The Complainant is Omron Corporation of Kyoto, Japan, represented by Sanderson & Co., United Kingdom of Great Britain and Northern Ireland.
The Respondent is Yuri A Ivanov of Moscow, Russian Federation, appearing per se. 2. The Domain Name and Registrar
The disputed domain name is registered with Regional Network Information Center, JSC dba RU-CENTER. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2011. On June 24, 2011, the Center transmitted by email to Regional Network Information Center, JSC dba RU-CENTER a request for registrar verification in connection with the disputed domain name. On June 24, 2011, Regional Network Information Center, JSC dba RU-CENTER transmitted by email 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” 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”).
On July 4, 2011, the Center sent an email communication in both English and Russian to the Parties regarding the language of the proceedings. On July 7, 2011, the Complainant requested that English be the language of the proceedings. On July 8, 2011 the Respondent requested that Russian be the language of the proceedings.
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 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 3, 2011. The Response was filed with the Center on August 2, 2011.
The Center appointed Ladislav Jakl as the sole panelist in this matter on August 19, 2011. 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.
On the question of the language of the administrative proceedings, the concerned registrar confirmed that the language of registration agreement is Russian. The Respondent requested the Panel to decide that the language of the administrative proceedings in this case be Russian. The Complainant argues that it should be observed that the Respondent is named as respondent in a previous UDRP complaint concerning a “.tel” domain name (see decision OSRAM GmbH v. Yuri A Ivanov, WIPO Case No. D2009-0692 – and that in that case the language of the proceedings was English despite the registration agreement being in Russian. Therefore the Complainant requested the Panel to decide that the language of the administrative proceedings in this case be English. In this case the Respondent can clearly understand the language of the Complaint, and the Complainant would be disadvantaged by being forced to translate, the language of proceedings can therefore remain the language of the complaint, even if it is different to the language of the registration agreement (L'Oreal S.A. v. Munhyunja,WIPO Case No. D2003-0585; Deutsche Messe AG v. Kim Hyungho,WIPO Case No. D2003-0679). According to paragraph 11(a) of the Rules the Panel has the authority to determine a different language other than the one in the registration agreement, having regard to the circumstances of the administrative proceeding. The Panel, taking into account the circumstances of this case and a number of recent UDRP proceedings and the reasons cited therein (BrandStrategy, Inc. v. BusinessService Ltd.,WIPO Case No. D2007-0749; Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd.,WIPO Case No. D2007-1836), decides that the language of the administrative proceedings be English. 4. Factual Background
The Complainant in this administrative proceeding is Omron Corporation a corporation organized under the laws of Japan whose principle place of business is Shiokoji Horikawa, Shimogyo-ku, Kyoto, Japan.
Omron Corporation is a Japanese electronics company based in Kyoto, which was established by KazumTateishi in 1933 and incorporated in 1948. The Complainant's main business is the manufacture and sale of automation components, equipment and systems, but it is generally known for medical equipment such as digital thermometers, blood pressure monitors and nebulizers. The Complainant is also known for having developed and created the world's first electronic ticket gate, created to relieve congestion at ticket gates in train stations during rush hour. The invention was named an IEEE Milestone in 2007. The Omron Group has expanded its presence around the world, and currently operates not only in Japan, but also in The Americas (North, Central and South), Europe, Africa, Asia Pacific and China. Accordingly, Complainant, together with its affiliated companies, has obtained registrations in many countries across the world for the OMRON trademark used in conjunction with its various products and services and is now a leader in the electronics market. As of March 31, 2011, the Omron Group employed 35,684 people all over the world. Total sales for the year 2010 were 617,825,000,000 Yen (about US $7,695,000,000).
The Complainant owns many trademarks registration for of the mark OMRON including some CTMs and some in Japan and the application date 01/04/1996 (OMRON CTM, reg. No. 000216721; OMRON CTM, reg. No. 009142837 31/05/2010; OMRON USA, reg. No. 3774983, application date 24/03/2009; OMRON USA, reg. No. 0984928, application date 20/09/1971; OMRON USA, reg. No. 3204195, application date 28/09/2004; OMRON Japan, reg. No. 2504071, application date 07/03/1990; OMRON Japan, reg. No. 0622187, application date 26/06/1961). The trademark OMRON has been extensively used in respect of goods and services covered by these registrations. In addition to those registered marks specified above, the Complainant also possesses other registered marks and/or pending applications in other countries. Extracts from the official registers for some of these are included as Annex 4. of the Complaint.
The Respondent is the registrant of the disputed domain name , which was registered on March 24, 2009. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to its trademark OMRON, that the Respondent has no rights or legitimate interests in respect to the disputed domain name and that the disputed domain name was registered and is being used in bad faith.
The Complainant introduces that the the Respondent has fully integrated the Complainant's trademark OMRON in his domain name, which is the distinctive part of the domain name. The disputed domain name consists of OMRON trademark and the “.tel” component which is just a generic top level domain identifier and may be ignored when making a comparison. The disputed domain name is therefore identical to the trademark registrations of OMRON. Therefore the public would easily associate the disputed domain name with the Complainant’s marks and be misled into believing that it is associated with the Complainant. For all the reasons stated above there is no doubt that the disputed domain name is confusingly similar to the Complainant's trademark.
As to rights or legitimate interests in respect of the disputed domain name, the Complainant essentially contends that the Respondent is not licensed to use the Complainant’s trademarks, nor is the Respondent in any way associated with the Complainant or its group of companies and that the investigations have shown that the listed Respondent has neither trademark registrations for OMRON nor any variant and further that that they have not been commonly known by the domain name on any legitimate grounds. The Respondent is in no way authorised by or affiliated with the Complainant. The disputed domain name currently displays a holding page carrying little or nothing else. There is clearly no legitimate use of the website by the Respondent. The Respondent’s domain name is identical to Complainant’s mark, and the Respondent is not using the domain name in connection with a bona fide offering of goods or services. Nor is such use as there is legitimate noncommercial or fair use. For all the reasons shown above, the Complainant made out at least a prima facie case that the Respondent lacks rights or legitimate interests. According to the consensus view of the UDRP panels, once such prima facie case is made, the Respondent carries the burden of demonstrating rights to or legitimate interests in the domain name (Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; Kraft Foods Global Brands, LLC v. Jet Stream Enterprises Limited, Jet Stream, WIPO Case No. D2009-0547).
Furthermore, the Complainant asserts that the disputed domain name was registered and is being used in bad faith. The Respondent registered the disputed domain name on March 24, 2009. The Complainant argues that by the use of the mark OMRON in the disputed domain name, the Respondent intentionally attempted to use the reputation of the Complainant so that users will be lured to websites not owned or authorized by the Complainant. The Respondent is not using the disputed domain name for any bona fide purpose. The Respondent is blocking the Complainant from registering or using the disputed domain name and is interrupting their business by directing potential customers to competitors or by falsely making those customers believe there is an association between the Respondent and the Complainant. The Respondent may be intending to profit from the sale of the disputed domain name for a price in excess of the registration costs thereof. The Respondent’s registration and use of the disputed domain name are in bad faith because the Respondent intentionally attempts to attract members of the public who have an interest in purchasing or obtaining additional information about OMRON goods and services, and then forwarding them to other websites. Forwarding via the links to other sites will result in benefit financial or otherwise to the Respondent.
Searches for information about Yuri A Ivanov found that he owns many domain names. Seeing the variety of the domain names, and the fact that many comprise the well-known trademarks of others, one can only assume this individual is specialized in domain name reselling or cyber-squatting. Therefore it is clear that paragraph 4(b)(iv) of the Policy is fulfilled here.
In accordance with paragraph 4(b)(i) of the Policy, the Complainant requests the Panel, appointed in these administrative proceedings, to issue a decision that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent contends that the Complainant must prove that the disputed domain name is identical or confusingly similar to a trademark or service mark OMRON in which the Complainant has rights and that the question of identity or confusingly similarity ought to be judged by the competent organ.
The Respondent further contends that the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent introduces the facts dealings with creating of the disputed domain name and mentioned that there were no necessity for license to use the disputed domain name as he did not used it.
As to bad faith, the Respondent argues that the Complainant must prove that the disputed domain name has been registered and is being used in bad faith. The Respondent contends, that he did not used the reputation of the Complainant’s trademark OMRON and neither in contemporary nor formerly he did not act in such a way to exploit the Complainant’s reputation. The Respondent introduces that since the registration of the disputed domain name he did not attempt to sell it. But on the other hand he mentioned that in several cases he transferred free of charge some domain names to his friends. 6. Discussion and Findings
The Policy is incorporated by reference into registration agreement with the registrar of a domain name, in accordance with which the Respondent is required to submit to a mandatory administrative proceeding in the event that a Complainant submits a Complaint to a dispute resolution service provider, such as the Center, concerning a domain name that the Respondent has registered. The dispute between Respondent and the Complainant will be decided by an administrative panel consisting of either one or three impartial and independent decision-makers. The Complainant in this administrative proceeding has elected for an administrative panel, consisting of a single panelist, that will decide the dispute.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service 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 has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant. A. Identical or Confusingly Similar
The Panel finds that the the Respondent has fully integrated the Complainant's trademark OMRON in his domain name , which is the distinctive part of the disputed domain name. The addition of the “.tel” suffix does not serve to distinguish the domain name from the trademark OMRON. It is a well-established principle that the addition of gTLD suffixes such as “.tel” do not avoid confusing similarity of domain names and trademarks (AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Accor v. Lee Dong Youn, WIPO Case No. D2008-0705; Sanofi-aventis v. Brad Hedlund,WIPO Case No. D2007-1310; DHL Operations B.V. v. DHL Packers,WIPO Case No. D2008-1694; Deutsche Telekom AG v. Kaththea Sias,WIPO Case No. D2008-1665; Société Nationale des Chemins de Fer Francais v. Sinclare Vabalon, BHG,WIPO Case No. D2008-1613; Florida Department of Management Services v. Anthony Gorss (or AGCS),WIPO Case No. D2009-1194; DHL Operations B.V. v. DHL Packers,WIPO Case No. D2008-1694). Accordingly, by registering the disputed domain name, the Respondent created a confusingly similar domain name to the Complainant’s trademark. Moreover, it is likely that this domain name could mislead Internet users in thinking this is in some way associated with the Complainant.
For all the above-cited reasons the Panel concludes, that disputed domain name is identical or confusingly similar to the Complainant’s trademarks in which the Complainant has rights, and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled. B. Rights or Legitimate Interests
The Panel accepts the arguments submitted by the Complainant, unchallenged by the Respondent, that the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or any variations thereof, or to register or use any domain name incorporating any of those marks or any variations thereof. Therefore in the Panel’s view, the Respondent could not legitimately choose this combination or any variation thereof, unless seeking to create an association to the Complainant. Apparently, the Respondent has registered the disputed domain name to create the misleading impression of being in some way associated with the Complainant, trying to exploit the fame and reputation of the Complainant’s trademarks.
Moreover the Panel finds that the disputed domain name in question is not used for a bona fide offering of goods or services and the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. There is a consensus that such behaviour cannot be considered a bona fide offering of goods or services, or a noncommercial or fair use (The Gap, Inc. v. Deng Youqian, WIPO Panel No. D2009-0113; Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795; Deutsche Telekom AG v. Dong Wong, WIPO Case No. D2005-0819; PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
For the above-cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of his website or of a product or service on that website or location.
The disputed domain name was registered on March 24, 2009. First trademark OMRON of the Complaint was registered in Japan under reg. No. 0622187, with the application date of June 26,1961. Numerous of the following OMRON trademarks were registered by the Complainant, as OMRON CTM, reg. No. 000216721, application date 01/04/1996; OMRON CTM, reg. No. 009142837 31/05/2010; OMRON USA, reg. No. 3774983, application date 24/03/2009; OMRON USA, reg. No. 0984928, application date 20/09/1971; OMRON USA, reg. No. 3204195, application date 28/09/2004; OMRON Japan, reg. No. 2504071, application date 07/03/1990. Extracts from the official registers for some of these are included as Annex 4 of the Complaint. The trademarks OMRON have been extensively used in respect of goods/services covered by these registrations. The Panel finds that the Respondent has registered the disputed domain name in order to prevent the owner of the trademark OMRON from reflecting the mark in a corresponding domain name. The Complainant's trademark OMRON being very famous at the time the disputed domain name was registered. Solely the fact that the Complainant's trademark is famous (and has been famous already at the date of registration) is a strong argument for the Respondent's registration and use of the domain name in bad faith (DHL Operations B.V. v. DHL Packers,WIPO Case No. D2008-1694). When considering the numerous marketing activities of the Complainant there can be no serious doubt that the Respondent must have been aware of the Complainant's trademark when registering the disputed domain name.
There is no doubt to this Panel that the Respondent has also registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant. The Respondent is interrupting of the Complainant´s business by directing potential customers to competitors or by falsely making those customers believe there is an association between the Respondent and the Complainant. The Complainant has submitted evidence, unchallenged by the Respondent, the Respondent knew or must have known of the Complainant’s trademarks OMRON at the time he registered the disputed domain name. The disputed domain name used by the Respondent may cause consumers to believe that the domain name is affiliated with or owned by the Complainant.
The Panel further finds that by using the Complainant’s trademark to draw Internet users to an unrelated site the Respondent is attempting to divert customers from the Complainant and thus to disrupt the Complainant’s business. Such conduct has been found to signal bad faith in other cases such as Six Continents Hotels, Inc. v. Ramada Inn,WIPO Case No. D2003-0658. Therefore the paragraph 4(b)(iv) of the Policy is fulfilled here.
For the above cited reasons the Panel finds that the disputed domain was registered and used in bad faith.
Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 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.
Ladislav Jakl
Sole Panelist
Dated: September 2, 2011
Full & Egal Universal Law Academy