The Complainant is Wafu Inc. of Montreal, Quebec, Canada, represented by Barrette Legal Inc., Canada.
The Respondent is Taichi Higuchi of Nishinomiya-shi, Hyogo, Japan. 2. The Domain Name and Registrar
The disputed domain name is registered with GMO Internet, Inc. d/b/a Discount-D and O (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2013. On September 17, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 18, 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 September 25, 2013, the Center transmitted an email to the parties in both Japanese and English language regarding the language of the proceeding. On September 26, 2013, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in both English and Japanese, and the proceedings commenced on October 1, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 21, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 22, 2013.
The Center appointed Ho-Hyun Nahm as the sole panelist in this matter on November 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.
The Panel issued an Administrative Procedural Panel Order on November 4, 2013 as follows:
“a) Language of Proceedings
On September 25, 2013, the Center transmitted an email to the parties in both Japanese and English regarding the language of the proceeding. On September 26, 2013, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date. Pursuant to Rule paragraph 11(a), the Panel determines that the language requirement has been satisfied through the Japanese language Commencement Notification, and, absent a Response, determines that the remainder of the proceedings shall be conducted in English.
b) To Submit Evidence
The Complainant submits that as early as August 1, 1999, it has established a reputation and goodwill in association with the Complainant’s mark through its use in association with its business and that the mark has become distinctive and identified in the public mind as a source of the goods. However, it appears the Complaint lacks evidence supporting this fact and the Respondent’s bad faith registration. As such, it is ordered for the Complainant to submit the relevant evidence, if any, by November 11, 2013.
c) To submit the Complaint in a word format
The Complainant has simply provided a good number of URLs as evidence for the reputation of the Complainant’s mark. For the easy access to the relevant information by the URLs, it is requested to submit the Complaint in a word format.
d) Deadline for Response
The Respondent may submit any comments in response to the Complainant’s possible additional submission by November 18, 2013.
e) Deadline for Decision
The Panel will submit the Decision by November 25, 2013.”
The Center received the Complainant’s Supplemental Submission pursuant to the Administrative Panel’s Procedural Order on November 11, 2013 which is timely. The Respondent did not submit any submission in relation to the Complainant’s Supplemental Submission by November 18, 2013. 4. Factual Background
The Complainant is Wafu Inc. (formerly known as Mari’s Foods Inc.), a corporation duly incorporated under the laws of the province of Quebec, Canada. In 1999, the KAI Conveni Global Inc., the prior owner of the WAFU mark in Canada started selling WAFU Original Japanese Dressings to its customers. The Complainant has invested a substantial amount of time and money in advertisement and marketing of their goods featuring its mark for the last several years. The Complainant is the owner of the trademark WAFU (hereinafter the Complainant’s mark) in association with various goods in several countries, including Canada, the United States of America, Mexico and the European Union. The Complainant owns trademark registrations, inter alia, as below: In Canada Mark: WAFU
Registration number: TMA717,186
Registration date: June 23, 2008
Goods: Vinaigrettes and dips; Food stuff, namely: sushi, rice, nori, wasabi, ginger, soya sauce, rice vinegar, teriyaki sauce, oyster sauce, hoisin sauce, plum sauce, brown gravy sauce, chicken gravy sauce, miso soup, onion soup, cream based soup, tea, shrimp, ice cream, tempura, cookies, crackers, cook books, knives, cleavers, forks, spoons, ladles, rice paddles, chopsticks and spatulas. Mark: WAFU (& DESIGN)
Registration number: TMA594,889
Registration date: November 17, 2003
Goods: the same as above
The disputed domain name was registered on March 8, 2000. 5. Parties’ Contentions A. Complainant
(i) the disputed domain name is confusingly similar to the Complainant’s registered trademark WAFU in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith by the Respondent
The Complainant asserts in its Supplemental Submission by submitting evidence including an Affidavit that i) as early as August 1, 1999, the Complainant established a reputation and goodwill in association with the Complainant’s mark through its use in association with its business; ii) the Complainant’s mark has become distinctive and identified in the public mind as a source of the goods; iii) the Complainant has invested an important amount of time and money in advertisement and marketing of their goods featuring its WAFU mark for the last several years; and iv) the success rate has been quite significant, as revealed by the rapid growth of the goods featuring the Complainant’s mark in numerous countries.
The Complainant requests the transfer of the disputed domain name to itself. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by respondent is 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
In view of the Respondent’s failure to submit a response, the Panel decides this administrative proceeding on the basis of the Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draws such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009 (in the absence of a response, it is appropriate to accept as true all allegations of the Complaint); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., NAF Claim No. 95095 (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true). A. Identical or Confusingly Similar
The Complainant has provided sufficient evidence showing that it is the owner of the WAFU mark, the use of which predates the Respondent’s registration of the disputed domain name.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark WAFU especially in that it incorporates the Complainant’s mark in its entirety. See Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne,WIPO Case No. D2010-0240 finding “the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark.”
The Panel also finds that the “.com” is a descriptive suffix commonly used as a generic Top-Level Domain (gTLD), and thus it does not constitute a prominent portion in the disputed domain name in determining confusing similarity between the disputed domain name and the Complainant’s mark. Therefore, the addition of the suffix “.com” does not have any impact on the avoidance of confusion. See Research in Motion Limited v. Input Inc, Domain Manager, WIPO Case No. D2011-2197 finding “the use of the added descriptive word does not change the overall impression of the domain name.”
As such, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s mark. B. Rights or Legitimate Interests
The Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under the Policy, paragraph 4(a)(ii), and then the burden shifts to the Respondent to show it does have rights or legitimate interests.
The Complainant contends that the registration date of the disputed domain name is March 8, 2000, nearly one year after the use of the Complainant’s mark; the Respondent therefore, does not have any rights or legitimate interests with respect to the disputed domain name. The Complainant further asserts that it has never granted any license or other permission to the Respondent to use the Complainant’s mark. The Complainant also avers that the website located at the address associated with the disputed domain name does not appear to be active, thus, the Respondent has no rights or legitimate interests to keep the registration of the disputed domain name. The Complainant consequently submits that to the best of its knowledge, the Respondent is not commonly known by the disputed domain name and makes no legitimate commercial use of the said website.
The Panel finds that on the record, it has been established that the Respondent has not been commonly known by the disputed domain name, and thus the Panel does not recognize that the Respondent has rights or legitimate interests in the disputed domain name. See Harry Winston, Inc. and Harry Winston, S.A. v.h,WIPO Case No. D2008-1266 (finding that respondent had not established rights or legitimate interests pursuant to the Policy, paragraph 4(c)(ii) in the domain name where there was no evidence that the Respondent was commonly known by the domain name); see also Alstom v.Yulei,WIPO Case No. D2007-0424 (finding that respondent had not established rights or legitimate interests in the disputed domain name where there is no indication that respondent is commonly known by the domain name and/or is using the domain name in connection with a bona fide offering of goods or services).
The Panel notes that the Complainant has not granted the Respondent any license, permission, or authorization by which it could own or use any domain name registrations which are confusingly similar to any of the WAFU marks. The Panel agrees with the Complainant, and thus finds that the Respondent lacks rights or legitimate interests in the disputed domain name. See Nokia Corp.v. a.k.a IBCC,WIPO Case No. D2000-0102 (finding absence of license permitting to use complainant’s trademark in domain name evidence of respondent’s illegitimate interests).
Under the circumstance that the Respondent did not reply, the Panel finds that the Complainant has proven a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. See De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005; see also Accor v. Eren Atesmen, WIPO Case No. D2009-0701.
Given the above circumstances, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name, and the second element of the Policy has been established. C. Registered and Used in Bad Faith
The Panel recognizes by the evidence submitted by the Complainant that i) the Complainant started to use the Complainant’s mark nearly one year before the registration of the disputed domain name; ii) the Complainant has invested substantial amount of time and money in advertisement and marketing of their goods featuring the Complainant’s mark for the last several years; and iii) it established a reputation and goodwill in association with the Complainant’s mark through its use in association with its business.
The Panel finds that the Respondent must have been aware of the existence of the Complainant and its trademark WAFU at the time of registering the disputed domain name due to the following facts:
i) the use of the Complainant’s mark predates the registration of the disputed domain name; and
ii) the goods on which the Complainant’s mark was used are Japanese Vinaigrettes, and the Respondent is a Japanese.
The Panel reviews as to whether the Complainant has proved the additional requirement that the disputed domain name “is being used in bad faith” by the Respondent. The Complainant asserts that after numerous attempts by the Complainant to communicate with the Respondent, the Complainant never received any reply with regards to the justification of the registration of the disputed domain name. The Panel notes that the Complainant offered the Respondent many opportunities to justify the presumed existence of a right or a legitimate interest in the disputed domain name, but the Respondent never answered. The Complainant further submits that the Respondent’s failure to make a bona fide use of the disputed domain name for an extensive amount of time constitutes bad faith.
The Panel notes that the website resolved from the disputed domain name is clearly not in use by the Respondent or by anyone else, as it appears from a copy of a printout taken on September 5, 2013 provided as Annex P to the Complaint. There is no evidence that a website or other on-line presence is in the process of being established which will use the disputed domain name. There is no evidence of advertising, promotion or display to the public of the disputed domain name. There is no positive action being undertaken by the Respondent in relation to the disputed domain name. Nevertheless, previous UDRP decisions have recognized that inaction (e.g., passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith. Furthermore, it must be recalled that the circumstances identified in the Policy, paragraph 4(b) are “without limitation” - that is, the Policy, paragraph 4(b) expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Panel considers particular circumstances of the present case as below:
(i) the Complainant’s mark has a reputation and goodwill in association with the Complainant’s mark through its use in association with its business, as evidenced by its substantial use in Canada and in other countries,
(ii) the use of the Complainant’s mark predates the registration of the disputed domain name,
(iii) the Complainant’s main goods on which its mark is being used are Japanese Vinaigrettes while the Respondent is a Japanese,
(iv) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name, and
(v) the Respondent chose to ignore the Complainant’s numerous attempts to communicate with the Respondent for more than two years.
In light of these particular circumstances, the Panel concludes that the Respondent’s passive holding of the disputed domain name satisfies the requirement of the Policy, paragraph 4(a)(iii) that the disputed domain name “is being used in bad faith” by the Respondent.
As such, the Panel concludes that the disputed domain name was registered and is being used in bad faith. 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.
Ho-Hyun Nahm
Sole Panelist
Date: November 25, 2013
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