WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Internet Initiative Japan Inc. v. Win System Co., Ltd.
Case No. D2000-1485
1. The Parties
The Complainant is Internet Initiative Japan, Inc., a company incorporated in Japan, having its principal place of business at 3-13, Kanda Nishiki-cho, Chiyoda-ku, Tokyo, Japan.
The Respondent is Win System Co., Ltd., a company incorporated in Japan, having its principal place of business at Tokyo City Bldg., 1-33-6, Komaba, Meguro-ku, Tokyo, Japan.
2. The Domain Name and Registrar
The Domain Name at issue is . It is registered with Network Solutions Inc. ("NSI"), 505 Hunt Park Drive, Herndon, Virginia 20170, U.S.A.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 31, 2000, by e-mail, and on November 3, 2000, in hardcopy.
The Acknowledgement of Receipt of the Complaint was sent by the Center on November 9, 2000.
The Center sent a Request for Registrar Verification to NSI on November 13, 2000. On November 16, 2000, the Center received from NSI a Verification Response confirming that the Registrar is the registrar of the said domain name, that the Respondent is the current registrant of the said domain name, and that the said domain name is in "active" status.
The Center, having confirmed that the formal requirements are complied, sent a Notification of the Complaint and Commencement of Administrative Proceeding to the Respondent on November 20, 2000.
The Respondent filed a Response by e-mail and in hardcopy on December 8 and 11, 2000, respectively, and the Center sent its Acknowledgement of Receipt on December 10, 2000.
The Center sent a notification of the Appointment of Administrative Panel and Projected Decision Date on December 20, 2000.
4. Factual Background
A. Facts Asserted by the Complaint
The facts stated in the Complaint, under V. "Factual and Legal Grounds", are as follows:
(1) IIJ4U
The Complainant is a leading Internet service provider in Japan. The Complainant is often called by an abbreviated form, "IIJ", of its name in Japan. The Complainant offers a comprehensive range of Internet access services and Internet-related services to its customers in Japan. The Complainant offers various dial-up access services including IIJ4U. IIJ4U is a service for individual users which includes Internet access and 5 megabytes of disc space for personal Web pages and e-mail account options for multiple users. The Complainant commenced IIJ4U in December 1996. The Complainant registered the Domain Name on October 22, 1996 (see Annex E to the Complaint), and has used it for such service since the start of the service. Due to its high quality in terms of its speed and customer support, IIJ4U is one of the most prominent dial-up services especially for frequent individual users.
The Complainant announced and advertised IIJ4U in newspapers and magazines many times since November 1996 (see Annex D1, D2, F1, F2, F3, H1 and H2 to the Complaint). Further, the Complainant advertised IIJ4U service not only in Internet magazines but also weekly news magazines in order to attract individuals who had not used Internet. As a result of such advertisement and the Complainant's efforts to provide good service, the Complainant's service, IIJ4U, has obtained No. 1 position three times in reader's polls in July 1997, January 1998 and July 1998. As a result IIJ4U has been one of the most famous and popular Internet services for the general public in Japan since July 1997.
(2) Trademark
As a service mark for the above IIJ4U, the Complainant owns the registered trademark "IIJ4U" in Japan, the registration number of which is 4173787. The classification of goods or services and designated goods or services of the "IIJ4U" are as follows: Communication by computer terminals, cellular telephone communication, telex communication, communication by telegram, communication by telephone, facsimile communication, radio/telephone paging services, news services for communication media, rental/leasing of communication equipment, including telephones/facsimile machines (see Annex C1 and C2 to the Complaint). The date of this registration, i.e., August 7, 1998, was before the date of registration of the domain name by the Respondent (November 30, 1998). As above-mentioned, the Complainant has used this trademark as the brand of IIJ4U, the Internet providing service for individuals since December 1996 (see Annex D1 to the Complaint).
B. Facts Asserted by the Respondent
The Respondents states the following facts in its Response, under B, "Response to Statements and Allegations Made in Complaint":
(1) Respondent
The Respondent is one of the pioneer Internet service providers in Japan. The Respondent started Internet services in August 1993. In 1994, there were only three other providers in Japan: Japan ENS AT & T (InterSpin), the Complainant and Fujitsu (Info Web) (see Exhibit A to the Response). The Respondent has approximately 160,000 customers for its Internet Services. The Respondent offers, among others, virtual domain server service to its customers and obtains domain names of their choice in the Respondent's name and rent servers to them so that they can operate home pages or mailing lists (see Exhibit B to the Response).
The Respondent's management policy is that it not only makes profits but contributes to the society through its business activities. For example, the Respondent supports social welfare organizations by bearing Internet communication charges and applies discounted monthly fees to disabled members (see Exhibits Cl through C4 to the Response). The Respondent has competed with other Internet service providers in terms of services and technologies. The Respondent has never engaged in any activities that interrupt competitors' conduct of business, which are contrary to the Respondent's management policy.
(2) IIJ4U
The Respondent admits that the Complainant is an Internet service provider in Japan, that its name is often abbreviated as "IIJ" and that it offers a wide range of Internet-related services to its customers in Japan. The Respondent does not know that the Complainant commenced the IIJ4U dial-up access services in December 1996 and registered the domain name "" on October 22, 1996. The Respondent does not know that IIJ4U offers one of the most prominent dial-up services.
The Respondent does not know in detail the advertisements of IIJ4U that the Complainant makes in newspapers and magazines. The Respondent does not know that IIJ4U obtained No.1 position in readers' polls by the Net Navi in 1997 and 1998.
(3) Trademark
The Respondent does not know when the Complainant started to use "IIJ4U" as the brand of its Internet providing service for individuals.
5. Parties� Contentions
A. Complainant
The Complainant requests the Administrative Panel the issuance of a decision to effect the transfer of the Domain Name, , to the Complainant, in accordance with paragraph 4(b)(i) of the Policy, on the following grounds:
(1) The Domain Name is identical or confusingly similar to the Complainant's trademark "IIJ4U" as well as the Complainant's domain name.
(2) Since the mark "IIJ4U" is unique to the Complainant and the Complainant has never authorized or licensed its use by the Respondent, the Respondent cannot be said to have legitimately chosen the Domain Name unless it attempted to create an impression of an association with the Complainant. Since there has been no such authorized association, the Respondent's interests in the Domain Name cannot be said to be legitimate.
For these reasons, the Respondent should be considered as having no rights or legitimate interests in respect of the Domain Name .
(3) The fact that IIJ4U obtained No. 1 position in reader's polls three times, in July 1997, January 1998 and July 1998 (see Annex F1, F2 and F3 to the Complaint) clearly shows that the trademark "IIJ4U" has been well-known to Internet users in Japan as least since November 1998. The Respondent is also an Internet service provider and, therefore, it is unquestionable that the Respondent was aware of the trademark and Domain Name of at the time when it applied for the registration of .
Furthermore, the Respondent once was a user of the Complainant's dedicated line service (see Annex J1 to the Complaint). The Respondent failed to pay monthly fees, and, accordingly, the Complainant was forced to sue the Respondent for breach of contract on October 2, 1996, at the Tokyo District Court (see Annex J2 to the Complaint). Finally, both parties reached an attorney-negotiated settlement on October 21, 1998 (see Annex J3 to the Complaint). Soon after the settlement, the Domain Name was registered on November 30, 1998 (see Annex A to the Complaint), and has been used by the Respondent's web site (see Annex G to the Complaint).
Given the above chronological facts, the Respondent knew the Complainant and the Complainant's service "IIJ4U" at the time of registration of and the Respondent dared to register the Domain Name .
Based on these facts, the Domain Name was registered primarily for the purpose of disrupting the business of a competitor, i.e., the Complainant (Policy, para. 4(b)(iii)). Further, by using the Domain Name , the domain name registrant, the Respondent, intentionally attempted to attract, for financial gain, Internet users to the registrant's web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's web site or location or of a product or service on the registrant's web site or location (Policy, para. 4(b)(iv)).
Additionally, the Respondent has obtained domain name which are very similar to well-known Japanese companies and organizations. Such domain names include , , and , which are the names of NTT Docomo (cellular phone company), Tu-ka Group (cellular phone companies) and Sokagakkai (religious group) (see Annex K to the Complaint). Given such registration, it is highly possible that the Respondent has registered the Domain Name "primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark...... for valuable consideration......" (Policy, para. 4(b)(i)).
Accordingly, the Domain Name should be considered as having been registered and used in bad faith.
B. Respondent
Against the Complainant's contentions, the Respondent alleged as follows:
(1) The Respondent's Domain Name is not identical with the Complainant's trademark "IIJ4U". They are significantly different in that the Complainant's trademark is expressed in two lines, "IIJ" above and "4U" below (see Annex C to the Complaint), while the Respondent's Domain Name is expressed in a single line.
(2) The Respondent obtained the Domain Name at the request of an individual customer (the "Customer") as part of its virtual domain server service. The Customer has been using the Domain Name for purposes of the mailing list which is operated by the Customer for non-commercial purposes (see Exhibit D3 to the Response). "" is an abbreviation for the name of that mailing list, "Internet Information Japan for You". According to the Customer (see Exhibit D1 to the Response), he first applied to the Complainant for the rental of a server using the Domain Name . The Complainant rejected the application but suggested that, since the Complainant had no plan to use , the Customer use the Domain Name through another provider. The Complainant also suggested that the Customer expressly state the name of the mailing list "Internet Information Japan" to avoid confusion with the Complainant. The Customer has adopted this suggestion (see Annex G to the Complaint). Annex G to the Complaint is described as "printout of the Respondent's web" in the "Schedule of Annex" attached to the Complaint. However, this is, in fact, not a printout of the web site of the Respondent but the web site of the Customer's mailing list (www.). Any Internet users who are not members of the Customer's mailing list have no access to the pages of this web site other than the home page printed out in Annex G to the Complaint, as expressly stated in such Annex. In the Respondent's web site, no socialization of participation in the Customer's mailing list is made and there is no reference to that mailing list or any link to the web site of the Customer's mailing list. Since the Complainant itself has submitted a printout of the home page of the Respondent's web site as Annex I2 to the Complaint, the Complainant could have easily known these facts.
The Respondent has not used, and has no intention to use, the Domain Name for any purposes other than permitting the Customer to use the Domain Name for the above legitimate non-commercial purposes. The Respondent has not received from the Customer any compensation in connection with the Domain Name other than normal monthly fees for server rental service. Neither the Respondent nor the Customer has any intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant's trademark. Therefore, the Respondent has rights to and legitimate interests in the Domain Name .
(3) The Respondent denies the Complainant's allegations that the Domain Name was registered primarily for the purpose of disrupting the business of the Complainant and that, by using the Domain Name , the Respondent intentionally attempted to attract, for financial gain, Internet users to the Respondent's web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location or of a product or service on the Respondent's web site or location.
As stated above (in para. (2)), the Respondent has not used, and has no intention to use, the Domain Name for any purpose other than permitting the Customer to use the domain name for legitimate non-commercial purposes. Any Internet users who are not members of the Customer's mailing list have no access to the pages of the web site of this mailing list other than the home page. In the Respondent's web site, no solicitation of participation in the Customer's mailing list is made and there is no reference to that mailing list or any link to the web site of the Customer's mailing list. It would be impossible to disrupt the Complainant's business by such limited use of the Domain Name , not to mention that neither the Respondent nor the Customer has any such intention. In fact, the Complainant has not submitted any evidence that shows that its business has been disrupted by the use of the Domain Name by the Customer.
Also, the Respondent had or has no intention or plan to sell, rent or otherwise transfer the Domain Name to the Complainant or to a competitor of the Complainant. The Respondent has never contacted the Complainant in connection with the Domain Name since the Respondent obtained its registration in November, 1998. The Complainant attempts to support the above allegations by the following:
(i) The Complainant's trademark has been well-known to Internet users in Japan at latest since November 1998.
(ii) The Respondent is also an Internet service provider.
(iii) The Respondent once was user of the Complainant's dedicated line service. Soon after the settlement of the lawsuit brought by the Complainant against the Respondent, the Domain Name was registered on November 30, 1998.
(iv) The Respondent has obtained domain names which are very similar to well-known Japanese companies and organizations, such as , , , and .
None of these support the Complainant's allegations.
As to (i) and (ii) above, in light of the limited use of the Domain Name by the Customer, they do not establish "bad faith" on the part of the Respondent.
As to (iii) above, the circumstances under which the lawsuit referred to there was brought by the Complainant are as follows: The Respondent had received line service from the Complainant since about March 1994 but, because the speed of the Complainant's line was slower than required by the Respondent, the Respondent terminated the contract with the Complainant and received line service from another company in October 1995.
Nevertheless, the Complainant demanded fees for the line service thereafter and sued the Respondent, asserting that it continued to provide services. The case involved complicated issues, such as whether Internet services were in fact provided to the Respondent after October 1995 (i.e., packets were transmitted) and, if so, whether the Complainant was responsible for failure to ensure that they be transmitted entirely from the Respondent's new line service provider in accordance with the Respondent's instructions (see Exhibits E1 through E7 to the Response). That the case was not a suit simply for recovery of overdue monthly fees is demonstrated by the fact that the case continued for as long as two years from the filing of the complaint in October 1996 until it was settled in October 1998 (see Exhibit E8 to the Response), by the Respondent agreeing to pay an amount equal to a half of the amount claimed by the Complainant for amicable settlement.
While the line service contract with the Complainant was in effect, the business administration by the Complainant was sloppy as it is shown by the fact that the Complainant demanded monthly fees that had already been paid by the Respondent and that such demand for double payments occurred twice. At the time of the second of such instances, the Complainant submitted a letter of apology at the Respondent's demand (see Exhibit F to the Response). The Respondent believes that the above lawsuit was caused by the Complainant's careless business operations.
It is just a coincidence that the Respondent obtained the Domain Name in November 1998. It is simply because the Customer made a request for obtaining the domain name at that time (see Exhibit D1 to the Response).
As to (iv) above, the Respondent has obtained those domain names at the request of or with the permission of NTT DoCoMo, etc. With respect to , the Respondent obtained the permission from NTT DoCoMo in order to use that domain name in connection with the Respondent's packet service to its customers (see Exhibits G1 through G3 to the Response). With respect to the domain names and , the Respondent obtained these domain names as well as and at the request of The Seikyo Shimbun, the newspaper publisher belonging to the Sokagakkai group (see Exhibits H1 through H5 to the Response). The Seikyo Shimbun uses among these domain names (see Exhibit H6 to the Response).
An Internet service provider frequently obtains such domain names as requested by customers in the provider's name. The Complainant, as an Internet service provider, must know this practice. As the Complainant also knows that the Respondent is an Internet service provider, the Complainant should have considered this possibility before arguing as if the Respondent had obtained the domain names , , and without any request of the relevant organizations.
(4) In conclusion, the Complainant has no right to demand the transfer of the Domain Name which has been used by the Customer for two years for legitimate non-commercial purposes. See Policy, para. 4c.(iii).
For these reasons, the Respondent requests the Administrative Panel to deny the Complainant's demand for the transfer of the Domain Name at issue.
6. Discussion and Findings
Paragraph 4 (a) of the Policy requires the Complainant to prove that each of the following elements are present:
(1) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) that the domain name has been registered and is being used in bad faith.
The Panel shall examine whether or not the Domain Name at issue, , meets the above requirements as alleged by the Complainant in the light of the evidential materials attached to the Complaint and the Respondent's rebuttals and the accompanying exhibits.
It is an undisputed fact that both the Complainant and the Respondent are Internet service providers in Japan. The letters "IIJ" stands for the Complainant's company name in English, "Internet Initiative Japan", and the Complainant is often called by this acronym, and the Respondent admits this fact. The Complainant is the owner of a trademark "IIJ4U" registered in Japan (Reg. No. 4173787) for various services in Class No. 38, "Electric Communication". Annex C1 to the Complaint is a copy of page 479 of the JPO's Official Trademark Gazette which carries the Complainant's trademark "IIJ4U". According to the Official Trademark Gazette, the Complainant filed an application for trademark registration on November 27, 1996, and registration was effected on August 7, 1998. The Complaint mentions the registration date only, but the filing date is the controlling date in a priority contest under the Trademark Act of Japan (Law No. 127, 1959). The Response does not mention the Complainant's trademark registration of "IIJ4U", and, therefore, the Respondent seems to admit that the Complainant has the trademark right in "IIJ4U" for communication services in Class No. 38.
The Complainant obtained domain name registration for on October 22, 1996. Annex E to the Complaint is a copy of the JPNIC Whois Gateway database carrying this information. The Response simply says that the Respondent does not know this fact.
The Complainant started its IIJ4U services in December 1996. The Response simply states that the Respondent does not know this fact. The Domain Name at issue, was registered on November 30, 1998.
(1) Confusing Similarity of the Domain Name
As to the first requirement provided in paragraph 4(a) of the Policy, the Panel finds that the dominant part of the Domain Name at issue, being , is confusingly similar, if not identical, to the Complainant's registered trademark "IIJ4U". In addition, the dominant part of the Domain Name at issue is identical to the third level domain, , of the Complainant's domain name registered with the Japan Network Information Center, Inc. (JAPNIC). The Respondent argues that the Domain Name at issue is significantly different from the Complainant's trademark because the latter is indicated in two lines, "IIJ" part above and "4U" part below. This argument is not persuasive. Although the Complainant's trademark "IIJ4U" is shown in two lines in the JPO's Official Trademark Gazette, the Complainant has been using this trademark, indicated in a strait line, for various promotional materials including Internet magazines (see Annex D1, F1 and F2 to the Complaint). Thus, the showing of the Complainant's trademark in two lines in the Official Trademark Gazette is not a determinative factor in the finding of similarity with the Domain Name at issue. Similarity between two marks must be judged as to their respective appearances (gaikan), appellations (shoko) and meanings (kannen) taken together. See, The Trademark Examination Standards compiled by the JPO Trademark Division (rev. ed. 2000) at 27 (providing guidelines for the application of Article 4(1) (xi) of the Trademark Act). In the instant case, the "iij4u" part of the Domain Name at issue is identical to the Complainant's trademark in that both marks consist of the same four letters of alphabet arranged in the same order and combined with a numeral "4" in the same manner and both marks can be called in the same way. In addition, the only meaning that the word "iij4u" has is the secondary meaning acquired by the Complainant's trademark.
(2) Respondent's Lack of Rights or Legitimate Interests
As to the second requirement under paragraph 4(a) of the Policy, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name at issue. The trademark "IIJ4U" is a coined word representing nothing but the Complainant's Internet providing service. The Complainant's adoption, trademark registration and actual use of the word "IIJ4U" precedes the Respondent's registration of the Domain Name at issue. The Respondent does not deny this fact. The Respondent simply contends that it has not used, and has no intention to use, the Domain Name for any purposes other than permitting its customer to use for non-commercial purposes. Such an evasive statement seems to represent the Respondent's tacit admission of its lack of rights or legitimate interests in the Domain Name. If the Domain Name at issue is actually used by the Respondent, or the Respondents permits any third party to use it, the Complainant would be able to enjoin the Respondent on the ground of trademark infringement or unfair competition. In the recent case of K.K. Jaccs v. Y.K. Nihonkai Pact, Chitekizaisanken Hanketsusokuho (Toyama District Court, December 6, 2000), the court enjoined the defendant's use of its domain name, "", for its business of selling and leasing of portable toilet equipment on the ground that the third level domain "jaccs" is similar to the plaintiff's trademark "JACCS", registered for its consumer credit service business, and the defendant's use of its domain name constitutes an act of unfair competition falling under Article 2(1)(ii) of the Unfair Competition Prevention Act (Law No. 48, 1993).
(3) Respondent's Bad Faith
As to the third requirement under paragraph 4(a) of the Policy, the Panel finds that the Domain Name at issue has been registered by the Respondent in bad faith. The Respondent admits that "IIJ" is an acronym of the Complainant's company name, but, with respect to the Complainant's trademark "IIJ4U" and its Domain Name , the Respondent simply denies its knowledge thereof. However, the Respondent, being in the same business of Internet providing service, must have been aware of the Complainant's extensive promotional efforts for its Internet providing service under the trademark "IIJ4U" as evidenced by Internet magazines circulated in Japan (see Annex D1, F1 and F2 to the Complaint).
7. Decision
Based on the above findings, the Panel hereby decides that the registration of the Domain Name at issue, , shall be transferred to the Complainant, Internet Initiative Japan Inc.
Teruo Doi
Sole Panelist
Date: January 9, 2001
Full & Egal Universal Law Academy