The Complainant is Organization for Small & Medium Enterprises and Regional Innovation of Tokyo, Japan, represented by Anderson Mori & Tomotsune, Japan.
The Respondent is Shahid Maqbool, MANGO B2B of London, United Kingdom of Great Britain and Northern Ireland (the “UK”), represented by Maier Blackburn, UK. 2. The Domain Names and Registrar
The disputed domain names and (the “Disputed Domain Names”) are registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 11, 2014. On August 13, 2014, the Center transmitted by email to eNom a request for registrar verification in connection with the Disputed Domain Names. On August 15, 2014, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 28, 2014.
The Center verified that the Complaint together with the amended 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 September 1, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response September 21, 2014. The Response was filed with the Center on September 19, 2014.
The Center appointed Flip Jan Claude Petillion, Masato Dogauchi and Frederick M. Abbott as panelists in this matter on October 13, 2014. 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.
On October 31, 2014, the Panel issued Administrative Procedural Order No. 1 inviting the parties to submit additional submissions.
On October 31, 2014, the Center received a communication from the Complainant asking for the status of the case. This communication also included additional information. The same day, the Center received a communication from the Respondent stating that the additional information provided by Complainant was irrelevant. As the Panel had invited the parties to submit additional submissions, the Panel has read these communications and decided to take them into account.
On November 10, 2014, the Complainant sent an additional submission to the Center. The Respondent filed a response to the Complainant’s additional submission on November 20, 2014. 4. Factual Background
The Complainant, the Organization for Small & Medium Enterprises and Regional Innovation, is an administrative agency in Japan. The Complainant’s primary purpose is to support start-ups, management and to advice on various business aspects for small and medium enterprises. The Complainant’s activities include business-matching services.
The Complainant is the holder of, inter alia, the following registered trademarks, which it uses in connection with its activities:
- J-GOODTECH, registered on March 14, 2014 as a Japanese trademark with registration number 5656006 in classes 35 and 41;
- “jegutekku” in katakana characters, being the aural representation of “JGoodTech” in Japanese script, registered on March 20, 2014 as a Japanese trademark with registration number 5657469 in classes 35 and 41.
On April 3, 2014, the Respondent registered the Disputed Domain Names and . The Respondent uses the Disputed Domain Names to refer to a website on which business-matching services are offered. 5. Parties’ Contentions A. Complainant
The Complainant considers the Disputed Domain Names to be confusingly similar to its trademarks and service marks in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. According to the Complainant, the Respondent has not used the Disputed Domain Names in connection with a legitimate or genuine use. Finally, the Complainant considers that the Disputed Domain Names were registered and are being used in bad faith. The Complainant indicates that the timing for registering the Disputed Domain Names, shortly after the launch of the Complainant’s website, is suspicious. B. Respondent
The Respondent contests the Complainant’s rights as the submitted evidence is in Japanese. The Respondent also claims that the terms included in the Disputed Domain Names and the combination of these terms is generic. The Respondent claims that it has rights and legitimate interests in respect of the Disputed Domain Names as it has used the terms “J-Goodtech” at least since October 2011. Finally, the Respondent contests the Complainant’s arguments with regard to bad faith registration and use. The Respondent claims it did not know about Complainant’s use of the name “J-Goodtech” prior to the registration of the Disputed Domain Names, and that it uses the Disputed Domain Names in good faith. C. Complainant’s supplemental filing
With its supplemental filing, the Complainant submitted an English translation of the evidence that was in Japanese.
The Complainant argues that it could reasonably expect the Respondent to understand Japanese, as the Respondent had previously sent an email to the Complainant in Japanese and given the Respondent’s services offered to Japanese small and medium enterprises manufacturers. The Complainant argues that its registered trademarks are not subject to limitations or restrictions of any kind.
The Complainant contends that its “J-GoodTech” brand and website have generated significant goodwill among the public and that it has been in the press since October 2013. The Complainant argues that the Respondent’s claims to have developed its in respect of “J-Goodtech” since October 2011 is solely based on internal and/or private documents which cannot be objectively verified or authenticated. The Complainant argues that the Respondent seems to have taken no concrete action whatsoever to promote its business-matching services to be provided through the Disputed Domain Names, or to establish contact with Japanese small and medium enterprises in relation to the website. The Complainant contends that the websites associated to the Disputed Domain Names are the result of a quick copy-and-paste job that does not look like the product of 4 years of development.
The Complainant reiterates its argument about the suspicious timing for registering the Disputed Domain Names. The Complainant also indicates that the Respondent has registered similar domain names after the Complaint was submitted to the Respondent. The Complainant also argues that the Respondent has an unclear background and that the Respondent had acquired the Disputed Domain Names to obtain financial gain from the Complainant. D. Respondent’s supplemental filing
The Respondent refutes that it understands Japanese. The Respondent argues that the Complainant’s J-GoodTech mark is composed of a particle combination of upper- and lowercase characters in a specific font. The Respondent considers that neither of the Disputed Domain Names is identical or confusingly similar to the Complainant’s marks. The Respondent also contends that the Complainant admitted that the trademark system in Japan permits the registration of trademarks consisting of generic elements without the requirement to disclaim monopoly regarding such generic elements.
The Respondent contends that it submitted a number of documents which clearly evidence its preparations to use the name “J-Goodtech” or “J-goodtech” in connection with a bona fide offering of goods or services long before the Complainant’s first claimed use of the “J-GoodTech” name. The Respondent submits that it started the project development for its “J-goodtech” project in October 2011 and that it has been marketing this project since 2012. The Respondent further submits that the Complainant could have contacted the third parties mentioned in the Respondent’s documents instead of jumping to false conclusions.
Finally, the Respondent argues that there is no evidence that the Respondent was aware of the Complainant’s use of the name “J-GoodTech” at the date it registered the Disputed Domain Names and that there is no reasonable basis to infer any such knowledge. 6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus for Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
1. The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
2. Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
3. The Disputed Domain Names have been registered and are being used in bad faith.
The Panel will deal with each of these requirements in turn. A. Identical or Confusingly Similar
To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. By providing a translation of the registration documents with its Additional Submission, the Complainant has clearly established that there is a J-GOODTECH trademark in which the Complainant has rights. The trademark has been registered and used in Japan in connection with the Complainant’s business-matching services.
The Panel considers the disputed domain name to be identical to the J-GOODTECH trademark. The disputed domain name is considered to be confusingly similar to the J-GOODTECH trademark, as the only difference resides in the omission of the hyphen. The apparent use of upper- and lowercase characters in the Complainant’s trademark is of no relevance, as domain names are not case-sensitive. The Panel is of the opinion that the mere omission of a hyphen to a complainant’s trademark constitutes confusing similarity, as set out in paragraph 4(a)(i) of the Policy (See HUK-COBURG haftpflicht-Unterstützungs-Kasse kraftfahrender Beamter Deutschlands A.G. v. DOMIBOT (HUK-COBURG-COM-DOM), WIPO Case No. D2006-0439; Deutsche Telekom AG v. Dexcom Holdings B.V., WIPO Case No. DTV2006-0001; Chernow Communications, Inc. v. Jonathan D. Kimball,WIPO Case No. D2000-0119).
Accordingly, the Complainant has made out the first of the three elements that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.
It is established case law under the Policy that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Names in order to place the burden of rebuttal on Respondent (See, Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
The Panel notes that the Respondent appears not to have acquired trademark or service mark rights. The Respondent’s use and registration of the Disputed Domain Names was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent existed.
The Respondent claims to have developed its business using the term “J-Goodtech” as from October 2011 and provides annexes to support these claims. The majority of the supporting documents provided by the Respondent are internal documents which cannot be objectively verified or authenticated. The Panel finds that the Respondent did not submit credible evidence showing good faith intent to develop a legitimate business under the Disputed Domain Names. The website linked to the Disputed Domain Names contains content that appears to be copied from third party websites. The Respondent does not show that it was authorized to make such copies. According to the Panel, such use does not indicate a bona fide offering of goods and services nor a legitimate noncommercial or fair use of the Disputed Domain Names. C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the Disputed Domain Names were registered in bad faith and that they are used in bad faith.
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith are the registration or acquisition of the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain names and the registration of the domain names in order to prevent the holder of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct.
In the instant case, the Panel finds that the Respondent must have had knowledge of the Complainant’s trademarks at the moment it registered the Disputed Domain Names for the following reasons:
- the Respondent registered the Disputed Domain Names almost immediately after the Complainant’s trademarks were registered;
- the Complainant established that, in order to promote its services, it has made substantial marketing efforts in the same market which the Respondent is targeting.
The Panel therefore finds that the Respondent’s awareness of the Complainant’s trademark rights at the time of registration suggests bad faith (See BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks).
With regard to the current situation on the other hand, there is no sign of any good faith use in relation to the Disputed Domain Names. As stated above, the Complainant provides evidence showing that at least part of the content of the Respondent’s website linked to the Disputed Domain Names has been copied from third party websites, apparently without their consent.
Furthermore, the Complainant provides evidence showing that Respondent sent an e-mail on May 6, 2014, proposing a business tie-up with the Complainant. The Panel considers that the Respondent’s timing for registering the Disputed Domain Names and sending the abovementioned e-mail is suspicious. The timing and the content of the Respondent’s email strongly suggests that the Respondent purposely acquired the Disputed Domain Names with a view to either disrupt the business of a competitor or to sell the Disputed Domain Names to the Complainant for valuable consideration in excess of the documented out-of-pocket costs directly related to the Disputed Domain Names. In view of the Complainant’s quasi-governmental nature, the Respondent must have realized when sending its proposal that a business tie-up with the Complainant was extremely unlikely. The apparent purpose of the Respondent contacting the Complainant is to offer the domain names for sale.
Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Names were registered and are being used in bad faith. 7. Decision
For all 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.
Flip Jan Claude Petillion
Presiding Panelist
Masato Dogauchi
Panelist
Frederick M. Abbott
Panelist (Concurring)
Date: December 2, 2014 Concurring Opinion
I join this Decision in favor of Complainant, but wish to add a few observations regarding the balance struck in this case.
Complainant’s role as a governmental agency in Japan is to assist small and medium-size businesses in their planning and operation. It applied for trademark registration in October 2013 in Japan, but as of the date when Respondent registered the Disputed Domain Names, Complainant had not registered domain names corresponding to its applied-for trademark. Complainant argues that if Respondent was serious about its business development plan, it would have registered the Disputed Domain Names prior to April 2014. Suffice it to point out the incongruity of this argument from the government agency chartered to assist small and medium-size businesses that could have, but did not, register the same corresponding domain names during the same planning time frame for its own purposes.
From this Panelist’s standpoint, the main issue in this case is whether Respondent adequately substantiated demonstrable preparations to use the Disputed Domain Names in connection with a bona fide offering of services prior to notice of the dispute. Respondent provided a number of internal documents intended to show business development plans using the Disputed Domain Names as early as October 2011. The weakness in Respondent’s evidence is that there is no single piece that was part of a public record, whether through registration of a name with a governmental authority, opening of or deposits in a bank account, mention in a news story or report, etc. Respondent’s evidence is in one way or another “self-generated”, including two supportive statements provided by third parties (and signed) regarding meetings where the proposed business was allegedly discussed.
Furthermore, while Respondent’s current website at the address of the Disputed Domain Names shows a not insignificant level of website design expertise, the content appears to be taken from publicly available sources, and not to be the product of external business development. This is not to make an assessment of the legitimate nature of compiling information from third-party sources, but rather to observe that Respondent’s website addressed by the Disputed Domain Names does not add material support to its evidentiary showing.
Respondent has pointed to its B2B platform as evidence that it is seriously in the business of B2B website development. The MangoB2B website does appear to show sophistication by Respondent in this area. That tends to support its claim to have been developing “j-goodtech” as a bona fide service, but only indirectly.
Weighed against the relative weakness of Respondent’s business development evidence is the strong coincidence of its registration of the Disputed Domain Names almost immediately following the formal registration of Complainant’s trademark and the “soft” launch of its website. Despite Respondent’s contrary assertions, the trademark J-GOODTECH, taken as a whole, is distinctive and unique. There is, in this Panelist’s view, a rather low probability that it would be selected for a new web B2B business. There is a significant “unlikelihood of coincidence” regarding Respondent’s registration of the Disputed Domain Names just following Complainant’s registration and launch.
This Panelist joins the Decision in favor of Complainant based on the “balance of probabilities” regarding the evidence, assessing the relatively weak showing regarding demonstrable preparations to use the Disputed Domain Names against a rather strong unlikelihood of coincidence with respect to the date of registration of the Disputed Domain Names and Respondent’s transmittal of an email suggesting a business tie-up.
Should Respondent believe that it could successfully persuade a trier of fact in a judicial proceeding, with witnesses testifying under oath and parties otherwise under judicial control, it has the option of initiating a lawsuit to block implementation of this Decision. Though certainly entailing additional expense, Respondent is not without additional opportunity to support its claims.
Frederick M. Abbott
Panelist (Concurring)
Date: December 2, 2014
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