The Complainant is Combi Corporation (Japanese Corporation) of Tokyo, Japan, represented by Seiwa Patent & Law, Japan.
The Respondent is NTC Co Ltd of Aichi, Japan, internally represented. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2013. On January 31, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 1, 2013, 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. On February 4, 2013, the Center transmitted a request for confirmation regarding mutual jurisdiction to the Complainant. On February 5, 2013, the Complainant confirmed its choice for mutual jurisdiction.
On February 4, 2013, the Center transmitted an email to the parties in both the Japanese and English languages regarding the language of the proceeding. On February 7, 2013, the Complainant confirmed its request that Japanese be the language of the proceeding and submitted additional documents. The Respondent did not reply to the Center’s language of the proceeding email.
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 February 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2013. The Response was filed with the Center on March 1, 2013.
The Center appointed Masato Dogauchi as the sole panelist in this matter on March 15, 2013. In its communications of March 18, 2013, the Respondent has challenged the Panel’s impartiality and independence. Paragraph 7 of the Rules states that any appointed panelist "shall be impartial and independent and shall have, before accepting appointment, disclosed to the Provider any circumstances giving rise to justifiable doubt as to the Panelist's impartiality or independence. If, at any stage during the administrative proceeding, new circumstances arise that could give rise to justifiable doubt as to the impartiality or independence of the Panelist, that Panelist shall promptly disclose such circumstances to the Provider. In such event, the Provider shall have the discretion to appoint a substitute Panelist". The Panel has verified conformity with the requirements and submitted the Statement of Acceptance and Declaration of Impartiality and Independence. In addition, in response to the Respondent’s submission, the Panel has considered it carefully in this regard and confirms that the Panel was properly constituted and that the Panel is impartial and independent.
Although the registered address of the Complainant and that of the Respondent are both in Japan, it seems safe to keep the principle that the language of the Registration Agreement, that is English, is to be used in these proceedings, since the Respondent did not reply to the Center’s communication in relation to the language of the proceeding. 4. Factual Background
The Complainant is a company organized under the law of Japan. It was established in 1957 in Japan. Since 1961, it has been manufacturing feeding bottles, potties, juvenile tableware, strollers, child seat and other juvenile products under the COMBI trademarks. In 1968, it changed its name to the current Combi Corporation. At present, it has ten affiliated companies not only within Japan but also in the United States of America, Taiwan, Province of China, China, the Republic of Korea and Southeast Asia.
The share of the Complainant's products in the Japanese domestic stroller and child seat market is high. The percentages of shipments of products of the Complainant in the total number of products shipped were, in fiscal year 2010, strollers 36.0% and child seats 20.0% and, in fiscal year 2011, strollers 30.0% and child seats 25.0%.
According to the Registrar, the Respondent is a company organized under the law of Japan.
This dispute concerns the disputed domain name identified registered by the Respondent on May 26, 2010.
The Complainant holds the registered trademarks COMBI in Japan (No. 1446386 registered on December 25, 1980 and renewed on January 4, 2011 and No. 4688847 registered on July 4, 2003 both with regard to goods “strollers” etc.). Further, it holds international registered trademark COMBI (No. 804063 registered on November 15, 2002). It has been using these COMBI trademarks for the production and sale of juvenile products. The name of “Combi” is known not only in Japan but also in foreign countries. For instance, the Complainant’s sales in the Russian Federation reached about 100,000 USD in 2008, 70,000 USD in 2010, 130,000 USD in 2011, and 600,000 USD are estimated in 2012.
The stroller market in Japan has been dominated by three large companies, the Complainant, Aprica Children’s Products Inc. and Maclaren Japan Ltd.
At the website of the disputed domain name, strollers, child seats and other juvenile products of the Complainant and Aprica Children’s Products Inc. are being sold in Russian language. 5. Parties’ Contentions A. The Complainant asserts in essence as follows:
(1) The disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) The disputed domain name was registered and is being used in bad faith.
With regard to the item (1) above, the Complainant is the owner of the well-known trademark COMBI. The disputed domain name incorporates the mark entirely. The addition of the name of a rival company of the Complainant, “aprica”, does not sufficiently distinguish the disputed domain name from the Complainant’s trademark.
With regard to the item (2) above, the Complainant has exclusive rights in the trademark COMBI, and it has never allowed others to use it in their domain names. Therefore, the Respondent has no right to use it in the disputed domain name.
With regard to the item (3) above, the disputed domain name was registered in bad faith since, at the time of registration of the disputed domain name, namely on May 26, 2010, it is obvious that the Respondent had knowledge of the Complainant’s trademark COMBI. Also, it is used in bad faith since the Respondent is using the disputed domain name to intentionally attempt to sell juvenile products of the Complainant and Aprica Children Products Co. Ltd. B. Respondent
The Respondent submitted an informal submission on March 1, 2013, the relevant parts of which the Panel discusses below. 6. Discussion and Findings
According to the Rules, paragraph 15(a), a UDRP panel shall decide a case on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with the Policy, paragraph 4(a), in order to qualify for a remedy, the Complainant must prove each of the following:
(1) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name;
(3) The disputed domain name has been registered in bad faith and is being used in bad faith. A. Identical or Confusingly Similar
The fame of the Complainant’s trademark, COMBI is obvious to the Panel. The Panel notes that the Respondent does not rebut that the Complainant has rights in the trademark COMBI.
The disputed domain name includes the trademark entirely. No proof has been put before the Panel as to whether “aprica” is a registered trademark, but it is apparent to the Panel that it has been used as a trade name or trademark of a rival company of the Complainant for a number of years at least in the juvenile products market in Japan. Furthermore, the combination of trademarks of two companies, “combi” and “aprica” does suggest that the website has no legitimate connection with these companies. Such combination is insufficient to dispel user confusion from inevitably occurring (the same holding is found in, for instance, Chevron Corporation v. Young Wook Kim,WIPO Case No. D2001-1142 ; Société des Produits Nestlé SA v. Stuart Cook,WIPO Case No. D2002-0118 , , and .).
The addition of the top-level domain “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant to determine the confusing similarity between the Complainant’s trademark and the disputed domain name.
The Panel therefore finds that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights. Paragraph 4(a)(i) of the Policy is accordingly satisfied. B. Rights or Legitimate Interests
The Panel finds based on the record that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 4(a)(ii) of the Policy is accordingly satisfied. C. Registered and Used in Bad Faith
The Respondent has submitted inter alia that it obtained the disputed domain name through formal registration procedures and that it is using the website at the disputed domain name to sell genuine and excellent products. The Respondent further submits that it has spent a lot of time creating the website at the disputed domain name and that it had no intention to damage or harm the Complainant’s reputation.
However, in consideration of the fame of the Complainant’s trademark, COMBI, it is highly unlikely that the Respondent would not have known of the Complainant’s legal rights in the trademark at the time of the registration of the disputed domain name.
The Panel finds that the Respondent is intentionally attempting to divert, for commercial gain, Internet users to one or more competing websites in an effort to confuse and mislead customers. In addition to products sold under the COMBI and Aprica brands, the Panel notes that the website at the disputed domain name appears to offer products e.g. under the Dior, Armani and Ralph Lauren brands. The Panel further notes that the Respondent does not disclose its relationship, or lack thereof, with the Complainant on the disputed website.
The Respondent is using the Complainant’s trademark COMBI and misleading Internet users to commercial websites. In this respect, it should be noted that the Russian language is used on the website. Furthermore, at least recently, the website could not be accessed from Japan, but apparently it was accessible from, for instance, the Russian Federation, Hong Kong, SAR of China, China and the Republic of Korea. These facts, however, do not change the above conclusion, since the mark COMBI is known in these jurisdictions, including the Russian Federation, and it is impossible to wipe out any possibility for the consumers there who can read Russian language to be misled by the disputed domain name.
The Panel therefore finds that the disputed domain name has been registered in bad faith and is being used in bad faith. For this reason, the Panel finds that paragraph 4(a)(iii) of the Policy is accordingly satisfied.
Accordingly, all three cumulative requirements as provided for in the Policy, paragraph 4(a), are determined to be satisfied. 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 Complainant.
Masato Dogauchi
Sole Panelist
Date: April 5, 2013
Full & Egal Universal Law Academy