeks to gain possession of the disputed domain name through this proceeding.
5. The Parties� Contentions
Complainant�s Contentions:
- The trademark is world famous thanks to Complainant�s sales of cameras and other optical goods.
- Complainant owns numerous trademark registrations in the United States on the principal register for the name "minolta".
- The disputed domain name, , is confusingly similar to Complainant�s trademark since "the domain name is merely a combination of Complainant�s famous trademark �minolta� and the generic term for the principal or primary goods for which the mark is used" (the Complaint, p.7).
- Respondent has no legitimate rights or interests in the disputed domain name.
- Respondent registered and maintained the disputed domain name registration in bad faith since Respondent must have known at the time of registration that he was appropriating a world famous trademark.
- Respondent has registered numerous other famous trademarks as domain names, and this also is evidence of its bad faith.
- Respondent was in bad faith because its administrative contact, John Zuccarini, is a wholeseller of internet domain names.
- Respondent is in bad faith because it is using the disputed domain name to generate traffic to Respondent�s web site so that it can in turn sell advertising.
Respondent�s Contentions:
Respondent did not file a response and is in default in this proceeding.
6. Discussion and Findings
In order for Complainant to prevail and have the disputed domain name transferred to it, Complainant must prove the following (the Policy, para 4(a)(i-iii):
- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name: and
- the domain name was registered and is being used in bad faith
Identical or Confusingly Similar
The Complainant has produced exemplary copies of its "minolta" trademarks registered on the principal register in the United States of America (among which, registration no. 1,369,673 of November 12, 1985 for video cameras and accessories; or registration no. 1,218, 009 of November 30, 1982 for photographic cameras). Respondent, in registering the disputed domain name , incorporated Complainant�s trademark "minolta" for the identical class of goods, ie, cameras. The "com" is not part of the domain name for the purposes of trademark analysis (EAuto, L.L.C. v. Eauto Parts, WIPO Case No. D2000-0096) Thus, Respondent�s disputed domain name is identical to Complainant�s trademark, and the Panel so finds.
Legitimate Rights or Interests
As Claimant alleges in its Complaint, and as it wrote to Respondent on April 7, 2000 (the Complaint, Annex K), Respondent has no rights to Complainant�s domain name. Respondent is in default in these proceedings and thus the Panel feels it appropriate to accept Complainant�s allegations as true because they are substantiated in the record (the Rules (10))(Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
The Panel finds Respondent has no rights or legitimate interests in respect of the domain name.
Registered and Used in Bad Faith
Complainant has shown that Respondent has used Complainant�s famous trademark as a domain name to drive traffic to Respondent�s website. Once the navigators arrive at Respondent�s website, they are "mousetrapped" into viewing advertising before they are released to search for a minolta site that really does have cameras and related optical equipment. The Panel believes it necessarily follows that Respondent charges money for this advertising, and therefore has registered and is using the disputed domain name in contravention of the Policy (4(b)(iv)). (Yahoo!, Inc. v. Cupcake Patrol and John Zuccarini, WIPO Case No. D2000-0928; Abercrombie & Fitch Stores, Inc. and A & F Trademark, Inc. v. John Zuccarini d/b/a Cupcake Patrol, WIPO Case No. D2000-1004)
7. Decision
In view of the discussion above, and in accordance with ICANN Policy para 4(i) and Rule (15), the Panel orders that the disputed domain name, , be transferred to the Complainant, Minolta Co., Ltd. The domain name is confusingly similar to Complainant�s trademark. The Respondent, Cupcake City, has no rights or legitimate interests in the domain name, and registered and was using it in bad faith.
Dennis A. Foster
Presiding Panelist
David H. Bernstein
Panelist
Christopher K. Larus
Panelist
Dated:
Full & Egal Universal Law Academy