WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Asahi Breweries Ltd. v. Whois Privacy Protection Service, Inc., Demand Domains, Inc. Case No. D2009-1481 1. The Parties
The Complainant is Asahi Breweries Ltd. of Tokyo, Japan, represented by Sanderson & Co., United Kingdom of Great Britain and Northern Ireland.
The Respondent is Whois Privacy Protection Service, Inc. and Demand Domains, Inc. of Washington, United States of America, represented by Christina G. Radocha, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2009. On November 3, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On November 3, 2009 eNom transmitted by email to the Center its verification response and disclosed the name of the real registrant behind the privacy shield and the contact information of the registrant, which differed from the named Respondent and contact information mentioned in the Complaint. The Center sent an email communication to the Complainant on November 4, 2009 providing the name of the registrant and contact information disclosed by the Registrar, and invited the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 6, 2009. 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” 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 November 18, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 8, 2009. The Respondent filed the Response with the Center on December 8, 2009.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on December 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. 4. Factual Background
The Complainant is a Japanese company that manufactures beer. It uses the trademarks ASAHI and ASAHIBEER for its products. It has several registered trademarks, a representative list of which are given here:
TRADEMARK
COUNTRY
APP. No
APPLICATION DATE
ASAHI BEER
Japan
335274
March 27, 1936
ASAHI BEER
Japan
1645277
March 14, 1969
ASAHI BEER
Japan
1696308
May 6, 1970
ASAHI BEER
Japan
1987881
December 20, 1985
ASAHI BEER
Japan
2043578
December 23, 1985
ASAHI BEER
Japan
2063843
December 20, 1985
ASAHI BEER
Japan
2117101
December 24, 1985
ASAHI BEER
Japan
2259329
December 20, 1985
ASAHI
UK
1384505
May 13, 1989
ASAHI (Device)
UK
2145667
September 19, 1997
ASAHI
USA
0686984
February 24, 1959 5. Parties' Contentions A. Complainant
The Complainant states it was founded in the year 1889 under the name “Osaka Beer Brewing Company” and launched “Asahi Beer” three years thereafter. In 1890 it commenced exporting its beer and was awarded the Grand Prix at the Chicago World Fair in October 1893 and at the Paris World Expo in June 1900. The Complainant states it changed its name to Dai Nippon Brewery Company in 1906 and thereafter to Asahi Breweries, Ltd. in 1989.
The Complainant has other diverse businesses including manufacture of soft drinks, food, pharmaceutical products and management of restaurants and claims it has been a leading Japanese company since its inception. It is listed in the first section of the Tokyo stock exchange and its group of companies has about 16,357 permanent employees. The Complainant has provided the figures of its annual net sales for its group for the years 2007 and 2008. It claims for the past twenty years in a row, it has sold in excess of 100 million cases (approximately 2 billion bottles of 633 milliliters each) of its main brand, ASAHI Super Dry beer, per year.
The Complainant asserts that the dominant part of the disputed domain name is similar to its trademarks ASAHI and ASAHI BEER. The word “beer” is generic and describes the goods offered by the Complainant and the Complainant's logo also comprises the word “asahi”.
The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name for the following reasons: The Complainant is a well-known company in the beer business since 1889, and has used its trademark ASAHI from 1892, due to which it has significant worldwide reputation in the trademark for 107 years. Respondent is not licensed or authorized to use the Complainant's trademark, nor is it affiliated with the Complainant. Even if were, it does not have the right to register a domain name using the Complainant's trademark, (citing Nikon, Inc. and Nikon Corporation v. Technilab, Inc.,WIPO Case No. D2000-1774). The Complainant states its investigations revealed that Respondent has no trademark registrations for “asahi” or “asahibeer” and is not commonly known by the disputed domain name. No legitimate use has yet been made of the disputed domain name since it was registered in 1998, but is used as a parking website for hosting sponsored links. Such use is not bona fide use, nor is it legitimate noncommercial or fair use.
The Complainant argues that the registration and use of the disputed domain name by the Respondent is in bad faith for the following reasons: The Respondent's website had previously displayed a link offering the domain name for sale, to which the Complainant had made an anonymous offer of USD 500, whereas the seller wanted a minimum of USD 15,000, an amount far in excess of registration costs. The Respondent uses the Complainant's fame and reputation for redirecting users to other websites, thereby disrupting its business. The Respondent is blocking the Complainant's use of the disputed domain name and has used a privacy service to hide its true identity. A pattern of “domain squatting” is revealed through the “Domain History” tool. The Complainant states the disputed domain name was previously owned by an entity called “Netline Systems” that was involved in two previous UDRP decisions, and the Respondent in the present dispute, “Demand Domains Inc,” has been involved several UDRP cases. The Complainant therefore requests the transfer of the disputed domain name. B. Respondent
The Respondent contends that when it acquired the disputed domain name it was not aware that it might conflict with the Complainant's “alleged” trademarks. The Respondent further alleges that it came to know of the Complainant's “alleged” trademark rights only upon receiving notice of the present Complaint.
The Respondent states that the Complainant did not contact it directly regarding the disputed domain name, but instead choose to file a Complaint with the Center. The Respondent states that, had the Complainant contacted it prior to initiating the dispute, it would have reviewed the Complainant's allegations and responded accordingly. The Respondent states that on November 6, 2009, upon receiving a copy of the Amended Complaint it contacted the Complainant's counsel in an effort to make an offer of immediate and free transfer of the disputed domain name to the Complainant. It is the contention of the Respondent that there was no response from the Complainant's counsel to this offer. The Respondent has filed copies of this correspondence with the Complainant.
The Respondent states that its representatives again tried contacting the Complainant's counsel with the same offer on November 12, 2009, and by telephone on November 30, 2009. It states that the Complainant rejected its offer of transfer and did not reply to or acknowledge some of the communications sent by the Respondent. The Respondent contends that the Complainant's request in the present dispute is for the remedy of transfer of the disputed domain name, which the Respondent has repeatedly agreed to grant.
The Respondent argues that, as it had no knowledge of the Complainant's “alleged” trademark rights and that its use might infringe the Complainant's rights, there is no bad faith on its part. The Respondent alleges that throughout this dispute it has acted in good faith by responding promptly and offering immediate transfer of the disputed domain name upon receiving notice of the Complaint.
The Respondent therefore requests for the dismissal of the Complaint and alleges that it shall immediately transfer the domain name to the Complainant if the case is dismissed. Alternatively, the Respondent requests an endorsement of the Respondent's offer to transfer the disputed domain name to the Complainant, but that there should be no formal finding of the Respondent having acted in bad faith. 6. Discussion and Findings
The Panel notes the Respondent has made an offer of settlement to transfer the disputed domain name to the Complainant. The Complainant however, has not accepted the Respondent's offer of settlement. In the absence of any settlement between the parties under paragraph 17 of the Rules, the Panel proceeds to determine the case on merits.
The Policy stipulated that the Complainant has to establish three factors under paragraph 4(a) to obtain the remedy of transfer of the disputed domain name.
(i) The disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith by the Respondent. A. Identical or Confusingly Similar
The first factor under paragraph 4(a) requires the Complainant to establish that the disputed domain name is identical or confusingly similar to a trademark in which it has rights.
The Panel finds the Complainant has established that it has longstanding rights in the trademarks ASAHI and ASAHIBEER, and has filed evidence of its registered trademarks in several jurisdictions including the USA, the country where the Respondent is located.
The Panel finds that the disputed domain name is identical and confusingly similar to the Complainant's trademarks except for the gTLD “.com” identifier, which is disregarded for purposes of assessing similarity of the domain name to the trademark. The Panel therefore finds the disputed domain name is identical to the Complainant's trademark ASAHIBEER and it is confusingly similar to the Complainant's trademark ASAHI.
The Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The second factor under paragraph 4(a) of the Policy requires the Complainant to make a prima facie showing that the Respondent lacks rights and legitimate interests in the domain name. See paragraph 2.1 WIPO Overview of WIPO Panel Views on Selected UDRP Questions.
The Complainant has argued that the Respondent has no trademark rights for the name “asahi” and is not commonly known by the disputed domain name, nor has it been authorized or licensed to use the Complainant's trademarks. Further, the Respondent does not use the website for any legitimate, bona fide or noncommercial or fair use purposes, but uses it to derive revenue by exploiting the Complainant's trademark and therefore, lacks rights or legitimate interests in the disputed domain name.
The Complainant has submitted archived screen shots of the Respondent's website clearly showing it is only used for hosting sponsored links. In the absence of any evidence from the Respondent to demonstrate its rights, the Panel finds the evidence provided by the Complainant validates its arguments that the Respondent is not using the domain name in connection with a bona fide offering of goods or services. The Panel finds merit in the Complainant's arguments that the Respondent has registered the disputed domain name, based on its trademark value, in order to generate Internet traffic to derive income, and that such use is not bona fide use.
The Panel finds that the Respondent has not put forward any arguments in its Response to refute the contentions of the Complainant. Nor has the Respondent filed any evidence that shows it has any rights in the disputed domain name under paragraph 4(c) of the Policy or otherwise. Based on an assessment of the evidence on record and the parties' pleadings, the Panel finds the Complainant has made a prima facie case showing the Respondent lacks rights and legitimate interests in the disputed domain name, which the Respondent has not rebutted.
The Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The third factor under paragraph 4(a) of the Policy requires the Complainant to establish that the disputed domain name was registered and is being used in bad faith by the Respondent.
The Complainant has argued that the disputed domain name was registered and is used in bad faith to exploit the fame and goodwill of the Complainant's trademark and to prevent the Complainant from reflecting its mark in a corresponding domain name. The Complainant has also drawn attention to the fact that the Respondent had put a link to sell the disputed domain name on its website.
The Panel finds the Respondent's website hosts sponsored links to other sites including beer related paraphernalia like “Beer mugs” and “Beer Taps” “Beer Centrifuges”, Beer Bottle Label” and “Breweries”. It is well established that use of a complainant's trademark in a domain name with targeted sponsored links to third-party sites to attract Internet users to the respondent's website is bad faith registration and use. See for instance MBIT Trust, Inc. v. Glenn Gasner, WIPO Case No. D2009-1428.
In its Response, the Respondent has made a conditional offer to transfer the disputed domain name to the Complainant, its condition being that it should be absolved of any finding of bad faith. The Respondent has argued that its offer to transfer the disputed domain name to the Complainant and its prompt responses in these proceedings demonstrate its good faith. The Panel finds that unilateral offers to transfer by registrants, in some cases, need not necessarily be in good faith and could be made with ulterior motives. The Panel however, at this juncture, emphasizes that there is nothing on record in the present case to cast any doubts about the Respondent's offer of transfer in the present case or its bona fide attempts to settle the case. Nonetheless, it would be instructive to discuss transfer offers, whether unconditional or conditional, made by respondents which have been found to be in bad faith.
In some recent cases respondents have taken advantage of complainants, who in good faith had accepted their offers of transfer to settle disputes. The respondents in such cases typically put forward a proposal to transfer the domain name, with a specific request that there should be no finding of bad faith. It appears, in some of those cases, the requests for settlement were only a ploy to gain additional time in order to continue deriving the revenue generated from the disputed domain names and were apparently not genuine offers of settlement. The cases then had to be reinstituted by the complainant, while the respondent had managed to gain further time generating pay-per-click revenue in the guise of making an offer of settlement. See President and Fellows of Harvard College v. Texas International Property Associates – NA NA,WIPO Case No. D2008-0597 and Barbara Brenan Inc. v. Texas International Property Associates, WIPO Case No. D2008-0351, where apart from finding bad faith in registration and use of the domain name, abuse of process was also found. The Panel does not find there has been any abuse of process or bad faith in the offer of transfer made by the Respondent here but as indicated previously, the Panel will proceed to consider the merits of this case.
Bad faith registration and use has been found, even in cases where the domain name in question was registered inadvertently through a semi-automated process, and the respondent had offered to unilaterally transfer the disputed domain name, free of charge to the Complainant. See Bharat Sanchar Nigam Limited (BSNL) v. Domain Hostmaster,WIPO Case No. D2007-1800. The panel in that case had found all three elements of paragraph 4(a) of the Policy were satisfied, and bad faith in particular was found as the respondents' website had links to complainant's competitors. A panel in a UDRP proceeding is therefore required to assess the entire facts and circumstances in each case, despite the respondent's unilateral offer to transfer the domain name. See Research In Motion Limited v. Privacy Locked LLC / Nat Collicot,WIPO Case No. D2009-0320.
Finally, given the numerous cases in which the Respondent has been involved, the Panel finds the Respondent has displayed a consistent pattern of registering domain names with well-known trademarks and when it is faced with a complaint, it offers to settle by means of a transfer. In a previous domain name dispute involving the same Respondent, it was observed by the panel in that case that the Respondent: “has a history of registering domain names and either not responding to administrative proceedings brought against it […] or agreeing to the transfer of a disputed domain name in its response, although not actually achieving any such voluntary transfer”. See AXA SA v. Whois Privacy Protection Service, Inc., Demand Domains Inc.,WIPO Case No. D2007-1382.
Paragraph 4(b)(ii) of the Policy makes reference to circumstances indicating bad faith registration and use of a domain name where the respondent engages in a pattern of registration of domain names to prevent the owner of the trademark from reflecting its mark in a corresponding domain name. Paragraph 4(b)(iv) of the Policy makes reference to circumstances indicating bad faith registration and use of a domain name with the intent to attract Internet users to the Respondent's website or other online 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.
In the light of the preceding discussions and the Panel's findings in this section, the Panel holds that the Respondent has registered the disputed domain name and uses it in a manner that constitutes bad faith registration and use as described under paragraphs 4(b)(ii) and 4(b)(iv) of the Policy.
The Complainant has satisfied the third requirement of paragraph 4(a) of the Policy. 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 disputed domain name be transferred to the Complainant.
Harini Narayanswamy
Sole Panelist
Dated: December 25, 2009
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