WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Matsushita Electric Industrial Co., Ltd v. Mr. Mark Whitling
Case No. D2003-0653
1. The Parties
The Complainant is Matsushita Electric Industrial Co., Ltd, of Osaka, Japan. Represented by Koichi Tachibana of Japan.
The Respondent is Mr. Mark Whitling, of Panorama City, California, United States of America.
2. The Domain Names and Registrar
The disputed domain names and are registered with Network Solutions, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 20, 2003. On August 21, 2003, the Center transmitted by email to Network Solutions, Inc. a request for registrar verification in connection with the domain names at issue. On August 25, 2003, Network Solutions, Inc. 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 August 27, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was September 16, 2003. The Response was filed with the Center on September 9, 2003.
The Center appointed Peter G. Nitter as the sole panelist in this matter on September 23, 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 disputed domain names were registered on October 18, 2002.
The Complainant has registered a large number of trademarks throughout the world, including the USA, which contain the words "NATIONAL" and "PANASONIC". The marks are registered and used for a large variety of goods and services. Reference is made to Annex E, F, G, and H of the Complaint.
Many of the registrations have been in existence for decades. The oldest ones date back to 1930 and 1956.
5. Parties� Contentions
A. Complainant
The domain names at issue are identical or confusingly similar to many of Complainant�s registered trademarks containing or consisting of the words "NATIONAL" and "PANASONIC". In fact, the domain names consist of a combination of the trademarks "NATIONAL" and "PANASONIC". These marks are famous in Japan, and the mark "PANASONIC" can be considered well-known or famous all over the world, including USA.
The Complainant is a Japanese corporation which is a famous company for electrical products, computer networking, and its related services all over the world. The Complainant has 267.000 employees.
Essential or virtual identity is sufficient for the purpose of the Policy.
The Respondent should be considered as having no right or legitimate interest in respect of the domain names at issue.
The Respondent is not a licensee of the Complainant, nor is he otherwise authorized to use Complainant�s trademarks.
The Respondent has made no use of the domain names in connection with any bona fide offering of goods or services in any commerce.
The Respondent is not commonly known by the domain names, nor has he sold any goods or services under these names. Neither is the Respondent making any legitimate non-commercial or fair use of the domain names.
The websites related to the domain names does not exist.
The Respondent owns two other domains, namely and . On the first mentioned site the Respondent introduces his ostrich business. The site shows that the Respondent has no relation to the domain names at issue.
The domain names should be considered as having been registered and used in bad faith.
It is inconceivable that the Respondent could have independently adopted this identical or confusingly similar name on his own.
The Respondent offered in emails to:
1) transfer the domain names to the Complainant by ideal price to be paid to him
2) to use the Respondent himself in the Complainant�s advertisement campaigns in order to promote him and achieve stardom
3) to meet the Complainant�s President, Nakamura, to discuss these issues
4) to have some of Complainant�s electronic components and for the Complainant to sponsor his project "dachoworld" in Thailand.
The domain names were registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant for valuable consideration in excess of Respondent�s out-of-pocket costs directly related to the domains.
B. Respondent
The domain names at issue are not confusingly similar to the Complainant�s registered trademarks.
The name "NATIONAL" is confusingly similar to thousands of trademarks throughout the world. The Respondent can not see how the name "NATIONAL" can be a trademark anywhere, as in every country there are banks, political organizations, (including government organizations), associations and businesses using the name.
The Complainant�s use of the word "NATIONAL" and the word "PANASONIC" are never used together without a divider "/" signifying the word "and".
The list of trademarks and products provided by the Complainant all show that the two words are not put together.
The Complainant�s products in the USA use the name "PANASONIC" not the word "NATIONAL".
The Respondent plans to use the two words together in a new organization that sells no electronic products or services, but ostriches. The business that the sites will be used to promote are and will be for the purpose of selling ostrich and ostrich related products.
The fact that Respondent has been slow to develop the websites is not being argued. The sites have been used in the past for various purposes.
The fact that the websites did not point to "Dachworld" was due to an error, and would have been corrected, if not for the lock now placed on the site � violating the user rights of the Respondent.
The Respondent chose the name of the domains out of admiration of the culture of Japan.
The Respondent has not sold or tried to sell Complainant�s products, nor has he represented himself as an employee or representative of the Complainant.
The Respondent is well known in Japan and has already achieved stardom. He was proposing an advertising campaign for the betterment of all concerned. It is not a (domain related) crime to offer a business opportunity from one entity to another.
6. Discussion and Findings
A. Identical or Confusingly Similar
The domain names at issue are and
.
The domain names were registered on October 18, 2002.
The Complainant has registered a large number of trademarks throughout the world, including the USA, which contain or consist of the words "NATIONAL" and "PANASONIC". The oldest registration dates back to 1930.
The word "PANASONIC" is a coined word. Based on this the Panel finds that even without the registrations of the word "NATIONAL" the domain names are confusingly similar to the registered mark "PANASONIC", as the only addition is the generic term "NATIONAL". The word "NATIONAL" does not have the ability to distinguish the disputed domain names from the trademarks of the Complainant.
Reference is made to America Online, Inc. v. Viper, WIPO Case No. D2000-1198 in which was found confusingly similar to the trademark "AOL", AmericaOnline, Inc. v. East Coast Exotics, WIPO Case No. D2001-0661 in which was found confusingly similar to the "AOL" trademark, Nokia Corporation v. N a.k.a IBCC. WIPO Case No. D2000-0102 in which was found confusingly similar to "NOKIA" and Red Bull GmbH v. Craig Jackson, WIPO Case No. D2002-0068 in which was found confusingly similar to "REDBULL".
The domain names and are thus found to be confusingly similar to the trademarks mentioned above in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has not authorized the Respondent to use any of the Complainant�s trademarks, nor to register the domain names at issue.
The Respondent has made no use of the domain names in connection with any bona fide offering of goods or services.
The Respondent is not commonly known by any of the domain names, nor has he sold any goods or services under the names, nor is he making any legitimate non-commercial or fair use of the domain names.
The Respondent is planning to use the domain names in a new organization that sells ostriches, and to use the sites to promote ostrich and ostrich related products.
However, this does not prove that the Respondent has any legitimate interest in the domain names for the purposes of paragraph 4 c) of the Policy.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
The Panel finds that the "PANASONIC" trademark, which consists of a coined word, is very well-known internationally, also within USA. It cannot be reasonably argued that the Respondent could have been unaware of the trademark when registering the disputed domain names.
Further the Respondent has registered the domain names with an intent to sell them to the Complainant. This appears from several emails, including the email of March 18, 2003 from the Respondent to the Complainant, regarding the disputed domain names, in which the Respondent states that he wants to sell them. The Respondent writes:
"This is what I want in return. I would like an ideal price to be paid to me for this name. I would also like to be used in ad campaigns such on billboards, TV, and other venues to promote myself and achieve stardom. �. I would also like to have some of your electronic components and for Matsushita to sponsor my project which is the Dachoworld project that is currently in Thailand."
The domain names are at present not used, and the Respondent�s planned use of them are not legitimate see section B above.
The Panel finds that the Respondent has acted in bad faith both in registration and use of the disputed domain names.
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 names, and be transferred to the Complainant.
Peter G. Nitter
Sole Panelist
Dated: October 7, 2003
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