WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Konica Corporation, Minolta Kabushiki Kaisha aka Minolta Co., Ltd. v. IC
Case No. D2003-0112
1. The Parties
The Complainants are Konica Corporation of Tokyo, Japan; and Minolta Kabushiki Kaisha aka Minolta Co., Ltd. of Osaka, Japan. Both companies are represented by Mr. Keith E Danish of Trademark & Patent Counselors of America, PC of New York, United States of America.
The Respondent is IC of London, United Kingdom of Great Britain and Northern Ireland. The Respondent has not filed a Response and is not represented.
2. The Domain Name and Registrar
The disputed domain name is registered with Easyspace.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 13, 2003. On February 14, 2003, the Center transmitted by email to Easyspace a request for registrar verification in connection with the domain name at issue. On February 17, 2003, Easyspace 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 paragraphs 2(a) and 4(a) of the Rules, the Center on February 19, 2003, formally notified the Respondent of the Complaint, and the proceedings commenced. In accordance with paragraph 5(a) of the Rules, the due date for a Response was March 11, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on March 13, 2003.
The Center appointed the Honourable Sir Ian Barker QC of Auckland, New Zealand, Mr. Alan Limbury of Sydney, Australia and Mr. Jonathan Turner of London, United Kingdom as panelists in this matter on March 25, 2003. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
4. Factual Background
The Complainant, Konica Corporation (the "First Complainant"), was founded in 1893. It became known as "Konica Corporation" in 1987. It first used KONICA as a trademark in 1948, and it has used and registered this trademark in many countries, including the United Kingdom for many years. The First Complainant operates a world-wide business, primarily in optics and electronics materials, office document equipment, consumer imaging products, medical imaging products, graphic imaging, and R&D and technology development. It has over 17,000 employees, over 28,000 shareholders, and many domestic and overseas subsidiaries which use the word "konica" in their trade names. The First Complainant uses the domain names and as addresses for websites which promote its business.
The Complainant Minolta Kabushiki Kaisha, also known as Minolta Co., Ltd (the "Second Complainant") was founded in 1928. It became Minolta Co., Ltd. in 1962. It first used MINOLTA as a trademark in 1937. It has used and registered this trademark in many countries, including the United Kingdom for many years. It operates a world-wide business, primarily in image information products, optical products, instrument systems and other businesses. It has over 21,000 employees, over 33,000 shareholders, and many domestic and overseas subsidiaries which use the word "minolta" in their trade names. The net sales of the Second Complainant and its subsidiaries for the fiscal year ending March 31, 2002, were in excess of $2.8 billion. The Second Complainant uses the domain names and as addresses for websites which promote its business.
The disputed domain name was registered by the Respondent on January 7, 2003, long after the marks of both Complainants had been registered and after the domain names mentioned above had been registered.
Neither Complainant has given the Respondent any licence to use any of the registered trademarks.
On the same day as the Complainants announced their intention to merge their enterprises and to adopt a new "Konica Minolta" trademark and trade name, the Respondent registered the disputed domain name.
The disputed domain name is not in use but resolves to the Easyspace home page of the Registrar.
5. Parties� Contentions
Complainant:
Identical or Confusingly Similar
The disputed domain name is identical to the registered trademarks of both Complainants. Its use in the combined form in the disputed domain name is such as to make the disputed domain name confusingly similar to both marks.
Illegitimacy
The Complainants give no right or licence to the Respondent to use the trademarks owned by either of them. The Respondent does not come within any of the provisions of paragraph 4(c) of the Policy. Its passive holding of the disputed domain name confirms that it has no rights or legitimate interests in the disputed domain name.
Bad Faith
The Respondent registered the disputed domain name with constructive notice of the Complainants� U.K. trademark registrations.
The marks KONICA and MINOLTA have been used and promoted in many countries worldwide. The registration by the Respondent of the disputed domain name on the very day the merger between the Complainants was announced was an opportunistic act by the Respondent which sought to disrupt the Complainants� business by preventing them from using a domain name which would reflect their new corporate name and mark. The Respondent probably registered the disputed domain name in the expectation of selling it to the Complainants. Other UDRP decisions have found bad faith use and registration where a domain name identical to the marks of the components of a merging entity had been registered around the time of the merger announcement.
By having the disputed domain name resolving to the Registrar�s Easyspace homepage, the disputed domain name is being associated with the commercial activities of the Registrar without the consent of the Complainants. Such use will inevitably cause "initial interest" confusion. It is not possible to conceive of a plausible circumstance in which the Respondent could use the disputed domain name without violating the Complainants� rights. Its conduct constitutes trademark infringement under U.K. law.
Respondent
The Respondent has filed no submissions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to:
"decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these rules and any rules and principles of law that it deems applicable".
The burden for the Complainant, under paragraph 4(a) of the Policy, is to show:
- 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; and
- that the Respondent has no rights or legitimate interests in respect of the domain names; and
- that the domain names have been registered and is being used by the Respondent in bad faith.
Identical or Confusingly Similar
The two components of the disputed domain name are identical to the marks of the respective Complainants. The Panel considers that the domain name is confusingly similar to the Complainants� marks. Persons, worldwide, accessing the disputed domain name would be bound to think that the domain name had a connection with either Complainant or with the merged entity. The Panel decides that the domain name is confusingly similar to the Complainants� marks. The first criterion is proved.
Illegitimacy
The Panel decides that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has never suggested to the contrary. Paragraph 4(c) of the Policy gives defences to a Respondent. There is no evidence to justify consideration of any of these.
Bad Faith
Paragraph 4(b) of the Policy states:
"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired 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 or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location."
It should be noted that the circumstances of bad faith are not limited to the above.
The Panel considers that the Respondent has registered and used the domain name in "bad faith". The expression "konicaminolta" is so obviously connected with two well-known multinationals that its very use by someone with no connection with either Complainant reeks of opportunistic bad faith. Particularly so, when the domain name registration was effected on the same day as the merger of the two Complainants had been announced. The inference from the Respondent�s joinder of the names of Konica and Minolta shows that it was positioning itself to capitalize on the joinder of two multinational giants. Particularly so, when both Complainants owned trademarks and carried on business in the U.K., where the Respondent is domiciled.
WIPO jurisprudence has dealt with similar situations before � with the same result: For example:
(a) Pharmacia & Upjohn AB v. M., WIPO Case No. D2000-0446 (August 1, 2000). Registration of the name was made shortly after two multinational pharmaceutical companies announced a merger;
(b) ABB Asea Brown Boveri Limited v. Aseabrownboveri, WIPO Case No. D2001-0107 (April 18, 2001). Likewise, the disputed domain name combined the registered marks of two merging multinationals;
(c) SMS Demag AG v. Seung Gon, Kim, WIPO Case No. D2000-1434 (January 19, 2001). The disputed domain name combining the marks of two merging multinationals had been registered by the Respondent two days after the merger was announced;
(d) A.P. Moller v. Web Society, WIPO Case No. D2000-0135 (April 15, 2000). Merger negotiations began in autumn 1998 and Respondent registered a domain name combining the marks of the merging entities on December 14, 1998. He then offered to sell the names to the Complainant at a high price. Respondent held the name passively; and
(e) Repsol YPF, S.A. v. COMn.com, WIPO Case No. D2001-0741 (August 23, 2001). Complainant was an amalgam of two oil, chemical and gas companies � one Spanish (Repsol) the other Argentinean (YPF). The Respondent�s explanation that the disputed domain name was a translation of Korean words meaning "about pine needle" was rejected as straining credulity. The website was not developed. Complainant had a registered mark in Korea and some commercial presence in that country.
All these cases show that opportunistic registration of the name or likely name of a new entity to be formed from the merger of two multinationals is a glaring example of bad faith registration and use.
Accordingly, for the various reasons discussed above, the Panel finds that the disputed domain name has been registered and is being used by the Respondent in bad faith.
7. Other Considerations
Although entitled to consider principles of law deemed applicable, the Panel finds it unnecessary to do so in any depth. The jurisprudence which is being rapidly developed by a wide variety of panelists world-wide under the Policy provides a fruitful source of precedent which is unnecessary to repeat here. Blatant "cyber-squatting", such as is disclosed in this case, should be discouraged. A clearer example would be hard to find.
It is noteworthy that the approach taken by the Panel in this case, and by other panels in the WIPO cases cited above, is consistent with Court decisions in similar circumstances. Glaxo Plc v. Glaxowellcome Ltd [1996] FSR 388 is a decision of the English High Court. Glaxo and Wellcome, two leading pharmaceutical companies, announced a takeover of Glaxo by Wellcome on January 23, 1995. It was also announced that the name of the new enterprise would be Glazowellcome. On January 23, 1995, the defendants registered a company called Glaxowellcome Ltd. Lightman J. held that the defendants were engaged in a dishonest scheme to appropriate the plaintiff�s goodwill in the two names. The Court would not countenance a "pre-emptive strike" such as this, especially when there was a demand by the defendants for money to change the name. He granted a mandatory injunction against the defendants requiring them to change the name.
This case is apposite in the present circumstances. Although the action there under attack was opportunistic registration of a company with the same name as the new entity - 2 days after the merger announcement - the principle must apply equally to registration of a domain name in similar circumstances. The case is an important guide to how the English Courts would treat the Respondent�s conduct, the Respondent being domiciled in the U.K. and subject to the jurisdiction of the English Courts.
8. Decision
For the foregoing reasons, the Panel decides:
(a) that the domain name registered by the Respondent is confusingly similar to the trademarks to which the Complainants have rights;
(b) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) that the domain name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name be transferred to Konica Corporation.
Hon. Sir Ian Barker QC
Presiding Panelist
Mr. Alan L Limbury
Panelist
Mr. Jonathan Turner
Panelist
Dated: March 31, 2003
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