WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Daifuku, Co., Ltd. v. X Herb Garden
Case No. D2003-0075
1. The Parties
The Complainant is Daifuku, Co., Ltd., C/O Natsuo Makino, 2-14-5, Shiba, Minato-ku, Tokyo 105-0014, of Japan, represented by Masuda, Funai, Eifert & Mitchell, Ltd. of United States of America.
The Respondent is X Herb Garden, Tatsuya Ito of the Tatsuya Group, 5-220-13 Yamamoto-cho, Naka-ward, Yokohama, Kanagawa, 231, of Japan.
2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, Inc. Registrar.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 31, 2003. On February 3, 2003, the Center transmitted by email to Network Solutions, Inc. Registrar a request for registrar verification in connection with the domain name at issue. On February 6, 2003, Network Solutions, Inc. Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 February 12, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was March 4, 2003. The Response was filed with the Center on March 4, 2003.
The Center appointed Keiji Kondo as the sole panelist in this matter on March 18, 2003. 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.
4. Factual Background
The Complainant is the owner of the following trademark registrations in the United States, Japan and other countries:
"Daifuku," United States, Registration No. 1523197, registration date February 7, 1989, conveyors and automated storage machines; automatic guided vehicles (registration includes logo);
"Daifuku," Japan, Registration No. 4244741, registration date February 26, 1999, Class 20;
"Daifuku," Japan, Registration No. 4386887, registration date May 26, 2000, Classes 6, 7, 9, 11, 12, 20, 35, 37, 41 and 42;
"Daifuku," Japan, Registration No. 0975991, registration date August 16, 1972, Classes 7, 8, 9, 10, 11, 12, 17 and 21 (registration includes logo);
"Daifuku," Japan, Registration No. 2667282, registration date May 31, 1994, Class 12 (registration includes logo);
"Daifuku," Japan, Registration No. 2685771, registration date July 29, 1994, Class 11 (registration includes logo);
"Daifuku," Japan, Registration No. 2693157, registration date August 31, 1994, Class 9 (registration includes logo);
"Daifuku," Japan, Registration No. 4165684, registration date July 10, 1998, Class 6;
"Daifuku" (in English, Japanese and Chinese characters), Republic of Korea, Registration Nos. 39333 and 39334, registration date September 24, 1974;
"Daifuku," Republic of China, Registration No. 43090, registration date October 1, 1970;
"Daifuku," Malaysia, Registration No. M/99186, registration date August 3, 1991, automatic bridgeless stacker cranes; automatically controlled and self-propelling carriers included in Class 7; storage retrieval machines; mechanized apparatus and systems for installation in a warehouse; automatic and mechanized apparatus and systems for handling materials stored in a warehouse; machinery and parts thereof; parts and fittings included in Class 7 for all the aforesaid goods (registration includes logo);
"Daifuku," Indonesia, Registration No. 183898, registration date February 21, 1983, Class 7: material handling apparatus or machine including belt, chain or roller conveyors and self propelled vehicles or conveyors which are controlled by computer, and other conveying vehicles and the like (registration includes logo);
"Daifuku," Singapore, Registration No. 1524/83, registration date March 26, 1983, Class 7, machines and machine tools (registration includes logo);
"Daifuku," Malaysia, Registration No. M/99183, registration date March 22, 1983, storage structure and shelves for use in a warehouse; parts and fittings thereof included in Class 6 (registration includes logo);
"Daifuku," Mexico, Registration No. 42295, registration date May 12, 1992, Class 7 (including machines for use in transportation and storage, robots and related parts) (registration includes logo);
"Daifuku," Italy, Registration No. 00628488, registration date December 18, 1991, including for machines for use in transportation and storage, robots and related parts (registration includes logo);
"Daifuku," People�s Republic of China, Registration No. 696715, registration date July 7, 1994;
"Daifuku," Canada, Registration No. 430378, registration date July 15, 1994, machines all for use in transport, handling, picking, retrieval of goods, namely automatic guided vehicles (AGVs) for large batch transportation of parts around the shop floor, freight elevators, wheeled carts, engine testing apparatus consisting of material handling systems and automated storage/retrieval systems for use throughout assembly/inspection lines on engines and transmissions, pallets for storage, retrieval and transport, dollies, mobile sorting vehicles; conveyors; storage machines, namely complete computerized automated warehouses for storage and retrieval of goods, multi-use rotary storage racks and retrieval systems, slide racks, mobile racks, pallet racks; robots, cranes, hoists, lifts; sorters, namely industrial conveyor sorting equipment; parts and fittings for all the aforesaid wares (registration includes logo);
"Daifuku," Belgium, Netherlands and Luxembourg, Registration No. 538646, registration date June 1994, Classes 6, 7, 9, 12 and 20 (registration includes logo);
"Daifuku," Germany, Registration No. 2028596, registration date January 22, 1993, Class 7 (including for automated transportation and storage machinery) (registration includes logo);
"Daifuku," United Kingdom, Registration No. 1146614, registration date September 4, 1992, Class 7: Machines for all use in transport, handling and/or retrieval of goods; conveyors, storage machines and robots; parts and fittings for all the aforesaid goods (registration includes logo);
"Daifuku," Spain, Registration No. 1677625, registration date October 5, 1992, Class 7 (including machines for use in transport, handling and/or retrieval of goods; robots; elevators) (registration includes logo);
"Daifuku," Republic of Korea, Registration No. 273232, registration date September 1, 1993 (registration includes logo);
"Daifuku," Thailand, Registration No. TM4515, registration date August 25, 1993 (registration includes logo);
"Daifuku," France, Registration No. 1711817, registration date December 13, 1991, Class 7 (registration includes logo).
"Daifuku," which appears in the above trademark registrations is a Japanese term. In Japanese, "daifuku" means great fortune, good luck or a rice cake stuffed with bean jam. The word itself is not well known outside of Japan.
The Complainant has not licensed or otherwise granted the Respondent any right or permission to use any trade name or trademark of the Complainant or its subsidiaries that includes the term used by the Domain Name or otherwise.
5. Parties� Contentions
A. Complainant
The Domain Name is identical or confusingly similar to the Complainant�s registered trademarks. Certain of the registered trademarks include a logo of the Complainant, a looping line with an arrow at each end, but the logo portion is not relevant for purposes of the Policy or this Complaint.
The Respondent is not making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The current non-substantive use of the Domain Name frustrates legitimate customers and other constituencies of the Complainant who try to locate the goods, services and information of the Complainant and its subsidiaries and tarnishes the trademarks and good will of the Complainant and its subsidiaries.
In addition, the Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, given that the Respondent has engaged in a pattern of registering domain names for little or no apparent or substantive purpose.
B. Respondent
Both of the two meanings of "daifuku" in Japanese are well known, comfortable and familiar. Then, many individuals and various types and sizes of businesses are using the word for various purposes such as their business name, product name and service name in Japan.
Some of businesses have registered the word or it�s combination as their domain name, and are using them for their business.
The Complainant is not famous in Japan and other countries. There are few opportunities for people to see the Complainant itself, its products and its services. Furthermore, it is quite difficult for anyone to connect the word "daifuku" to the Complainant or its products and service.
The Complainant has not shown any evidence that it has exclusive rights to use the word daifuku itself.
The respondent registered the disputed domain and some others in order to create portal sites targeted for small business. However, their preparations are still in progress and delayed.
The Respondent has never thought to sell his domains.
The Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademarks or service marks at issue.
6. Discussion and Findings
A. Identical or Confusingly Similar
The domain name is clearly confusingly similar to Complainant's trademarks Daifuku and + Daifuku. For the question of similarity in the context of the Policy it is not relevant whether the trademark is famous, nor is it relevant for which goods or services the trademark has been registered, or whether other identical or similar trademarks exist.
B. Rights or Legitimate Interests
First, the Panel finds no evidence that the Respondent used, or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute. The manner in which the domain name is currently used is shown in Annex IX of the Complaint. The text appearing on the web page reads as follows:
What is daifuku?
it is traditional style soft rice cake with sweet cream.
it has many variation such as
mame daifuku, ichigo daifuku, soy bean daifuku, coffie daifuku and etc...
the original meaning was big fortune.
then, the current meaning was named by the original one.
in edo era, one of the popular account book was named daifuku-cho. cho means notebook.
Although the Respondent asserts that he registered the domain name and other domain names in order to create portal sites targeted for small business, the above-cited text shows that the domain name is not used for offering goods or services.
Second, it is undisputed that the Respondent has not been commonly known by the domain name.
Third, the Respondent is not making a legitimate noncommercial or fair use of the domain name. The Respondent denies his intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant�s trademark or service mark, and the Panel agrees that there is no evidence showing that the Respondent has such intent. However, the Panel does not think that holding a domain name to create a portal site in the future by merely displaying a meaningless page constitutes a legitimate noncommercial or fair use of the domain name.
Therefore, the Panel holds that the Respondent has no rights or legitimate interests in respect of the domain name.
C. Registered and Used in Bad Faith
First, the Panel has found no circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant. The Respondent's response to the Complainant's notice is found in Annex X of the Complaint. It shows the Respondent's firm belief that the word "daifuku" should be in the public domain, but the Respondent makes no offer for transfer of the domain name, nor a request for money.
Second, the Panel has found no evidence showing that the Respondent has registered the domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name. The word "daifuku" is commonly used in Japan, and the Complainant is not well known to ordinary people unless they belong to the same industry as the Complainant. Therefore, it is unlikely that they would associate the word "daifuku" with the Complainant. The Panel has found no evidence that the Respondent had known the Complainant's trademarks before he registered the domain name, and intended to prevent the Complainant from reflecting the mark in the corresponding domain name.
Third, the Panel has found no evidence showing that the Respondent has registered the domain name primarily for the purpose of disrupting the business of the Complainant. It is undisputed that the Complainant and the Respondent are not competitors. The Panel sees no reason why the Respondent intends to disrupt the business of the Complainant.
Fourth, the Panel has found no evidence showing that the use of the domain name by the Respondent is an attempt to attract, for commercial gain, Internet users to its Website 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 its Website or location or of a product or service on its Website or location. Annex 1 of the Response shows various examples of use of the word "daifuku" on the Internet. Annex 2 of the Response shows more than ten URLs in which "daifuku" constitutes the principal part. Since the word "daifuku" is usually associated with daifuku-mochi, or Japanese rice cake stuffed with bean jam, people would not regard the "daifuku" part of those URLs as designating a single source of goods or services. The Panel sees no likelihood of confusion between the Complainant and the Respondent as to the source, sponsorship, affiliation or endorsement of the Respondent's website.
For these reasons, the Panel concludes that the Complainant has not proven that the Respondent registered or has used the domain name in bad faith.
7. Decision
For all the foregoing reasons, the Panel denies the Complainant's request that registration of the domain name be transferred to the Complainant. The Complaint is denied.
Keiji Kondo
Sole Panelist
Dated: April 1, 2003
Full & Egal Universal Law Academy