The Complainant is Seiko Holdings Kabushiki Kaisha (trading as Seiko Holdings Corporation) of Tokyo, Japan, represented by Sanderson & Co., United Kingdom of Great Britain and Northern Ireland.
The Respondents are L. Collins Travis, C. Turner Jose, J. Kuhl Troy, Gregory Bragg, Patricia Vortherms, Mark Gomatham, Sharon Smith, Micheal Carter, Aaron Gaona, Pamela Rios, Billy Duhart, Debbie Davis, Dani Williams, Lisa Hale, Max Inthisorn, Mike Basterd, Kimberly Mitchell, Miguel Chappy, Joshua White, Amanda Lambert, Michelle Subra, Shea Milford, Stephanie Jacobs, Doug Tkbesi, Robert Wright, Jenny Hartshorn, Brianne Johnson, Amanda Torres, Tyler Starr, Brent Double, Jason Wetzel, Michael Osguthorpe, Steve Holliday, Lauren Guidry, Amy Guillory, Nick Pierce, Tim Douglas, Olivia Carter, Shawn Heart, Melissa Conner, Brian Simmons, A. Cornelius Alfred, E. Pagano Ryan, L. Cobb Vernon, Pam Williams, Fabrizio Alfna, Maria Lynn, Michele Kurtz, Lori Daniels, Kelly Walker, Mandy Hughes, Angie Hudgins, Nadine Lindemann, Elizabeth Burns, Adam Whitney, Nishi Martinez, Melissa Wilcox, Lance Vesci, Angela Wiseman, Bilal Vega, Tommy Bailey, Daryl Kokenge, Shawn Bernier, Tiffany Kavali, Colleen Deemer, Elizabeth Traub, Scott Jackson, Julie Allen, Leslie Riley, Blake Flint, Michael French, Anne Nosbush, Lisa Baker, Brittany Bolden, Chris Palauni, Roberto Kiran, Stefanie Ibarra, James Helvie, Manuel Mack, A. Free Thaddeus, Gilmore Heath A, Angel Clinkscales, Jonathan Hudson, Regina Barnes, Tina Fernandez, Maria Ramirez, David Edwards, Steve Bryde, J. Dulin Andrew and L. Clark William, United States of America, and xin, tang, pan, jin, lu, han, chunxia, wang, feng, bai, yang, wang, li, sun, yong, zhao, seikobrightcom, leijia, zhao, fengli, zhang, tian, zhao, tao, sun, ruyun, xu, daguo, li and dan, song, China. 2. The Domain Names and Registrars
The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and are registered with GoD, LLC.
The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and are registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2013. On May 30 and May 31, 2013, the Complainant filed amendments to the Complaint. On June 4, 2013, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On June 5 and June 8, 2013, the Registrars transmitted by email to the Center their verification responses confirming that the Respondents are listed as the registrants and providing the contact details.
The Center verified that the Complaint together with the amendments to 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 Respondents of the Complaint, and the proceedings commenced on June 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 9, 2013. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on July 10, 2013. On July 12, 2013, the Center sent an email communication requesting the Respondents to indicate to the Center by return email whether they intended to participate in the proceeding or otherwise. No communications were received. Accordingly, the Center informed the parties on July 18, 2013, that it would proceed with the panel appointment process.
The Center appointed Alistair Payne as the sole panelist in this matter on July 23, 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 is the owner of the well-known SEIKO trade mark and has various trade mark registrations for its mark around the world including, in particular, for the word mark SEIKO in the United States of America since 1958.
There are 138 disputed domain names listed in this Complaint which are owned by 106 Respondents. All of the disputed domain names wholly incorporate the word mark SEIKO and were registered between July 27, 2012 and January 12, 2013. As set out below, the Complainant seeks to consolidate its complaint in relation to each disputed domain name into this single Complaint. 5. Parties’ Contentions A. Complainant
The Complainant submits that all of the disputed domain names are under common control and should therefore be consolidated into this single Complaint under the Policy. The Complainant’s basis for this submission arises from a number of factors, including that: the disputed domain names were registered through only two different Registrars on four different registration dates; each incorporates the word mark SEIKO together with a non-distinctive generic or geographical term; the disputed domain names all resolve to the same or similar websites which offer watches for sale; the physical contact addresses for each of the disputed domain names is false and the contact email addresses use only two domains, namely @ and @. Further the Complainant says that the disputed domain names feature common registration information such as administrative contact details, technical contact details, postal addresses, email addresses, IP addresses, and telephone and fax numbers. All 138 domains use only 22 different primary IP addresses and these are closely related into five groups.
The Complainant submits that it owns registered trade mark rights in the SEIKO word mark as noted above and that each of the disputed domain names includes the mark in its entirety together with a non-distinctive geographical or generic term and that with the exception of three of the disputed domain names the disputed domain names start with the word mark SEIKO. As far as the other three disputed domain names are concerned, namely, , and the Complainant says that these include strongly descriptive words such as “watch” or “shopping” and that the similarity is strong. As a consequence the Complainant submits that the disputed domain names are all confusingly similar to the Complainant’s SEIKO word mark.
The Complainant submits that its SEIKO mark is extremely well known around the world both in relation to watches and to a broader range of products. It says that none of the Respondents were licensed or authorised to use its mark and nor do they have any association or affiliation with the Complainant. The Complainant notes that almost all of the Respondents appear to have fake contact addresses and therefore submits that many if not all of the Respondents’ names are likely to be made up.
The Complainant notes that the disputed domain names were all registered between July 27, 2012 and January 12, 2013 long after the SEIKO mark was first used by the Complainant in 1924 and also a long time after its respective trade mark registrations in different jurisdictions.
The Complainant says that there is no evidence that the Respondents are using its mark in relation to the provision of bona fide goods or services and that it appears that the disputed domain names have been registered to support the sale of fake SEIKO products through the various websites to which they resolve, although its efforts to purchase any of these products to date have been unsuccessful. It says that the use of the disputed domain names is obviously for commercial purposes and there is no evidence to support legitimate noncommercial or fair use.
Essentially the Complainant submits in relation to bad faith that the disputed domain names have been registered and used in order to confuse Internet consumers into thinking that they are purchasing real SEIKO watches when it appears that this cannot be the case and they are in reality purchasing fake ones. The Complainant notes that the email address mrseeasch56842@ that is associated with many of the disputed domain names is also listed on similar websites which appear to offer fake branded goods such as “” and “” and “”. The Complainant further submits that the use of the disputed domain names creates initial interest confusion as to the source, sponsorship or affiliation or endorsement of the websites to which they resolve or of the products offered for sale on those websites, and that the creation of such confusion and diversion of web traffic amounts to bad faith.
The Complainant notes that it attempted to buy products from various of the sites to which the disputed domain names resolve but no product ever reached the Complainant’s agent and the only reply ever received was that the selected product was not available at the moment but could be purchased from a different website which also appeared to sell fake products. B. Respondents
The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Consolidation of Respondents
This case is brought in relation to 138 separate domain names each of which wholly incorporate the SEIKO trade mark and against 106 named respondents.
Previous UDRP panels have been prepared to consolidate cases against differing respondents under paragraphs 3(c) and 10(e) of the Rules, in circumstances that common control is being exercised over the disputed domain names or the websites to which the domain names resolve (for example - Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281).
Most recently in Guccio Gucci S.p.A v. Andrea Hubner, Beijing Harmony Software Co.Ltd., jiang wang, brian miller, Pornsawang Chotima, Domain Whois Protection Service, Whois Agent, Jie Zhou, Jayzhou, Hi to every day in Zhengzhou Medical Devices Co., Ltd., tian jin hua jin you xian gong si, lihong jay, hu, lizhu hu, da tou, Tamia Liu, Wang Jie, Yijiwangluo, WIPO Case No. D2012-2212 which concerned 128 domain names with 10 respondents, the panel in that case relied on various factors as being indicative of common control for this purpose including the following:
(1) The use of common registration information such as administrative contact details, technical contact details, postal addresses, email addresses, IP addresses, and telephone and fax numbers;
(2) The use of the same or similar names in the registration information;
(3) That the disputed domain names resolve to the same or similar websites;
(4) The same domain name servers are used;
(5) The same registrars are used; and
(6) That there is a close similarity between the disputed domain names, each of which incorporates the trade mark in its entirety in conjunction with non-distinctive, generic or geographical terms.
In the current case it appears to the Panel that:
(1) There is a pattern of use of obviously fake physical addresses (whether in the United States or China) and of e-mail contact addresses hosted by the same two services;
(2) All the disputed domain names were registered by block on the same four dates in 2012 and 2013;
(3) The disputed domain names resolve to the same or similar websites that feature similar content and serve the same function, namely to sell watch products;
(4) The disputed domain name servers use the same or closely related domain name servers (i.e. the same hosting service);
(5) The disputed domain names are registered with only two registrars; and
(6) There is a close similarity between the disputed domain names, each of which incorporates the Complainant’s SEIKO trade mark in its entirety in conjunction with non-distinctive, generic or geographical terms.
In these circumstances the Panel is prepared to infer that on the balance of probabilities it is most likely that the disputed domain names are controlled by the same person or entity and that as a result and considering the aims and objectives of the Policy, it is in this case procedurally efficient and appropriate under the Rules to consolidate the cases into this single proceeding. B. Identical or Confusingly Similar
The Panel finds that the Complainant owns registered trade mark rights in the SEIKO word mark and in particular has owned a registered trade mark for its SEIKO mark in the United States since 1958 as noted above. The Panel notes that the Complainant has very long standing and established reputation in many countries worldwide in connection with its SEIKO mark and that this trade mark is truly of the category of marks that can be said to be well known.
The disputed domain names all wholly incorporate the Complainant’s SEIKO mark, together with non-distinctive generic or geographical words or abbreviations. With the exception of three examples all begin with the word “seiko”. The three examples that do not, namely, , and each contain non-distinctive elements together with the distinctive SEIKO mark. Several of the disputed domain names incorporate non-distinctive abbreviations for generic terms such as, and and which do not, in the Panel’s opinion, detract from the prominence and distinctiveness of the SEIKO mark incorporated into each of these disputed domain names. Similarly, the addition of an “s” to “seikotokyo” to constitute the domain name does not in this Panel’s view do anything to distinguish the prominence of the SEIKO mark.
The Panel also does not find that the additional terms in or detract from or distinguish the prominent SEIKO mark. The addition of the term “rakuten” or “rakutens”, which the Panel understands to mean “optimistic” in Japanese, is also a generic term which particularly when placed behind the well-known SEIKO mark does not lessen the possibility of consumers associating each of these disputed domain names with the Complainant.
For these reasons the Panel finds that each of the 138 disputed domain names are confusingly similar to the Complainant’s SEIKO mark and that the Complaint succeeds in relation to the first element of the Policy. C. Rights or Legitimate Interests
There is no evidence before the Panel to suggest that the Complainant has authorized or licensed the use of its SEIKO mark to any of the Respondents or that any of the Respondents are selling genuine SEIKO products and may have a legitimate interest in advertising this fact. It seems clear in the Panel’s view that the disputed domain names which all resolve to websites on which the Complainant’s products or competitors’ products are sold, but which do not appear to be authorized by the Complainant, are all aimed to confuse and divert Internet users for the Respondents’ commercial purposes and the Respondents have provided nothing in support of a case that any of them are entitled to do so.
The Panel finds for these reasons and for the reasons set out below that the Complainant has made out a prima facie case in relation to each of the disputed domain names that each relevant Respondent has no rights or legitimate interests in relation to the relevant disputed domain name. In the absence of any evidence to rebut the Complainant’s case in relation to each disputed domain name, the Panel finds that the Complainant has made out its case in relation to each disputed domain name under the second element of the Policy. D. Registered and Used in Bad Faith
The disputed domain names were all registered over a period ranging from mid-2012 to early 2013. There is no question that by this time the Complainant’s SEIKO mark was very well known, in particular, in relation to watches and the Panel infers that the Respondents, or the party that created them, knowingly registered each of the disputed domain names with a view to confusing Internet users and diverting them to the Respondents’ various websites.
Under paragraph 4(b)(iv) of the Policy there is evidence of registration and use in bad faith where a domain name is used to confuse Internet users into thinking that there is some association with or endorsement by the real trade mark owner which there is not and to misleadingly divert Internet users to another website for commercial gain. This is quite clearly the situation in this case - the Panel infers that the Respondents or the party in control, sought to use the disputed domain names to divert Internet traffic away from the Complainant’s official websites to the Respondent’s own websites for commercial purposes. The evidence of a common contact email address ostensibly being used in similar circumstances in relation to other well-known marks when incorporated into domain names that resolve to similar shopping websites only serves to reinforce the Panel’s view in this regard.
Overall and as noted under the procedural amalgamation section above, the Panel accepts on the balance of probabilities the Complainant’s submission that the registration and use of the disputed domain names amounts to an orchestrated plan to trade off the goodwill and reputation attaching to the SEIKO mark and to divert Internet users to other sites for commercial purposes and most likely for the purpose of selling them fake SEIKO products. Although the Complainant was unable to produce hard evidence of the sale of such products, it did demonstrate that although the products were not ostensibly available there was an intention to sell products other than those authorised by the Complainant, whether from these sites or from other sites. In the circumstances of the Panel’s finding of common control as set out above, this finding reinforces the Panel’s inference that the disputed domain names were each registered and have been used in bad faith. The Panel notes that the type of wholesale cyber-squatting in relation to a well-known mark as demonstrated in this case is exactly the sort of conduct that is intended to be deterred by the Policy.
For these reasons the Panel finds that each of the disputed domain names was registered and used in bad faith and that the Complaint succeeds under the third element of the Policy. 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 names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , ,
, , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and be transferred to the Complainant.
Alistair Payne
Sole Panelist
Date: August 6, 2013
Full & Egal Universal Law Academy