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 Respondent is Jonathan G. Till, Warner Brothers Studio Store of New York, United States of America. 2. The Domain Names and Registrar
The following disputed domain names, , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , . , , , , , , , , , , , , and are 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 August 13, 2013. On August 14, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 15, 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 August 28, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 17, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 18, 2013.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on October 1, 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 trademark and claims to own more than 1,000 trademark registrations for its mark around the world including, in particular, for the word mark SEIKO in the United States since 1959 under No. 0686264 (Annex 203 to the Complaint).
There are 100 disputed domain names listed in this Complaint, all of which wholly incorporate the word mark SEIKO and were registered on March 29, 2013. 5. Parties’ Contentions A. Complainant
The Complainant claims that it first used its SEIKO trademark in relation to watches in 1924. Nowadays the SEIKO trademark is used in a variety of goods and services including watches, clocks, electronic devices, eyewear, metronomes, tuners and sports equipment, being the SEIKO trademark quite well-known throughout the world. Moreover, the SEIKO trademark is neither descriptive nor generic for any particular product and has a very strong reputation specially in relation to watches.
According to the Complainant, the disputed domain names are confusingly similar to the SEIKO trademark given that they reproduce the trademark in its entirety, also adding “jp” which stands for Japan, the Complainant’s country of origin, the expression “don” followed by another expression. Such suffixes, under the Complainant’s view, are not sufficient to avoid confusion or undue association between the disputed domain names and the Complainant’s prior SEIKO trademark.
As to the absence of rights or legitimate interests, the Complainant argues that:
i. no license or authorization of any kind has been given by the Complainant to the Respondent to register the disputed domain names, not ever having the Respondent been affiliated with the Complainant;
ii. the websites that resolved to the disputed domain names appear to offer for sale counterfeit Seiko products or to have been used in a scam where payment is taken but no product is ever delivered (Annexes101 to 200 to the Complaint); and
iii. the investigations conducted have failed to locate any registrations for SEIKO or any variant in the name of the Respondent, as well as no evidence that the Respondent has been commonly known by the disputed domain names on any legitimate grounds could be found.
In what it relates to the bad faith in the registration and use of the disputed domain names, the Complainant asserts that the Respondent’s knowledge of the SEIKO trademark is evident given the reproduction of the SEIKO well-known trademark and of the fake Seiko products on the websites that resolved to the disputed domain names, being it only possible to conclude that the Respondent knew about the SEIKO trademark and reputation, and intentionally used them to the Respondent’s advantage in bad faith.
Furthermore the Complainant points out that the 100 disputed domain names were registered on the same date and resolve to very similar websites (Annexes 101 to 200 to the Complaint), what clearly indicates a pattern of bad faith abusive behavior intended to profit from the Complainant’s reputation and can potentially cause the tarnishment of the Complainant’s mark in view of the fraudulent use and sale of counterfeit products undertaken by the Respondent. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain names to the Complainant:
i. the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
ii. the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
iii. the disputed domain names have been registered and are being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain names transferred to it, according to paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
The Complainant is the owner of the United States Registration No. 0686264 since 1959 for the SEIKO trademark (Annex 203 to the Complaint). As already recognized in a recent UDRP decision “[t]he 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.” (Seiko Holdings Kabushiki Kaisha (trading as Seiko Holdings Corporation) v. 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, L. Clark William, 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, dan, song, WIPO Case No. D2013-0994).
The 100 disputed domain names all begin by wholly incorporating the Complainant’s SEIKO trademark, followed by the adding of “jp” which stands for Japan, the Complainant’s country of origin, and then the expression “don” followed by another expression. Under this Panel’s view the suffixes chosen by the Respondent are not sufficient to avoid confusion or undue association between the disputed domain names and the Complainant’s prior SEIKO trademark.
For the reasons above, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate the Respondent’s rights or legitimate interests in the disputed domain names. These circumstances are:
i. before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names 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 names, in spite of not having acquired trademark or service mark rights; or
iii. the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain names. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules (see e.g. Banco Bradesco S/A v. B Private Registrant, A Happy DreamHost Customer,WIPO Case No. D2010-2108). Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent.
In that sense, the Complainant indeed asserts that no authorization or license has been given by the Complainant to the Respondent to register the 100 disputed domain names, nor was the Respondent ever affiliated with the Complainant. There is also no evidence that the Respondent has been commonly known by the disputed domain names.
According to the evidence submitted by the Complainant (Annexes 101 to 200 to the Complaint) the websites that resolved to the disputed domain names displayed watches for sale. In spite of the absence of proof that the products being offered were indeed fake as argued by the Complainant, it is undoubtful that the websites were offering the Complainant’s and its competitors’ watches for sale. Such use in this Panel’s view do not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names in view of the well-known SEIKO trademark.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain names. C. Registered and Used in Bad Faith
The Policy indicates in its paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, both the registration and use of the disputed domain names in bad faith can be found in view of the reproduction of the SEIKO trademark in connection with the offering for sale of watches (the products most commonly associated with the Complainant and its well-known trademark), on the websites that resolved to the disputed domain names.
The Respondent’s use of the disputed domain names not only clearly indicates full knowledge of the SEIKO trademark but also an attempt to misleadingly diverting consumers for the Respondent’s own commercial gain.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain names pursuant to paragraph 4(b)(iv) 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.
Wilson Pinheiro Jabur
Sole Panelist
Date: October 14, 2013
Full & Egal Universal Law Academy