The Complainants are ITT Corporation of White Plains, New York, United States of America and ITT Manufacturing Enterprises LLC of White Plains, New York, United States, represented by RatnerPrestia P.C., United States.
The Respondent is VALUE-DOMAIN COM, VALUE DOMAIN of Chuo-ku, Osaka-shi, Osaka-Fu, Japan. 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 March 15, 2012. On March 16, 2012, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On March 16, 2012, eNom 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”).
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 March 29, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 18, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 20, 2012.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on April 27, 2012. 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 Complainants in this administrative proceeding are ITT Corporation and ITT Manufacturing Enterprises LLC. ITT Manufacturing Enterprises LLC is the holder of various trademark registrations in the ITT sign, which it licenses to its parent company ITT Corporation. These trademark registrations include:
- ITT (word mark), United States registration no. 3,108,719 of June 27, 2006 for a variety of goods and services in international classes 6, 7, 9, 11, 12, 17, 35, 37, 38, 40 and 42;
- ITT (word mark), International trademark registration no. 903,593 of August 25, 2004, in international classes 6, 7, 9, 11, 12, 17, 35, 37, 38, 40 and 42;
- ITT (figurative trademark), Japanese registration nos. 2,014,724; 2,189,212; 2,358,618; 2,014,746; 621,405; and 3,104,982, covering goods and services in classes 6, 9, 11, 12, 17, 19, 20 and 37, registered prior to June 20, 2009 and duly renewed.
Since 1962, the Complainants and their predecessors and successors in interest have promoted the ITT mark in connection with a wide range of products and services in the United States and throughout the world. The Complainants historically have used the ITT trade mark in combination with country identifiers in connection with subsidiaries, divisions and related organizations.
The disputed domain name was created on June 21, 2009. The disputed domain name has been associated with a website in Japanese language. It appears that this website contained content with sexually tinted job offers and links to job offers in the sexual services industry. 5. Parties’ Contentions A. Complainant
The Complainants consider the disputed domain name to be identical or confusingly similar to the trademarks and service marks in which it claims to have rights. The Complainants further claim that the Respondent has no rights or legitimate interests in respect of the disputed domain name. According to the Complainants, the Respondent has not used the disputed domain name in connection to a bona fide offering of goods or services. Finally, the Complainants consider that the disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on the Complainants to make out its case and it is apparent, both from the terms of the Policy and the decisions of prior UDRP panels, that the Complainants must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. In these administrative proceedings, the standard of proof is the balance of probabilities.
Thus for the Complainants to succeed it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
1. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
2. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. the disputed domain name has been registered and is being used in bad faith.
The Panel will deal with each of these requirements in turn. A. Identical or Confusingly Similar
To prove this element, the Complainants must first establish that there is a trademark or service mark in which it has rights. The Complainants have clearly established that there is a trademark in which the Complainants have rights. The Complainants started using its ITT mark as early as the 1920s and have registered trademarks in the ITT sign in various countries, including in Respondent’s home country.
The Panel considers the disputed domain name to differ from the Complainants’ ITT trademark by the addition of the geographic name “India” at the end to the ITT mark. According to the Panel, this addition of a geographic name at the end of the ITT mark does not serve to distinguish the disputed domain name from Complainants’ mark. See Honda Motor Company Limited v. LOKITA Enterprises,WIPO Case No. D2003-0507 (holding that the use of the domain name by the respondent would invariably lead a surfer to believe that the said domain name belongs to the complainant and represents the web site of the complainant from the India region); Bloomberg L.P. v. Sein M.D., NAF Claim No. 96487 (holding that the mere addition of a geographic identifier does not render the distinctive trademark BLOOMBERG diminished and that an addition of the words “China” and “Japan” does not controvert the ownership of trademark or service mark rights in the complainant).
Accordingly, the Complainants have made out the first of the three elements that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainants have the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name.
The consensus view among UDRP panelists is that a complainant need only make a prima facie showing that the respondent has no rights or legitimate interests in the domain name in order to place the burden of rebuttal on the respondent. See Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; 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; Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270. As discussed below, the Complainants have adduced evidence sufficient to support a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has not responded to this. Hence, the Respondent failed to come forward with credible evidence to rebut that showing.
The Panel notes that the Respondent has not been commonly known by the disputed domain name and that the Respondent has not acquired trademark or service mark rights in the distinctive part of the domain name (“ITT”). The Respondent’s use and registration of the disputed domain name was not authorized by the Complainant, and there are no indications of any connection between the Complainants and the Respondent.
Accordingly, the Complainants have made their case that the Respondent does not have any right or legitimate interest in the disputed domain name. C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith. See e.g. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052.
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one shall be evidence of bad faith. Among these factors demonstrating bad faith registration and use are the use of a domain name to intentionally attempted to attract, for commercial gain, Internet users to a web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site or location and the registration of a domain name in order to prevent the holder 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.
The Complainants have demonstrated that their ITT mark has been registered for about half of a century and has been widely used in commerce since, including in the Respondent’s country of Japan. The Respondent elected to combine the full text of the Complainants’ trademark in conjunction with a geographic term corresponding to the location of a technology center of the Complainants, indicating that it must have known the Complainants and their ITT mark at the time it registered the disputed domain name. See La Quinta Worldwide, L.L.C. v. VALUE-DOMAIN COM/ Value Domain,WIPO Case No. D2012-0005 (holding that the registration of the complainant’s trademark for over forty years and the combination of the full text of the complainant’s trademark in conjunction with a geographic term corresponding to the location of one of the complainant’s hotels, indicates that the respondent must have been fully aware of the complainant and its LA QUINTA mark at the time it registered the disputed domain name).
Furthermore, the Complainants have demonstrated that the Respondent has a history and pattern of bad faith registration of domain names, incorporating the trademarks of third party complainants, as determined by various UDRP panels. According to this Panel, a domain name registrant cannot be willfully blind to whether the disputed domain name may violate trademark rights. After all, paragraph 2 of the Policy provides that it is the registrant’s responsibility to determine whether its domain name registration infringes or violates someone else's rights. The registration of multiple domain names with no appropriate mechanism for ascertaining whether these may be identical or confusingly similar to third party trademarks, may support a finding of bad faith. See e.g., Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304 (finding that where a respondent registers large swaths of domain names for resale, often through automated programs that snap up domain names as they become available, with no attention whatsoever to whether they may be identical to trademarks, such practices may well support a finding that respondent is engaged in a pattern of conduct that deprives trademark owners of the ability to register domain names reflecting their marks); HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062 (finding that Registering a domain name that is identical to the distinctive trademark of another and using the domain name to generate revenue by directing Internet users to the websites of the trademark owner’s competitors, without exploring in a meaningful way the possibility of third-party rights, is inconsistent with the good faith requirement). For these reasons, the Panel finds that the Respondent registered the disputed domain name in bad faith.
According to this Panel, there are further indications of bad faith registration and use. It appears that the Respondent is using the ITT mark in its domain name to attract the public to a website that has no connection whatsoever with the ITT mark and that contains links that can be believed to provide pay-per-click revenue to the Respondent. According to this Panel, such use does not constitute a bona fide offering of goods or services. Moreover, the Respondent provided links providing content relating to jobs in the Japanese sex industry. According to the Panel, such use may tarnish the Complainants’ trademarks and constitutes further indication of bad faith use. See CHRISTIAN DIOR COUTURE v. Paul Farley,WIPO Case No. D2008-0008 (holding that sexually tinted links on a website related to a domain name that is confusingly similar to a complainant’s trademark could reasonably be supposed to tarnish that mark and does constitute bad faith use).
Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the disputed domain name was registered and is being used in bad faith. 7. Decision
For 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 Complainants.
Flip Jan Claude Petillion
Sole Panelist
Dated: May 14, 2012
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