WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mitsubishi Kagaku Media Co. Ltd., Verbatim Corporation, Verbatim Limited v. Hydra Computer Ltd / Federico Roccetti
Case No. D2008-1034
1. The Parties
The Complainants are Mitsubishi Kagaku Media Co. Ltd., Tokyo, Japan; Verbatim Corporation, North California, United States of America; and Verbatim Limited Prestige House, Surrey, United Kingdom of Great Britain and Northern Ireland; all represented by Lovells LLP, Paris, France.
The Respondent is Hydra Computer Ltd / Federico Roccetti, Valletta, Republic of Malta.
2. The Domain Name and Registrar
The disputed domain name is registered with Key-Systems GmbH dba .
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2008. On July 9, 2008, the Center transmitted by e-mail to Key-Systems GmbH dba a request for registrar verification in connection with the domain name at issue. On July 10, 2008, Key-Systems GmbH dba transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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”).
The Center notified the Complainants on July 16, 2008 that the language of the registration agreement was German and invited the Complainants to either (i) provide evidence of an agreement between the parties that the proceedings should be in English, (ii) submit the Complaint translated into German, or (iii) submit a request for English to be the language of the administrative proceedings including arguments and supporting material. Because the Complainant had already included a request for English to be the language of the administrative proceedings in its Complaint, including arguments and supporting material, the Complainant confirmed its arguments.
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 July 25, 2008. In accordance with the Rules, paragraph 5(a), the due date for the Response was August 14, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 15, 2008.
The Center appointed Tobias Zuberb�hler as the sole panelist in this matter on August 21, 2008. 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
Mitsubishi Kagaku Media (MKM) is the parent company of a group of businesses operating worldwide, including Verbatim Limited and Verbatim Corporation, collectively known as Verbatim. MKM’s subsidiaries sell Verbatim products around the globe and have various contractual arrangements with MKM for use of the VERBATIM trademarks owned by MKM.
The VERBATIM mark is used in connection with many forms of data storage media worldwide, including CDs, CD-Rs, CD-RWs, DVD-Rs and DVD-RWs. The Complainants represent that the brand is well-known in the data storage industry and has developed a global reputation during over 30 years of business, also in the country where the Respondent resides (Republic of Malta).
The disputed domain name was registered on November 19, 2007. The website attached to the disputed domain name offers Verbatim and Philips DVD-R sets for sale. Up until the beginning of 2008, the website front page was entitled “Verbatim Point” and featured the red Verbatim logo. The website invited Internet users to create a personal account.
In May 2008, the Complainants sent a cease and desist letter and several e-mails requesting a transfer of the disputed domain name. The Respondent sent short answers such as “Which problem do you have???” or “Why?”. At some point after these communications, the Respondent stopped using Verbatim’s name on its website front page and now calls itself “DVD Quick Point”.
5. Parties’ Contentions
A. Complainant
The Complainants object to the use of the disputed domain name by the Respondent and base their Complaint on the following grounds:
1. The domain name at issue is confusingly similar with the Complainants’ trademarks. The addition of the generic term “point” to the disputed domain name does not reduce the confusing similarity.
2. The Respondent makes no legitimate non-commercial or fair use of the domain name at issue. The Complainants have no relationship with the Respondent and have never authorized the Respondent to use the Complainants’ marks as a domain name. The Respondent does not conduct any legitimate commercial or non-commercial business activity under the domain name.
3. The Respondent registered and uses the disputed domain name with the only purpose to divert customers to its own website for commercial gain. Accordingly, the domain name was registered and is being used in bad faith.
The Complainants request the Panel to issue a decision that the domain name be transferred to the Complainant Verbatim Limited.
B. Respondent
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
A. Language of Proceedings
The language of the registration agreement for the disputed domain name is German. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The default language of the proceedings is German, but the Complainants submitted a request for the proceedings to be conducted in English including arguments and supporting evidence. The Center issued a notice stating that it would accept the complaint filed in English and that the Response would be accepted either in English or German. The parties were further advised that the ultimate decision regarding the language of the proceedings would be determined at the discretion of the Panel.
The Respondent has not filed a Response or otherwise participated in these proceedings in any capacity. In light of the Complainants’ request and the Respondent’s lack of participation in the proceedings, this Panel finds no reason for the language of the proceedings to be in German or to render its decision in German.
B. Identical or Confusingly Similar
The domain name at issue is confusingly similar to the Complainants’ registered trademarks. A non-distinctive addition of the generic term “point” to the widely known trademark VERBATIM does not sufficiently differentiate the domain name at issue from the Complainants’ trademarks (cf. the similar case General Electric Company v. Stephen Harper, a.k.a. HarperStephens,WIPO Case No. D2000-1497, ). The Complainant has thus fulfilled the requirements under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
There are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the domain name at issue. The Panel also refers to the use of the disputed domain name as explained below under the third limb of the Policy. Furthermore, the Complainants have submitted conclusive evidence showing that the Respondent is not an official distributor or reseller of the Complainants’ products (Annex 7 to the Complaint: overview of the Complainants’ official distributors for Malta). The Complainants, having made a prima facie case which remains unrebutted, have fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Considering the factual background of this case as set forth under section 4 above, it is apparent that the Respondent intentionally intends to attract consumers to its website for commercial gain by creating confusion about the source and sponsorship of its website.
It may also reasonably be inferred that the Respondent knew about the Complainants’ trademarks and business when it registered the disputed domain name.
The Panel thus finds that the Respondent’s conduct constitutes bad faith registration and use, thus fulfilling paragraph 4(a)(iii) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant Verbatim Limited.
Tobias Zuberb�hler
Sole Panelist
Dated: September 4, 2008
Full & Egal Universal Law Academy