The Complainant is Tadashi Yanai of Yamaguchi, Japan, represented by Seiter Legal Studio, United States of America (“US”).
The Respondent is Antonio Camberos of Coahuila, Mexico, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2013. On September 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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.
Email communications were received from the Respondent and the Complainant on September 5 and 6, 2013 and September 7, 2013 respectively. On September 9, 2013, the Center acknowledged receipt of these email communications. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 9, 2013.
The Center verified that the Complaint together with the amendment 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 Respondent of the Complaint, and the proceedings commenced on September 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response October 1, 2013. The Response was filed with the Center on September 17, 2013.
On September 17, 2013, the Center acknowledged receipt of this early Response and requested the Respondent to confirm this was his complete and final Response. On September 18, 2013, the Respondent confirmed that the Response of September 17, 2013 was his final Response. Other email communications were also received from the parties on September 17 and 18, 2013, which the Center acknowledged on September 18 and 19, 2013.
On September 19, 2013, the Center formally acknowledged receipt of the Response and requested the Respondent to provide three candidates to serve on the Administrative Panel. Three candidates were provided by the Respondent on September 26, 2013.
The Center appointed Adam Taylor, Teruo Doi and W. Scott Blackmer as panelists in this matter on October 14, 2013. The Panel finds that it was properly constituted. Each member of 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 founder, chief executive officer, and chairman of a fashion retailer, Uniqlo Co, Ltd. He is also the chief executive officer, chairman and largest single shareholder of Uniqlo’s parent company, publicly traded Fast Retailing Co., Ltd. Both companies are incorporated in Japan.
On August 27, 2013, the Complainant filed US trademark application No. 86048553 for TADASHI YANAI in international class 35.
The disputed domain name was created on November 15, 2012. According to the Registrar, the disputed domain name was registered to the Respondent on July 28, 2013.
At some point thereafter, the Respondent used the disputed domain name for a website headed as follows:
“TADASHIYANAI.COM. THIS DOMAIN NAME IS FOR SALE.
Your path to world wide domination starts with a good domain name.”
Beneath this appeared a 3x3 array of nine rectangular boxes displaying “Google Results”, “Google Monthly Searches” and “Google Japan Monthly Results” for the terms “Tadashi Yanai”, “Tadashi” and “Yanai”, followed by these bullet points:
“-Great Domain Name.
- Easy to type.
- Easy to remember.
- Short name.
- Brandable.
- This domain can be redirected to your website.
Please Submit Your Offer To: info@”
On January 25, 2013, the Respondent sent the following email to the Complainant:
“Dear Mr. Tadashi Yanai: (Fast Retailing - Uniqlo CEO)
Im the owner of the domain name TADASHIYANAI.COM.
TADASHIYANAI.COM= Personal Branding, Identity, Reputation, and LeaderShip.
The Best CEO’s, Chairman in the world have a dot com.
Examples:
AMANCIOORTEGA.COM Founder of giant retailer Inditex and ZARA Richest Man In Europe (Inditex protected domain name).
BERNARDARNAULT.COM CEO LVMH, Richest Man In France.
JOSEPHRATZINGER.COM Pope Benedict XVI.
BARACKOBAMA.COM President Of United States Of America.
I was think this can help you Mr. Yanai.
I think great persons like you deserves your own dot com.
If you are interested, please let me hear from you by return email.
Thank you so much.
With kind regards,
Antonio.”
On July 29, 2013, the Respondent sent a further email to the Complainant:
“EXCUSE ME FOR MY INSISTENCE.
WOULD YOU BE SO KIND TO TELL ME IF YOU ARE INTERESTED IN TO BUY TADASHIYANAI.COM?
Please let me hear from you by return email.
THANK YOU,
WITH KIND REGARDS,
ANTONIO.” 5. Parties’ Contentions A. Complainant Identical or Confusingly Similar
The Complainant is a world-renowned entrepreneur, business executive, philanthropist, and commentator on business, economic, political and social issues, and is the founder and chief executive officer, president and chairman of the world’s fourth largest fashion apparel retailer, Uniqlo. Famous in Japan, the US, and worldwide, his accomplishments over the past three decades led Forbes magazine to name him one of Japan’s “Forbes 40” in 2012 and Time magazine to list him among its Time 100 list of the one hundred most influential people in the world in 2013.
By virtue of his phenomenal success as a retailer and his active and extensive use of his name Tadashi Yanai in connection with his Uniqlo retail store chain and the marketing of its retail store services, the Complainant possesses common law trademark rights in his name for retail store services, particularly as a matter of New York and California law.
The Complainant has created rights in his name as a service mark for retail store services in the fashion apparel field in New York and California, because his use of his name in promoting and marketing Uniqlo’s retail stores have given his name the capacity to identify the source of Uniqlo’s services with a single source and to distinguish that source from the same or similar services of his company’s competitors.
During 2011 and 2012 in particular, the Complainant made exceptionally extensive and highly publicised use of his name in promoting and marketing Uniqlo’s store launches in New York and California, most notably in his personal appearances, involvement, interviews and attendant publicity promoting the October 2011 launch of Uniqlo’s global flagship store on New York’s Fifth Avenue and its megastore on 34th Street in New York in October 2011 and commercial run-up thereto, and in his personal appearances, interviews, involvement and attendant publicity promoting the October 2012 launch of Uniqlo’s San Francisco Union Square store.
All three store openings revolved around high-profile use of the Complainant’s name, coupled with the prominent use of his name in consumer-oriented content on Uniqlo’s US website, and in third-party publications including top-flight consumer fashion magazines, apparel industry publications, business publications, and newspapers and magazines of general circulation.
The Complainant’s use of his name in his marketing activities in New York and California satisfy the New York and California definitions of a service mark, because his name has been used to identify and distinguish his company’s retail store services from the services of others, and to indicate the source of those services. Accordingly, the Complainant possesses common law trademark rights under New York and California law in the name TADASHI YANAI as a service mark.
The Complainant possessed such common law rights prior to the Respondent’s registration of the disputed domain name.
It is well established under the Policy that in situations where a personal name is being used for trade or commerce, the complainant may establish common law or unregistered trademark rights in that name. In particular, complainants have been found to possess common law marks in their names in circumstances where the name has been used for direct commercial purposes in marketing.
The disputed domain name is identical to the Complainant’s name and mark TADASHI YANAI. Rights or Legitimate Interests
The Respondent’s website is transparently intended to solicit the Complainant to contact the Respondent to purchase the disputed domain name from the Respondent, and for no other ostensible purpose.
The Respondent lacks any right or legitimate interest in the disputed domain name because the Respondent has never been commonly known by the disputed domain name, has not been authorised to use the Complainant’s TADASHI YANAI name and mark, and has no connection or affiliation whatsoever with the Complainant. The Respondent cannot claim rights or legitimate interests in the disputed domain name in connection with his website, because the use of a domain name that intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services, and the Respondent is in any event offering no goods or services. Registered and Used in Bad Faith
The Respondent registered and is using the disputed domain name in bad faith for commercial gain by soliciting purchase from the Complainant.
With no ostensible right or legitimate interest in the disputed domain name, he registered the disputed domain name in November 2012, one year after the high-profile October 2011 launch of the Complainant’s two New York Uniqlo stores, and one month after the high-profile October 2012 launch of his San Francisco store, which generated exceptionally widespread promotion and publicity for the Complainant’s name.
The Respondent’s bad faith is explicitly demonstrated by the content of his website.
The Respondent’s bad faith is further corroborated by his sending emails to the Complainant and his representatives pressing the Complainant to buy the disputed domain name from the Respondent.
As the Respondent’s website makes obvious, he was aware of the Complainant at the time he registered the disputed domain name. B. Respondent Identical or Confusingly Similar
The press articles produced by the Complainant include comments to the effect that the Complainant’s employees do not recognise him, that the Complainant prides himself on anonymity and that he is not known on the world of the Internet, having no Facebook or Twitter account.
There is no likelihood of confusion because the disputed domain name was registered a year before the Complainant’s trademark application. Rights or Legitimate Interests
The Respondent carried out a US trademark search before registering the disputed domain name and found no trademark for TADASHI YANAI.
The Respondent needed a name in the field of business intelligence and data analysis and he selected the disputed domain name because “tadashi” means “accurate”, and “yanai” means “answer, i.e., ‘accurate answer’”. The person dealing with this area left and so the Respondent decided to sell the disputed domain name. If the disputed domain name is not sold by the expiration date, the Respondent will continue with the original idea. Registered and Used in Bad Faith
The disputed domain name generates no profit for the Respondent because it does not generate any traffic.
The Respondent tried to contact the Complainant’s companies many times but the Complainant showed no interested in the disputed domain name.
Even before the Complaint was filed, the Respondent offered the disputed domain name via Facebook to other persons with the same name as the Complainant.
The Respondent is entitled to sell the disputed domain name if there is no trademark violation and the stakeholders are not willing to negotiate.
The Respondent did not register the disputed domain name in bad faith. The website was never in Japanese, he is not a direct competitor of the Complainant and he has never been in a UDRP process before. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant does not claim to hold TADASHI YANAI as a registered trademark in any country. The Complainant mentions a pending application to the United States Patent and Trademark Office (“USPTO”) to register this name as a standard character mark associated with retail store services. The application was filed on the basis of a declared “intent to use” the mark in the future. This pending application does not establish that TADASHI YANAI is currently a “trademark or service mark in which the complainant has rights”.
The Complainant relies on the theory that his personal name is protected as a common law service mark in the US. This theory is based on the facts that Tadashi Yanai is identified in press releases, media stories, and company websites as the founder of Fast Retail and Uniqlo, and that he came to the US to publicly launch Uniqlo stores in New York City and San Francisco in 2011 and 2012. The Complainant cites the New York and California statutes that codify common law protection for unregistered trademarks and service marks: New York General Business Law sec. 360 and California Business and Professions Code sec. 14202(b), respectively. The language of these statutes is similar, as it parallels the wording of relevant sections of both the Lanham Act (the US federal trademark statute) and the Model Trademark Law widely adopted by US states. The New York and California statutes both require that a name used as a service mark must “identify and distinguish the services of one person […] from the services of others, and to indicate the source of the services”.
The Policy does not require a registered mark. But in cases such as this, where the Complainant relies on an unregistered mark allegedly subject to protection under common law, the Complainant bears the burden of establishing that the unregistered mark would indeed be protectable. The Complainant does not cite New York or California jurisprudence on the use of personal names as common law service marks. Instead, the Complainant cites several UDRP decisions finding common law protection for the names of celebrities, “where the name has been used for direct commercial purposes in marketing”.
In adopting the Policy in 1999, ICANN decided to apply the mandatory dispute resolution procedure only to disputes involving trademarks, declining to cover personal and place names unless they were used as trademarks. UDRP cases concerning personal names asserted as unregistered trademarks are discussed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.6. Summarizing the “consensus view”, the WIPO Overview 2.0 concludes that “the complainant may be able to establish common law or unregistered trademark rights” in a personal name that is being used as a trademark, but adds this caution:
“The name in question needs to be actually used in trade or commerce as an identifier of goods or services to establish unregistered trademark rights for the purpose of the UDRP. Merely having a famous name (such as a businessperson who does not actually use his or her name as an identifier for the business engaged in, or a religious leader), or making broad unsupported assertions regarding use of such name in trade or commerce, would not necessarily be sufficient to show unregistered trademark rights.”
See also the recent UDRP decisions, Philippe Pierre Dauman v. Dinner Business, WIPO Case No. D2013-1255 and Ananyashree Birla v. Ali Madencioglu, WIPO Case No. D2013-1123.
The summary also refers to the consensus standards discussed in WIPO Overview 2.0, paragraph 1.7, for establishing rights in an unregistered mark for purposes of the first element of a UDRP complaint:
“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition.”
The Panel concludes that the Complainant in the current proceeding has not adduced sufficient evidence of such “secondary meaning” attached to his personal name. A review of the record in this proceeding, as well as of the Uniqlo websites, does not reveal that there is a “Tadashi Yanai” company name, corporate group, store name, or designer brand. The Complainant is not a performer, like the celebrities in some of the UDRP cases cited in the Complaint, whose name is used to market performances, films, or television shows. Nor does his personal name appear to be associated with the marketing of books, videos, or seminars, as is the case with some of the celebrities who have successfully established trademark rights in their personal names, as reflected in the cases cited in WIPO Overview 2.0, paragraph 1.6. The record does not indicate that the name has been used in advertising, labeling, store signage, or website presentations to identify and distinguish particular goods or retail services.
While “UNIQLO” and variations are registered trademarks in the US and Japan, there is no indication on the company websites, or in this record, that the company claimed TADASHI YANAI as a trademark or service mark. Even the pending US trademark application is based on intent to use the name as a mark in the US, not a history of such use.
The Complainant has the burden of proof on this point, and the Panel does not find sufficient evidence on the available record to conclude that the personal name “Tadashi Yanai” has acquired a secondary meaning in the US as a distinguisher of retail services. Accordingly, the Panel concludes that the first element of the Complaint has not been established. B. Rights or Legitimate Interests
In view of its findings under the first element above, it is unnecessary for the Panel to address this element of the Policy. C. Registered and Used in Bad Faith
In view of its findings under the first element above, it is unnecessary for the Panel to address this element of the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
Adam Taylor
Presiding Panelist
Teruo Doi
Panelist
W. Scott Blackmer
Panelist
Date: November 1, 2013
Full & Egal Universal Law Academy