The Complainant is the Bank of Tokyo-Mitsubishi UFJ, Ltd. of Tokyo, Japan, represented by Sanderson & Co., United Kingdom of Great Britain and Northern Ireland.
The Respondent is Katz Global Domain Name Trust of Singapore, Republic of Singapore. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Web Commerce Communications Limited dba WebN (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2012. On July 16, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 16, 2012, the Registrar 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 July 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 8, 2012. On July 24, 2012, the Center received an informal email communication from an email address different from the one provided in the Complaint and by the Registrar. The Respondent did not submit any formal Response. Accordingly, the Center notified the parties about the commencement of panel appointment process on August 10, 2012.
The Center appointed Nicholas Weston as the sole panelist in this matter on August 20, 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 Complainant is a leading Japanese bank that forms part of a multinational trading, manufacturing and services business with operations in more than 80 countries. The Complainant’s direct parent entity Mitsubishi UFJ Financial Group operates a diversified financial services business in more than 40 countries with nearly 35,000 employees and assets as at March 2010 of JPY 204trillion (USD 2.6 trillion). The Complainant’s parent entity, Mitsubishi Corporation, holds registrations for the MITSUBISHI trademark and variations of it in numerous countries including Singapore, which the Complainant uses under license to designate its commercial banking, investment banking and asset management business. The Singapore registration has been in effect since 1991 and has been used in Japan since 1870.
The Complainant conducts business on the Internet using numerous domain names containing the word “mitsubishi” including with a portal website resolving from that domain name from the parent entities to the group subsidiaries webpages, including that of the Complainant. The Complainant’s related group of companies also own numerous domain names comprising or containing the word “mitsubishi”.
The Respondent registered the Disputed Domain Name on December 31, 2010 which resolved to a web page containing offerings in connection with MITSUBISHI brand financial services. 5. Identification of Respondent
Having regard to the remedy sought in the Complaint, and having regard to paragraph 10(b) of the Rules, the Panel must be satisfied that any orders made will address the appropriate Respondent.
Paragraph 1 of the Rules defines “Respondent” as “the holder of a domain name registration against which a complaint is initiated”. The Complainant has named and proceeded against a domain name registration privacy service listed as the registrant of the Disputed Domain Name in the WhoIs prior to the filing of the Complaint.
The use of a privacy service raises three issues for determination by the Panel. First, the Panel must identify the appropriate Respondent. Second, the Panel must determine the applicable mutual jurisdiction. Third, the Panel must determine whether the Center has adequately discharged its responsibility to contact the Respondent by reasonable means.
Taking into account the above questions as also set out in Accor and SoLuxury HMC v. Domains by Proxy, Inc. and Therese Kerr,WIPO Case No. D2009-0243, and in view that most UDRP panels in cases involving privacy or proxy services in which disclosure of an underlying registrant has occurred, appear to have found it appropriate to record in their issued decision both the name of the privacy or proxy registration service appearing in the WhoIs at the time the complaint was filed, and of any disclosed underlying registrant, this Panel finds that in light of the record the named Respondent Katz Global Domain Name Trust is the proper respondent (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.9).
As noted having regard to the Complainant’s submissions and the location of the principal office of the Registrar, it appears that the applicable mutual jurisdiction1 is Singapore.
Finally, the Panel has reviewed the record and finds that the Center has adequately discharged its responsibility to contact the Respondent by reasonable means. Prima facie evidence of this, apart from the Response, is the “Supplementary Response”, even though the words “calculated to achieve actual notice” in paragraph 2 of the Rules do not demand proof of service. 6. Parties’ Contentions A. Complainant
The Complainant cites its trademark registrations of the trademark MITSUBISHI in various countries as prima facie evidence of ownership.
The Complainant submits that the mark MITSUBISHI is well-known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the MITSUBISHI trademark and that the similarity is not removed by the addition of the descriptive word “finance”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent has no trademark rights in or license to use the Complainant’s trademark. The Complainant also contends that use which intentionally trades on the fame of another can not constitute a bona fide offering of goods or services (citing Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle,WIPO Case No. D2005-1105.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to paragraphs 4(a)(iii) and 4(b) of the Policy, and paragraph 3(b)(ix)(3) of the Rules, as by using the Complainant’s MITSUBISHI mark in the Disputed Domain Name, “the Respondent intentionally attempted (and continues to attempt) to use the reputation of the Complainant and the Mitsubishi Group so that users will be lured to websites not owned or authorized by the Complainant”. The Complainant further contends that the Panel should draw an inference of bad faith from the use of a privacy service by the registrant of the Disputed Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 7. Discussion and Findings
Under paragraph 4(a) of the Policy, the complainant has the burden of proving the following:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark MITSUBISHI in Singapore and in many other countries throughout the world. The Panel finds that the Complainant has rights in the mark MITSUBISHI in the Respondent’s relevant jurisdiction, Singapore, pursuant to Singapore Trademark Registration No. T9102674F from March 1991. In any event, the propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358). The Panel finds that the Complainant has rights in the mark MITSUBISHI.
The Panel also finds that the mark MITSUBISHI is well-known, notwithstanding that its use has not always been in the context of financial services.
Turning to whether the Disputed Domain Name is identical or confusingly similar to the MITSUBISHI trademark, the Panel observes that the Disputed Domain Name comprises (a) an exact reproduction of the Complainant’s trademark (b) conjoined with the descriptive word “finance” (c) followed by the top level domain suffix “.com”.
It is well established that the top level designation used as part of a domain name should be disregarded: (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374). The relevant comparison to be made is with the second level portion of the Disputed Domain Name: “mitsubishifinance”.
It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of a word or, in this case, an obvious contraction of a descriptive word (see Oki Data Americas, Inc. v. ASD, Inc., supra; Wal Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033).
This Panel finds that the additional element, specifically the descriptive word “finance”, after the Complainant’s registered trademark, that numerous previous UDRP decisions have found does not serve to adequately distinguish a disputed domain name and therefore the Disputed Domain Name in this matter remains confusingly similar to the registered trademark (e.g.: Sanofi-Aventis v. Carmen Capone, WIPO Case No. D2006-0112; Scania CV AB (Publ) v. ScaniaF.u,WIPO Case No. D2008-0113; Allianz SE v. Well Domains are either owned by us or Client Managed,WIPO Case No. D2008-0535).
In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698, the panel held that “[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant’s mark into thinking they are on their way to the Complainant’s Website”. The Disputed Domain Name is therefore confusingly similar to the MITSUBISHI trademark.
Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name:
(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Policy places the burden on the complainant to establish the absence of respondent’s rights or legitimate interest in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The evidential burden then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview 2.0, paragraph 2.1)
It is well established that a respondent has a right to register and use a domain name to attract Internet traffic based solely on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant (see National Trust for Historic Preservation v. Barry Preston,WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc.,WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich,WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,WIPO Case No. D2001-0031; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047). However, this business model is legitimate only if the domain name was registered because of its attraction as a descriptive phrase comprising dictionary words, and not because of its value as a trademark and that website is then used to post links that are relevant only to the common meaning of the phrase comprising dictionary words (see National Trust for Historic Preservation v. Barry Preston,WIPO Case No. D2005-0424; The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340; WIPO Overview 2.0, paragraph 2.2).
However, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is misleadingly directing Internet users to a fraudulent web page advertising or offering for sale products in connection and competition with the Complainant’s mark and thereby illegitimately “seems to be an effort by the Respondent to use the efforts and reputation of the Complainant to deceive”. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark.
On any objective view, the Respondent is not a reseller with a legitimate interest in the Disputed Domain Name such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name.
This Panel finds that the Respondent is making an illegitimate commercial use of the Disputed Domain Name. By misleadingly diverting consumers, it can be inferred that the Respondent is opportunistically using the Complainant’s well-known mark in order to attract Internet users to its website and has been using the Disputed Domain Name to divert Internet traffic to its web page.
The Panel finds for the Complainant on the second element of the Policy. C. Registered and Used in Bad Faith
The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
“b. Evidence of Registration and Use in Bad Faith. For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, (relevantly):
ii. you have registered the 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 you have engaged in a pattern of such conduct; or
iii. you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv. by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
The examples of bad faith registration and use in paragraph 4(b) of the Policy are not exhaustive of all circumstances from which such bad faith may be found (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another (see M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230).
The evidence supports the Complainant’s contention that the Respondent registered and has used the Disputed Domain Name in bad faith. The onus is on the Respondent to make the appropriate enquiries. Paragraph 2 of the Policy clearly states: “It is your [domain-name holder’s] responsibility to determine whether your domain name registration infringes or violates someone else’s rights”. The apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else’s trademarks, such as by conducting trademarks searches or search engine searches, supports a finding of bad faith (see Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304; L’Oréal v. Domain Park Limited,WIPO Case No. D2008-0072; BOUYGUES v. Chengzhang, Lu Ciagao,WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141).
The trademark MITSUBISHI is so well-known throughout Asia that it is inconceivable that the Respondent might have registered a domain name similar to or incorporating the mark without knowing of it.
Further, a gap of ten years between registration of the Complainant’s trademark and the Respondent’s registration of the Disputed Domain Name (containing the trademark) can in certain circumstances be an indicator of bad faith (see Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415). In this case, the Complainant’s parent entity held direct United Kingdom registration for the trademark MITSUBISHI, U.K. Registration No. 1282425 from 1986 predating its rights from the Respondent’s registration by over 24 years.
A further conclusion can be drawn about the Respondent from its use of the Disputed Domain Name resolving to a web page, a copy of which was provided as Annex 5 of the evidence supporting the Complainant’s Complaint, containing offerings that directly compete with the offerings of, and using a confusingly similar logo to that of the financial services business operated by the Complainant. In this Panel’s view, it is in breach of the domain name Registrar’s registration agreement for breach of the required warranty: “the desired domain name does not infringe any registered or unregistered trademark or any other intellectual property rights or any other rights of any third party.”
The diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions (See L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 and Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814).
Moreover, the Panel has considered whether it should draw an adverse inference from the Respondent’s use of a privacy shield. The Disputed Domain Name did not resolve to a website critical of, or satirising, the Complainant’s business which may warrant the use of a privacy service as protection from retribution. In the circumstances it seems reasonable to infer that the main purpose the Respondent has used a privacy service is to cause the Complainant difficulty in identifying other domain names registered by the same Respondent, in another example of bad faith use (see Medco Health Solutions, Inc. v. Whois Privacy Protection Service, Inc.,WIPO Case No. D2004-0453; Microsoft Corporation v. Whois Privacy Protection Service / Lee Xongwei,WIPO Case No. D2005-0642; CCM IP S.A. v. Traverito Traverito,WIPO Case No. D2007-0542; Ustream.TV, Inc v. Vertical Axis, Inc.,WIPO Case No. D2008-0598; Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647).
This Panel finds that the Respondent has taken the Complainant’s trademark MITSUBISHI and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users to a web page for commercial gain.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 8. 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 Complainant.
Nicholas Weston
Sole Panelist
Dated: September 3, 2012
1 In general, having regard to the definition of “mutual jurisdiction” in the Rules, it would either be that of the registrant’s address as identified in the Registrar’s WhoIs at the time of the filing of the complaint with the provider or the principal office of the Registrar, see Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0320. In this case, the Complainant has elected the jurisdiction of the courts at the location of the principal office (i.e. Singapore).
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