WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Tokyu Corporation v. John H. Wills Case No. D2008-1405 1. The Parties
The Complainant is Tokyu Corporation of Tokyo, Japan, represented by Abe, Ikubo & Katayama of Tokyo, Japan.
The Respondent is John H. Wills of Arlington, Virginia, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with TierraNet d/b/a DomainDiscover (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on September 16, 2008, and in hard copy on September 19, 2008.
The Center transmitted its request for registrar verification to the Registrar by email on September 16, 2008. The Registrar responded by email on September 17, 2008, confirming that it had received a copy of the Complaint, that the Domain Name was registered with it, that the Respondent was the registrant, that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applied to the registration, that the Domain name had been and would remain administratively locked for the duration of this proceeding, and that the registration agreement was in English and contained a submission to the jurisdiction of the courts of the registrant's domicile and of San Diego County, California. The Registrar also provided the full contact details for the registration on its database.
By email of September 19, 2008, the Center notified the Complainant that the Complaint was deficient in that it had not been signed and that it exceeded the word limit in paragraph 3(b)(ix) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”). The Complainant responded on September 20, 2008, stating that it had applied its seal to the hard copies of the Complaint and that the relevant part of the Complaint contained 5004 words which were just over the limit of 5000 words. The Complainant said that it would, however, rectify both deficiencies as requested by the Center. The Center replied on September 22, 2008, that it would accept company seals instead of signatures and that the relevant part of the Complaint contained 5017 words. The Complainant further responded on September 23, 2008, accepting that it should have included the title of Section V of the Complaint in the word count. The Complainant submitted an amended Complaint by email on September 24, 2008 and in hard copy on September 26, 2008.
The Center verified that the amended Complaint satisfied the formal requirements of the 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 formally notified the Respondent of the Complaint, and the proceedings commenced on October 1, 2008. In accordance with paragraph 5(a) of the Rules, the due date for Response was October 21, 2008. The Response was filed with the Center by email on October 22, 2008, and in hard copy on October 28, 2008. The Panel waives the Respondent's failure to comply with the time limit on the ground that it is insignificant.
The Complainant elected in the Complaint to have the dispute decided by a three-member Panel. The Center appointed Jonathan Turner, Masato Dogauchi and Andrew Christie as Panelists on November 21, 2008. 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.
Having reviewed the file, the Panel is satisfied that the amended Complaint and the Response complied with applicable formal requirements and that the dispute has been submitted to a duly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules. 4. Factual Background
The Complainant is a member of one of the leading enterprise groups in Japan, comprising (as of the end of March 2007) 11 public limited companies, 276 other companies and 9 non-profit corporations. Gross sales of the group in the fiscal year 2006 exceeded Yen 2.5 trillion.
The Complainant started the group in 1922 as the Meguro-Kamata Electric Railway Company. The group now carries on a wide range of businesses including in the fields of transport, real estate, retail, leisure and hospitality. Many of these activities are carried on under names incorporating “Tokyu”, for example department stores called “Tokyu Department Store”, supermarkets called “Tokyu Store”, household goods stores called “Tokyu Hands”, shopping centers called “Tokyu Plaza”, a credit or point card called “Tokyu Point Card TOP&”, and a golf course called “Tokyu Seven Hundred Club”.
The Complainant's group has carried on a hotel business since opening the “Hakuba Tokyu Hotel” in 1959. Tokyu Hotels Co. Ltd, a wholly-owned subsidiary of the Complainant, now operates 51 hotels under the names “Tokyu Hotel”, “Excel Hotel Tokyu”, “Tokyu Inn” and “Tokyu Resort”. The group also operates 10 extended stay hotels under the name “Tokyu Stay” and 22 membership resort hotels under the name “Tokyu Harvest Club”. Hotels operated by the group had over 4. 8 million guests from April 2006 to March 2007, of which over 700,000 were from outside Japan.
The Domain Name was registered in August 2002 and currently points to a website at “www. japanhotels. com” which promotes hotels in Japan competing with those of the Complainant's group. 5. Parties' Contentions A. Complainant
The Complainant states that it has registered numerous trademarks in Japan consisting of or containing “Tokyu” including 東急 (“Tokyu”) in all 45 classes, 東急ホテルズ (“Tokyu Hotels”), 東急インチェーン (“Tokyu Inn Chain”) and キャピトル東急ホテル (“Capitol Tokyu Hotel”) in Kanji characters (“Kanji” is a system of ideogram which was brought in from ancient China to express Japanese language) and katakana characters (“Katakana” is one of the systems of letters to express Japanese language in combination with Kanji); and TOKYU (in all 45 classes), EXCEL HOTEL TOKYU, TOKYU CORPORATION and TOKYU GROUP in Roman characters. The Complainant contends that the Domain Name is identical or at least confusingly similar to these trademarks.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name. It points out that “Tokyu” is a coined term which would not be conceived or selected as a domain name by someone who did not know of its marks. It notes that the Respondent does not carry on any business activity under the name Tokyuhotels or any similar name and that there is no website at the Domain Name. The Complainant considers that the pointing of the Domain Name to the website at “www.japanhotels. com” is not a legitimate business activity, but rather is an attempt to gain commercial profit from confusing customers.
The Complainant alleges that the Domain Name was registered and is being used in bad faith. It reiterates that “Tokyu” is not a common name but rather is a coined term and that the Respondent must have been aware of its use of this mark when he registered the Domain Name. It further submits that the Respondent's pointing of the Domain name to the website at “www. ” shows an intention of causing confusion with respect to the source of products or services promoted by that website or sponsorship or other financial or business connection with the Complainant and its subsidiary Tokyu Hotels Co. , Ltd, thereby diverting customers and gaining commercial profits.
The Complainant requests a decision that the disputed domain name be transferred to it. B. Respondent
The Respondent notes that the Complainant has not trademarked the character string “” and that the only marks registered by the Complainant containing the strings “tokyu” and “hotels” are “excel hotel tokyu” and “thecapitolhoteltokyu”. The Complainant points out that the Domain Name does not contain “excel” or “capitol” and submits that it does not resemble either of these marks.
The Respondent next disputes the Complainant's renditions of its marks in Kanji and katakana characters into Roman characters and English words. According to the Respondent, “東急ホテルズ” should be transliterated as “toukyuuhoteruzu” or “tōkyūhoteruzu”.
The Respondent states that he was not aware of any trademark of the Complainant when he registered the Domain Name in August 2002. He claims that he registered it in the belief that it consisted of a Japanese geographical term plus “hotels” and/or was a close approximation to . He also asserts that “tōkyū” is a common word in Japanese meaning “grade” or “ranking” and that the Domain Name is suitable for displaying information about hotel rankings.
The Respondent says that he has registered over the past decade numerous domain names composed of a Japanese geographical term plus the word “hotels”, including , , , and . He says that the Domain Name, like some of these other domain names, came to his attention from consulting lists of expired domain names. He registered on the same day. Having taken a Japanese language course, he regarded the Domain Name as a close approximation of , a key domain name missing from his collection of Japan-related “hotels” domain names.
The Respondent denies that he registered the Domain Name in order to prevent the Complainant or anyone else from using it or to seek valuable consideration. He says that the Domain Name remained unpointed for several years and was only recently pointed to “www. ”. He states that he has not received any compensation or benefit or the promise of such from the operator of that website identified by the Complainant. He notes that he has not solicited anything from the Complainant.
The Respondent points out that the Complainant registered in June 1998, in June 2003, and and in August 2005, as well as , but showed no interest in the Domain Name for over 6 years after the Respondent registered it in August 2002. He submits that the Complainant has no right to demand the Domain Name which he registered in good faith and in respect of which he has paid renewal fees for the past six years. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights, (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name, and (iii) that the Domain Name was registered and is being used in bad faith. These requirements will be considered in turn. A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered and unregistered rights in the mark TOKYU in relation to hotels as well as other services and goods. The Respondent does not appear to dispute that the Complainant is the registered proprietor of this mark in all classes. The evidence shows that the Complainant's group is well-known as the operator of chains of hotels in Japan under names comprising “Tokyu” accompanied by descriptive words such as “Hotel”, “Inn” or “Resort”. As a member of the group and parent of its principal hotel operating company, the Complainant has unregistered rights in the mark TOKYU by virtue of the group's reputation under these names.
The Panel also considers that the Complainant has unregistered rights in the mark TOKYU HOTELS, which has been extensively used in connection with hotels operated by its subsidiary. In addition, the Complainant has registered rights in the mark 東急ホテルズ, which the Panel finds is normally and naturally rendered in Latin characters as “Tokyu Hotels”. “Tokyu” is a transliteration of the invented part of the mark, while “Hotels” is a translation of the descriptive element. In English material referring to the Complainant's subsidiary's hotels, the mark is rendered as “Tokyu Hotels”.
The Domain Name is effectively identical for the purposes of the Policy to the Complainant's mark TOKYU HOTELS. It is also confusingly similar to the Complainant's mark 東急ホテルズ, which those familiar with both Japanese and English would regard as equivalent to “Tokyu Hotels”. In addition, the Domain Name is confusingly similar to the mark TOKYU from which it differs only in the addition of the descriptive word “Hotels” and the generic top level domain suffix. Panels have repeatedly held that a domain name consisting of a widely used mark, a descriptive term and generic top level domain suffix is confusingly similar to that mark.
The first requirement of the Policy is satisfied. B. Rights or Legitimate Interests
The Panel notes that the Respondent has not supplied any goods or services under the Domain Name or made any preparations to do so, and that he is not commonly known by the Domain Name.
In the Panel's view, the Respondent is not making legitimate noncommercial or fair use of the Domain Name. On the contrary, by pointing the Domain Name to the website at “www.” the Respondent is using it unfairly to divert Internet users seeking information about the hotels of the Complainant's group to a website promoting competing hotels, and further to mislead at least some of them into believing that those hotels are operated or approved by or connected with the Complainant's group.
There does not appear to be any other basis on which the Respondent could claim to have rights or legitimate interests in the Domain Name. It is clear from the structure of the Policy that the mere registration or retention of a Domain Name does not confer any right or legitimate interest in it for the purpose of this requirement of the Policy.
The second requirement of the Policy is satisfied. C. Registered and Used in Bad Faith
Considering the size of the businesses of the Complainant's group, including hotel businesses, operating under names which include “tokyu” and the uniqueness of this combination of letters, and the Respondent's admitted interest in hotels in Japan, the Panel considers that the Respondent must have been aware of the hotels of the Complainant's group and their use of names comprising the words “Tokyu Hotels” or Japanese words equivalent to them.
The Panel rejects the Respondent's claim that he registered the Domain Name because it was similar to the name of the city “Tokyo” and “hotels”. If he had wanted a domain name which referred to the city and hotels, he would not have chosen a domain name comprising “Tokyu” which is obviously recognised as referring to the hotels of the Complainant's group.
The Domain Name clearly reflects the name of the Complainant's subsidiary and at least one of its chains of hotels. The Panel infers from this, and from the absence of any credible explanation by the Respondent, that he registered the Domain Name primarily for the purpose of selling it eventually to the Complainant's group.
Furthermore, the Respondent is using the Domain Name to attract Internet users to the website at “www. ” through confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of that website and of the services promoted on it. The Panel is skeptical of the Respondent's claim to be deriving no benefit from pointing the Domain Name to this website, but in any case, it is probable that the operator of the website derives commercial gain from the traffic diverted to it through the Respondent's website.
In all the circumstances, the Panel concludes that the Domain Name was registered and is being used in bad faith. The third requirement of the Policy is satisfied. 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.
Jonathan Turner
Presiding Panelist
Masato Dogauchi
Panelist
Andrew Frederick Christie
Panelist
Dated: December 12, 2008
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