The Complainant is Nissha Printing Co., Ltd. of Kyoto, Japan, represented by Seiter Legal Studio, United States of America (“United States”).
The Respondent is Hideo Hayashi of Inazawa, Aichi, Japan. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2013. On March 19, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 19, 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.
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 21, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 10, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 11, 2013.
The Center appointed Teruo Doi as the sole panelist in this matter on April 29, 2013. 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, Nissha Printing Co. Ltd. is a large, diversified multinational printing technology company headquartered in Kyoto, Japan. Among other business activities, the Complainant is globally well known for its manufacture of industrial materials and electronic components, such as decorative films, molds, and molded products, touch input panels and other input devices, as well as for its printing services for print books and periodicals. The Complainant is listed on the Tokyo Stock Exchange, with a capitalization as of its fiscal year ended March 31, 2012 in excess of YEN 5.5 billion.
Founded in 1927, renamed Nissha Printing, Ltd. in 1942, and later Nissha Printing Co., Ltd. in 1946 in the course of several corporate mergers, the Complainant has been a pioneer throughout its over 85 year history in the development of cutting-edge printing technologies. For example, the Complainant pioneered non-paper printing starting in the 1960s, in applications ranging from soft packaging to wood-grain transfer foil, to curved-surface printing on home appliances, including televisions and air-conditioners. In 1970, the Complainant entered the new field of precision electronic components by combining etching technology with state-of-the-art electronics, including transfer processing for computer keyboards. The 1980s saw the Complainant’s development of IMD, an integrated molding and decorative transfer system which exploits the heat and pressure generated at the time of molding to accomplish simultaneous image transfer, thus expanding its reputation for technological innovation further beyond the paper printing field. In the 1990s, the Complainant expanded to supplying touch panels for electronic diaries, mobile phones and mobile game consoles, and 2006 saw the launch of the Complainant’s Touch Window, a unique input device that blend touch panels with surface printing decoration, creating a synergy between the Complainant’s industrial materials business and input device business.
These waves of technological innovation, centered on high-quality printing and IMD technology, have driven the Complainant’s growth and garnered extensive goodwill for its NISSHA trademark, turning NISSHA into a well-known trademark in Japan and internationally. The Complainant is the owner of numerous trademark registrations and applications for the trademark NISSHA in Japan and internationally. The Complainant owns 38 Japanese trademark registrations for various goods and services in a large number of International Classes, and a further 10 Japanese trademark registrations and one pending application for marks including the term “Nissha” as a house mark in conjunction with additional terms.
Outside Japan, the Complainant also owns a number of trademark registrations for the mark NISSHA, including, United States Patent and Trademark Office (USPTO) Registration No. 2,791,631, filed on June 7, 1999, and registered on December 9, 2003, asserting use in commerce as early as 1989 and use in the United States commerce as early as 1996, for printing-related goods and services in International Classes 7, 9, 17, and 42. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name differs from the Complainant's trademark NISSHA only in that the generic Top-Level Domain (gTLD) “.com” is added to the Domain Name, and, under the UDRP, this difference is typically irrelevant in finding that the Domain Name is identical or confusingly similar to the Complainant's trademark NISSHA. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name which was registered and is being used in bad faith.
The Complainant requests transfer the Domain Name to it. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove that each of the following elements exists in seeking the transfer of the Domain Name:
(i) The Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
The Panel notes that the Respondent has failed to respond to the Complaint within the stipulated time and, as such, does not contest the facts asserted by the Complainant in the Complaint. A. Identical or Confusingly Similar
The Domain Name registered by the Respondent consists of a combination of the Complainant's trademark NISSHA in its entirety, followed by the gTLD suffix “.com”. In view of the distinctive quality of the word “Nissha”, the addition of “.com” which is customarily added to the Domain Name, and under the UDRP, this difference is irrelevant in finding that the Domain Name is identical or confusingly similar to the Complainant's trademark NISSHA.
Therefore, the Panel finds that the first element of the Policy has been met. B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent lacks any right or legitimate interest in the Domain Name since it has never been commonly known by the Domain Name, has not been authorized to use the Complainant's NISSHA mark, and has no connection or affiliation to the Complainant. The Respondent failed to rebut the Complainant's case, and the Panel found no evidence in the record to show or infer the Respondent's rights or legitimate interests in the Domain Name.
Therefore, the Panel finds that the second element of the Policy has been met. C. Registered and Used in Bad Faith
In view of the distinctive quality possessed by the Complainant's NISSHA mark, the Panel finds that the Respondent's registration of the Domain Name consisting of the NISSHA mark combined with non-distinctive gTLD suffix “.com” is a clear indication of the Respondent's awareness of the Complainant's NISSHA trademark when it registered the Domain Name. Further, the fact that the Domain Name has not been actively used does not preclude the Panel's fining of the bad faith use of the Domain Name under the UDRP jurisprudence. The Panel further notes that in a previous WIPO case involving the domain name consisting of another well-known Japanese trademark, the same Respondent defaulted, and was found to have registered and used the domain name in bad faith despite the inactivity of the website under that domain name. See Kuraray Co., Ltd. v. Hideo Hayashi,WIPO Case No. D2007-1929
Therefore, in the present circumstance, the Panel finds that the third element of the Policy has been met. 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 Domain Name be transferred to the Complainant.
Teruo Doi
Sole Panelist
Date: May 7, 2013
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