WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kabushiki Kaisha Aleph v. D
Case No. D2000-1660
1. The Parties
1.1 The Complainant is Kabushiki Kaisha Aleph of 1-26, Kikusui 6-Jo 3-Chome, Shiroishi-Ku, Sapporo-Shi, Hokkaido, Japan.
1.2 The Respondent is D of 2698 Emerson St., Palo Alto, CA 94002, U.S.A.
2. The Domain Names And Registrar
2.1 The domain name at issue is . The domain name is registered with Network Solutions, Inc. of 505 Huntmar Park Drive, Herndon, Virginia 20170, U.S.A. ("NSI").
3. Procedural History
3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") on November 30, 2000. The signed original Complaint was received by WIPO Center on December 4, 2000. An acknowledgment of receipt was sent by WIPO Center to the Complainant on December 4, 2000. An amendment to the Complaint was submitted to WIPO Center on December 15, 2000.
3.2 On December 6, 2000, WIPO Center transmitted via e-mail a Request for Registrar Verification to NSI.
3.3 By email dated December 11, 2000, NSI advised WIPO Center as follows:
3.3.1 NSI had received a copy of the Complaint from the Complainant.
3.3.2 NSI is the Registrar of the domain name registration .
3.3.3 The Respondent, D, is the current registrant of said domain name. The contact details including the administrative contact, the technical contact and the billing contact are as follows:
Name: D
Postal Address: 2698 Emerson St.
Palo Alto, CA 94002
United States
Phone: (650) 327-2377
Fax: (650) 327-2377
E-mail: chris@DOOZI.COM
3.3.4 NSI�s 4.0 Service Agreement is in effect.
3.3.5 The domain name registration is "Active."
3.4 Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, WIPO Center on December 15, 2000, sent by courier and email a notification of Complaint and Commencement of Administrative Proceedings to the Respondent. A copy was also emailed to NSI and ICANN.
3.5 The Respondent was advised that a Response to the Complaint was required within 20 calendar days (i.e., by January 3, 2001).
3.6 The Respondent sent to WIPO Center a response dated January 2, 2001, by e-mail only. A copy of the Response was also emailed to the Complainant on the same date.
3.7 An acknowledgment of receipt was sent by WIPO Center to the Respondent on January 11, 2001.
3.8 The Complainant elected to have its Complaint resolved by a single-member Panel, and it has duly paid the amount required of it to WIPO Center.
3.9 On January 22, 2001, WIPO Center notified the appointment of the Panel, to the Complainant and the Respondent.
4. Factual Background
4.1 The Complainant is the owner of the following trademark registrations for the mark BIKKURI DONKEY:
(i) Mark: (BIKKURI DONKEY in Japanese equivalent)
Japanese Trademark Registration Nos. 1799834, 1853957, 1884402, 3307396, 4042993 and 4304947
(ii) Mark: BIKKURI DONKEY
(a) Hong Kong Trademark Registration No. 7520
(b) Chinese Trademark Registration No. 791995
(c) Singaporean Trademark Registration No. 255/94
(d) Taiwanese Trademark Registration No. 74870
(e) Thai Trademark Registration No. SM4098
(f) Korean Trademark Registration No. 27369
4.2 There are 197 BIKKURI DONKEY restaurants in Japan with 42 million and 165 thousand customers in 1999.
4.3 The Respondent is not a licensee of the Complaint, nor is it otherwise authorized to use the Complainant�s trademark.
4.4 The Respondent did not contact the Complainant for selling, renting or transferring the domain name at issue.
5. Parties Contentions
5.1 The Complainant asserted that the Respondent could not have adopted the domain name at issue originally because the combination of a Japanese word "BIKKURI" and an English word "DONKEY" is very unique.
5.2 The Complainant asserted that the Respondent must have known the Complainant�s restaurant and registered the domain name with no intention of use but to take advantage of the Complainant�s necessity of the domain name.
5.3 The Complainant asserted that the domain name at issue is not in use by the Respondent.
5.4 The Respondent asserted that the BIKKURIDONKEY.COM web site is not intended to target Internet users in Japan or other Asian countries but, rather, is intended to target Internet users solely in the United States, where the Complainant has no trademark right.
5.5 The Respondent asserted that they are using the domain name to establish a web site that hosts a political forum for debate and information on US residents interested in politics that affect the Japanese speaking community.
6 Discussion And Findings
6.1 The Complainant, under Paragraph 4(a) of the ICANN Policy, is required to show:
6.1.1 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;
6.1.2 That the Respondent has no right or legitimate interests with respect to the domain name; and
6.1.3 That the domain name has been registered and is being used in bad faith.
6.2 The Panel determines that the Respondent's domain name at issue is identical or confusingly similar to the BIKKURIDONKEY trademark to which the Complainant has right because, with the exception of the ".com" suffix, the domain name at issue is identical to the transliteration of the Complainant's Japanese Trademark and to the trademark in other countries.
6.3 The panel reviews whether the domain name has been registered and is being used in bad faith by the Respondent.
6.3.1 The Complainant asserted that the Respondent could not have adopted the domain name originally because the combination of the Japanese word "BIKKURI" and the English word "DONKEY" is very unique; and that since the domain name is not in use by the Respondent, it is very likely that the Respondent must have registered the domain name with no intention to use, but to sell, rent or transfer the domain name, knowing that the Complainant would need such domain name. However, the uniqueness of the combination of words by itself is not sufficient to show the Respondent's bad faith. Further, as the Complainant admitted, the Respondent has not made any contacts with the Complainant for selling, renting or transferring the domain name to the Complainant.
6.3.2 The Complainant neither asserted nor demonstrated that the Respondent has engaged in a pattern of registering domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name.
6.3.3 The Complainant neither asserted nor showed that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor, or that the Respondent has intentionally attempted to attract, for commercial 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. Rather, the Respondent asserted that they are using the domain name to establish a web site of no commercial nature and having no relationship with other people's business.
6.3.4 For the foregoing reasons, the Panel decides that Complainant has failed to prove that Respondent has registered and is using the domain name in bad faith.
6.4 The Complainant asserted that the Respondent has no right or legitimate interests with respect to the domain name because (i) the Complainant has not permitted the Respondent to use the name or mark at issue; and (ii) the Respondent does not provide any goods or services under the mark BIKKURI DONKEY. In response, the Respondent asserted that they are using the domain name to establish a web site that hosts a political forum for debate and information about US residents interested in politics that affect the Japanese speaking community. The Respondent could, and should, have produced evidence demonstrating the preparation of such use. Although the Respondent did not submit any demonstrable preparations to use the domain name except for a bare allegation, the Panel opts not to determine whether the Respondent has right or legitimate interests in the domain name.
7 decision
The Panel hereby determines that the Complainant's request to transfer the domain name to the Complainant be denied.
Young Kim
Sole Panelist
Dated: February 28, 2001
Full & Egal Universal Law Academy