WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Royal Canin SAS v. Kazuo Kawado Case No. D2009-0874 1. The Parties
The Complainant is Royal Canin SAS of Aimargues, France, represented by Dreyfus & associés, France.
The Respondent is Kazuo Kawado of Nagoya City, Aichi Japan. 2. The Domain Name and Registrar
The disputed domain name is registered with Wild West Domains, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2009. On July 2, 2009, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain name. On July 2, 2009, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 July 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2009.
On July 20, 2009 and on various dates thereafter, the Center received email communications from the Respondent requesting for communications in Japanese as he did not understand English and that:
“The company named royalcanin has not heard it in Japan. Royalcanin is unnamed. None of Japanese know. Because this domain is not necessary, it is possible to transfer it.”
In response, the Center advised that pursuant to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement, in this case being English, (as confirmed by the concerned registrar), unless otherwise agreed by the parties or determined by the Panel in its discretion.
Following the above email communication from the Respondent, the Complainant requested the Respondent to “confirm to [to the Complainant] that [he was] prepared to transfer at no cost the domain name
As the Respondent did not submit a substantive response the Center advised the Respondent that it would proceed with the appointment of the administrative Panel.
Accordingly the Center appointed Arne Ringnes as the sole panelist in this matter on August 11, 2009. 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 is satisfied that in this case the appropriate language of proceedings is English, which is also the language of the registration agreement. 4. Factual Background
The Complainant is a major producer of pet food-related products. According to the Complaint the domain name was registered November 23, 2008.
According to Annex 6 of the Complaint the Complainant is the owner of the following International trademark registrations consisting of or including the words ROYAL CANIN:
Registration Number 529628, Registration Date: October 6, 1988;
Registration Number 471300, Registration Date: August 12, 1982;
Registration Number 844779, Registration Date: February 22, 2005.
According to Annex 7 of the Complaint the Complainant also is the owner of two Japanese Trademark Registrations containing the words ROYAL CANIN.
According to Annex 8 of the Complaint the Complainant also owns numerous domain names containing the trademark ROYAL CANIN. 5. Parties' Contentions A. Complainant
The Complainant submits that the disputed domain name is identical or confusingly similar to the Complainant's registered trademarks.
It is alleged that the domain name completely incorporates the trademark ROYAL CANIN. Besides the extension “.com” the only difference between the disputed domain name and the Complainant's trademark ROYAL CANIN consists in the addition of the geographical term “finland” which is not sufficient to avoid any similarity between the disputed domain name and the Complainant's trademark ROYAL CANIN. Internet users are likely to associate the disputed domain name to the Complainant believing that it refers to activities and products developed by the Complainant in the Finland market.
The Complainant further submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not currently known, nor has been known by the name Royal Canin. Since the domain name in dispute is so identical to the widely known trademark of the Complainant, the Respondent cannot reasonably pretend it was acting in a legitimate interest. Moreover, the Respondent has so far not proved to be the holder of prior rights or to have any legitimate interest in the disputed domain name.
Further, the Complainant submits that the domain name was registered and is being used in bad faith. The Complainant is well-known across the world and in particular in Japan where the Respondent is located. It is obvious that the Respondent knew or must have known the Complainant's trademark ROYAL CANIN at the time he registered the disputed domain name.
It appears that the purpose of the disputed domain name is to intentionally attract customers to the Respondent's website by creating a likelihood of confusion with a well-known trademark belonging to a third party. Amongst others this is supported by the fact that the disputed domain name refers to Finland while the Respondent is Japanese, and the disputed domain name directs to web pages in Japanese that appear to have no links with Finland.
In accordance with paragraph 4(i) of the Policy the Complainant requests the Panel to issue a decision ordering that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions except briefly in email communications as indicated under section 3 above. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the Complainant on basis of International trademark registrations 529628, 471300 and 844779 has rights to the trademark ROYAL CANIN which precede the Respondent's registration of the disputed domain name.
The Panel further finds that the domain name is confusingly similar to the Complainant's trademark ROYAL CANIN as it incorporates the trademark completely. The addition of the geographical term “finland” does not imply that the domain name is distinguished from the trademark with the effect that confusion is avoided.
In conclusion, the Panel finds that the Complainant has proved that the condition under the Policy, paragraph 4(a)(i) is fulfilled with respect to the disputed domain name. B. Rights or Legitimate Interests
The Respondent has not submitted any evidence supporting that he has rights or legitimate interests in respect of the domain name.
Neither has the Respondent proved that the disputed domain name (i) has been used in a bona fide offering of goods or services; (ii) that he has been commonly known by the domain name; or (iii) that he has been making a legitimate noncommercial or fair use of the domain name, cf. paragraph 4(c) of the Policy.
The Panel cannot find any indications of circumstances that would constitute the Respondent's rights to or legitimate interests in the disputed domain name pursuant to paragraph 4(c) of the Policy or any other circumstances indicating such rights or legitimate interests.
On this background the Panel concludes that the Respondent does not have any rights or legitimate interests in respect of the domain name at issue, cf paragraph 4(a)(ii). C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, certain circumstances shall be evidence of the registration and use of a domain name in bad faith. These include in sub-paragraph (i) circumstances indicating that the Respondent has registered 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 [Respondent's] documented out-of-pocket costs directly related to the domain name…”.
The Panel finds that in light of the present record it unlikely that the registration of the domain name was a coincidence. The Respondent has not substantiated any rights or legitimate interests in the domain name (cf. paragraph B above). The disputed name is unusual and it is unlikely to have been registered or acquired without knowledge of the Complainant. The Panel has also noted that the disputed domain name refers to Finland while the Respondent is Japanese, which suggests to the Panel that the Respondent's claim that it did not know of the Complainant's unusual Mark in Finland may not be entirely truthful. The Panel has also noted the Complainant's Japanese-registered trademarks. Although the domain name includes the word Finland, the disputed domain name directs to web pages in Japanese that appear to have no links with Finland per se.
Based on this, the Panel finds it probable on the balance that the domain name has inter alia been registered for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant for valuable consideration cf. paragraph 4(b) sub-paragraph (i) of the Policy.
Consequently, the Panel concludes on the present record that the Respondent has registered and used the domain name in bad faith, cf paragraph 4(a)(iii). 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.
Arne Ringnes
Sole Panelist
Dated: August 28, 2009
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