WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim
Case No. D2003-0400
1. The Parties
The Complainant is Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.), of Tokyo, Japan, represented by Moon Yung Chung Patent Law Office, Republic of Korea.
The Respondent is Jongchan Kim, of Seoul, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. dba China-C.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 26, 2003. That day the Center transmitted by email to OnlineNic, Inc. dba China-C a request for registrar verification in connection with the domain name at issue. On May 27, 2003, OnlineNic, Inc. dba China-C transmitted by email to the Center its verification response, which confirmed that the Respondent is listed as the registrant and as the administrative, billing, and technical contact; provided the Respondent�s contact details and stated that the Uniform Domain Name Dispute Resolution Policy (the "Policy") applies to the disputed domain name and that the language of the registration agreement is English. The Center verified that the Complaint satisfied the formal requirements of 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 June 5, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was June 25, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on June 26, 2003.
The Center appointed Alan L. Limbury, Boh Young Hwang and Clive L. Elliott as panelists in this matter on July 10, 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 the Rules, paragraph 7.
The language of the proceeding is English, being the language of the registration agreement.
4. Factual Background (undisputed facts)
Established in 1946, the Complainant has for many years manufactured and sold throughout the world a wide variety of products, including electronic watches, under the trademark CASIO, which has been registered by the Complainant in many countries, including in particular since 1976, in the Republic of Korea (South Korea) for electronic watches and other electronic products (No. 45500).
Before the disputed domain name was registered, the mark CASIO had been recognized as a well-known trademark by the Japanese Patent Office and was also well-known in South Korea. Further, it had been found in proceedings under the Policy to be well-known in the world: Casio Keisanki Kabushiki Kaisha v. Netfuture, WIPO Case No. DBIZ2002-00198.
The Respondent registered the disputed domain name on August 6, 2002, and has operated under that domain name a website selling CASIO electronic watches and watches under other trademarks such as SEIKO and NIKE, which are not manufactured or distributed by the Complainant.
5. Parties� Contentions
A. Complainant
The disputed domain name is identical or confusingly similar to the trademark CASIO in which the Complainant has rights.
The Respondent has no rights or legitimate interests in respect of the domain name.
When conducting its investigation, the Complainant could not find any evidence of any circumstances within paragraph 4(c) of the Policy.
The Respondent has misappropriated the Complainant�s well-known or famous CASIO trademark and registered the domain name in order to prevent the Complainant from reflecting its mark in a corresponding domain name.
When consumers visit the Respondent�s website by using the domain name, there is a likelihood of confusion that the website is being operated by the Complainant. In addition, as the Respondent has sold other trademarked goods, such as SEIKO and NIKE watches, under the same website, consumers are likely to be confused that even the SEIKO and NIKE watches come from the Complainant.
Thus the disputed domain name was registered primarily for the purpose of disrupting the business of the Complainant. And, by using the subject domain name as above-mentioned, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent�s web site 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.
Accordingly, it is clear that the disputed domain name was registered and is being used in bad faith.
B. Respondent
The Respondent did not reply to the Complainant�s contentions.
6. Discussion and Findings
To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Failure to file a response
A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL International plc v. Mark Freeman, WIPO Case No. D2000-1080 and Alta Vista Company v. Grandtotal Finances Limited et al., WIPO Case No. D2000-0848.
A. Identical or Confusingly Similar
The disputed domain name is not identical to the Complainant�s mark.
Many cases have established that the test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the other marketing and use factors usually considered in trademark infringement or unfair competition cases. See BWT Brands, Inc. and British American Tobacco (Brands), Inc v. NABR, WIPO Case No.D2001-1480; Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662; Koninklijke Philips Electronics N.V. v. In Seo Kim, WIPO Case No. D2001-1195; Energy Source Inc. v. Your Energy Source, NAF Case No. FA 96364; Vivendi Universal v. Mr. Jay David Sallen and GO247.COM, Inc., WIPO Case No.D2001-1121, and the cases there cited.
In Microsoft Corporation v. M aka Tarek Ahmed (WIPO Case No. D2000-0548) contributing factors to the likelihood of confusion were held to be the visual similarity between the domain name and the complainant�s mark and the mark being strong and immediately recognizable.
The Panel finds the disputed domain name to be confusingly similar to the Complainant�s strong and immediately recognizable trademark CASIO and the addition of the generic and/or descriptive term "shop" to do little to alter that conclusion, particularly for a website that functions as an online store or shop. See Deutsche Telekom AG v. Timmy Comeau, WIPO Case No. D2003-0377. Finally, on this issue, the Panel notes that watches are goods identical with the designated goods of the Complainant's trademark CASIO and the name in which it has a well-established reputation.
The Complainant has established this aspect of its case.
B. Rights or Legitimate Interests
Given the uncontradicted evidence before the Panel that the mark CASIO was widely known and recognized before the disputed domain name was registered, particularly in connection with electronic watches, and that the Respondent has used the disputed domain name to operate a website selling electronic watches, the Panel infers that the Respondent was fully aware of the Complainant�s mark when he registered the disputed domain name.
There is no evidence that the Complainant authorized the Respondent to register the disputed domain name or to use the CASIO trademark, with or without immaterial additions or variants. These circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interest in the disputed domain name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web (WIPO Case No. D2000-0624) and the cases there cited. The Respondent has made no such showing.
The Panel accordingly concludes that the Respondent has no rights or legitimate interest in respect of the disputed domain name. The Complainant has established this element of its case.
C. Registered and Used in Bad Faith
The Panel finds that, knowing of the Complainant�s well established reputation in the trademark CASIO (the evidence on this being clear and uncontradicted), the Respondent, by using the disputed domain name to lead to a website promoting, for commercial gain, goods identical with the designated goods of the Complainant�s trademark, has intentionally sought to confuse internet users as to the source, sponsorship, affiliation or endorsement of his website.
Further, by using the disputed domain name to lead to a website promoting, for commercial gain, goods of competitors of the Complainant, the Respondent has intentionally sought to confuse Internet visitors as to products on his website and sought improperly to divert business away from the Complainant. This is evidence of both bad faith registration and bad faith use within paragraph 4(b)(iv) of the Policy.
The Complainant has established this element of its case.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Alan L. Limbury
Presiding Panelist
Boh Young Hwang
Panelist
Clive L. Elliott
Panelist
Dated: July 15, 2003
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