WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Shimano, Inc. v. Mr. Dirk Willing
Case No. D2003-0458
1. The Parties
The Complainant is Shimano, Inc., Osaka of Japan, represented by Wallinger & Partner of Germany.
The Respondent is Mr. Dirk Willing, of Dülmen, Germany.
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 June 13, 2003.
On June 16, 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 June 18, 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.
On July 4, 2003, the Complainant requested to suspend the proceeding since an agreement was reached with the Respondent on the basis of which the disputed domain name was about to be transferred to the Complainant. On July 8, 2003, the Center notified the Suspension of the Administrative proceeding. On August 7, 2003, the Complainant requested a further suspension of the proceeding and the Center granted the extension of the suspension on August 8, 2003.
On September 8, 2003, the Complainant requested to re-institute the proceeding.
In response to a notification by the Center sent on June 27, 2003, that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 15, 2003. The Center verified that the Complaint together with the amendment to 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 September 16, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was October 6, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on October 8, 2003.
The Center appointed Edoardo Fano as the sole panelist in this matter on October 28, 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.
The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of the Respondent�s default in responding to the Complaint).
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), "to employ reasonably available means calculated to achieve actual notice to Respondent". Therefore, the Panel shall issue its decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of the Respondent�s response.
The language of the proceeding is English, being the language of the Registration Agreement.
4. Factual Background
The Complainant is Shimano, Inc., a Japanese manufacturing company internationally well-known in the field of high quality bicycle components (among which bicycle gears, bicycle brakes, bicycle pedals, bicycle cassettes, bicycle hubs, etc.) which are worldwide advertised and distributed under the registered trademark SHIMANO.
Among others, the Complainant is the owner of the following trademark registrations:
- German registration for SHIMANO No. DE 931.615;
- German registration for SHIMANO No. DD 651.093;
- Community registration for SHIMANO No. 001.788.827;
- Community registration for SHIMANO No. 001.880.640;
- Community registration for SHIMANO No. 001.008.226.
The Complainant enjoys also company name rights in the wording "Shimano Europa", since Shimano Europa GmbH is a German company founded in 1972, and duly registered: Shimano Europa GmbH, which is a 100% affiliate of the Shimano Group belonging to the Holding and parent company Shimano Inc. and is the Complainant�s European trade base for the sale of bicycle parts in Europe, has duly authorized the Complainant to protect and exercise its company name.
Mr. Shozaburo Shimano established the company Shimano Iron Works in 1921, beginning the production of the original Shimano freewheel, exported since 1931. From 1965 to 1998, Shimano established companies in United States of America, Germany, Singapore, Malaysia, Indonesia, Republic of China, Italy.
The Respondent�s domain name was registered on January 24, 2002. It pointed to a website in German language through which the Respondent was advertising and selling bicycles and bicycle parts.
5. Parties� Contentions
A. Complainant
The disputed domain name is identical to the company name of the German company Shimano Europa GmbH and its partially identical to the Complainant�s trademark SHIMANO.
The Complainant has neither licensed nor otherwise permitted the Respondent to use its trademark and company name.
Respondent has no legitimate interest in the use of the protected name SHIMANO. He is not a registered Shimano dealer. As it can be seen in the contents of the website, the Respondent offers "Willing-made"-bicycles and "schoolbikes".
The Respondent sells his own products "Willing-made" under the disputed domain name. The Respondent is neither known under the domain name "shimano-europa" nor is he authorized to use the protected trademark and company name "Shimano Europa".
The Respondent sells also products of a competitor of the Complainant, namely Sachs, under the disputed domain name, where a customer would expect to find information about the Complainant and its distribution in Europe, or a website authorized by the Complainant, instead of a small German bicycle dealer who sells his own brands in his local region.
Moreover, the Respondent is not known for Europe-wide sales. His website is drafted in the German language and is consequently not addressed to customers throughout Europe.
The domain name is therefore misleading.
The Complainant is known all over the world for its high quality bicycle components and its trademark is worldwide well known in the bicycle business.
The Respondent registered and uses the domain name in bad faith since he sells his own products ("Willing-made") under the disputed domain name and, being a bicycle dealer, is well aware of the Complainant�s well known trademark and company name.
When asked to transfer the disputed domain name to the Complainant, the Respondent did not reply to the registered letter he received and did not reply to the reminder letter.
After having filed the present Complaint, on June 30, 2003, the Complainant received a signed cancellation and assignment declaration of the Respondent by means of which the latter undertook to cancel the disputed domain name and transfer it to the Complainant. For this reason the Complainant requested twice the suspension of the proceeding, after which, since the Respondent did not comply with his obligation, the Complainant requested to re-institute the proceeding.
The Respondent has registered the disputed domain name intentionally in order to attract Internet-users for commercial gain, to take profit from the well known company name "Shimano Europa" and well known trademark SHIMANO. This is evidence of bad faith.
B. Respondent
The Respondent did not reply to the Complainant�s contentions and is in default: no exceptional circumstances explaining the default have been put forward.
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, in accordance with paragraph 14(b) of the Rules (see also Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL International plc v. Mark Freeman, WIPO Case No. D2000-1080; Alta Vista Company v. Grandtotal Finances Limited et al., WIPO Case No. D2000-0848).
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three tests which a Complainant must satisfy in order to succeed:
(i) the domain name is identical or confusingly similar to a trade mark 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 domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
As far as the first of these tests is concerned, the Panel finds that the Complainant is the owner of the trademark SHIMANO both by registration and acquired reputation and it also enjoys company name rights in the wording "Shimano-Europa".
The disputed domain name is confusingly similar to the trademark SHIMANO and identical to the company name Shimano Europa.
Even considering only the Complainant�s trademark rights, strictly in accordance with Paragraph 4 (a)(i) of the Policy (the domain name is "identical or confusingly similar to a trademark or service mark in which the Complainant has rights"), the disputed domain name is undoubtedly confusingly similar to the trademark SHIMANO, also because, as previously stated by the relevant Panel in a similar case involving the domain names , , , , "all of the additions to the trade marked word are for the geographical suffix or prefix "europe" or its close variant ("euro"). Geographical additions do not alter the underlying meaning of a domain name, so as to avoid confusing similarity" (Nike, Inc. v. Jaeik Jung, WIPO Case No. D2000-1471, referring also to previous cases, namely Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; Wal-Mart Stores, Inc. v. Yongsoo Hwang, NO-WALMART and NO-WALMART.COM, WIPO Case No. D2000-0838; AltaVista Company v. S.M.A., Inc., WIPO Case No. D2000-0927; Yahoo! Inc. v. Microbiz, Inc., WIPO Case No. D2000-1050; Viacom International Inc. v Sung Wook Choi and M Production, WIPO Case No. D2000-1114; Jefferson Smurfit Group, plc. v. Stephen Davidson, Inc., WIPO Case No. D2000-1117; Amway Corporation, Inc. v. Business Internet Connection and Rex Mehta, WIPO Case No. D2000-1118).
The Complainant has therefore met its burden of proving that the domain name at issue is confusingly similar to Complainant�s trademark, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Respondent has failed to file a Response in accordance with the Rules, Paragraph 5 and has no obvious connection with the disputed domain name.
This and the fact that the Complainant asserts that the Respondent has no right or legitimate interest in the name is enough to shift the burden of proof to the Respondent to demonstrate that such a right or legitimate interest exists.
However, the Respondent has not presented any evidence of rights or legitimate interests in using the disputed domain name and the Panel therefore finds that also test (ii) of the Policy's paragraph 4(a) has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) of the Policy, "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 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 who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that 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, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, the Respondent had intentionally attempted to attract, for commercial gain, Internet users to the Respondent�s 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 the Respondent�s website or location or of a product or service on the Respondent�s website or location."
As regards the registration in bad faith of the disputed domain name, the reputation of the Complainant�s trademark has been already established and the Panel finds that the Respondent, especially because he is located in Germany, where the company having the company name ("Shimano Europa GmbH") identical to the disputed domain name is also located, and because he operates in the same field (sale of bicycles and bicycle parts) as the Complainant, knew or should have known that the disputed domain name was identical to a German company name as well as confusingly similar to a well known trademark of a third party.
As regards the use in bad faith of the disputed domain name, from the Complaint it is not clear whether the Respondent was selling also Shimano�s products through the web site "www.". It is also not possible for the Panel to check this latter web site, since at the time of this decision the relevant URL does not resolve in any active web site.
However, the Complainant provided evidence of competitor�s products being sold under the disputed domain name, namely Sachs� products: even if the Respondent were selling also Shimano�s products through the web site "www.", the fact that a competitor�s products were also advertised and sold would have constituted use in bad faith (Paragraph 4(b)(iv) of the Policy), as already stated by the relevant Panel in the Nikon, Inc. and Nikon Co. v. Technilab, Inc. WIPO Case No. D2000-1774 ("the use of the domain name for a site that sold Nikon products and those of its competitors constitutes an improper use of Complainants� mark to attract Internet users to Respondent�s site for commercial gain by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement of the site").
The Respondent is also preventing the Complainant from reflecting the company name of a company of its Group, namely Shimano Europa GmbH, in the corresponding most popular ".com" domain name, which constitutes bad faith in accordance with Paragraph 4(b)(ii).
Moreover, the reason why the present Complaint was suspended twice is because the Respondent had accepted in writing to cancel/transfer the disputed domain name, but instead he never did so. The Panel therefore finds that the Respondent admitted he had no rights in the disputed domain name.
Considering the above, the Panel finds that the Complainant has presented sufficient evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and used the disputed domain name in bad faith.
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.
Edoardo Fano
Sole Panelist
Dated: October 30, 2003
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