Complainant is KYOCERA Document Solutions America, Inc. of Fairfield, New Jersey, United States of America (the "USA"), represented by Lowenstein Sandler PC, USA.
Respondent is David Pontier of Las Vegas, Nevada, USA. 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 January 10, 2015. On January 12, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 12, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on January 27, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 16, 2015. Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 17, 2015. Respondent did, however, send two very brief email communications to the Center, on February 25, 2015 and on March 2, 2015, in essence requesting that Respondent's domain name property not be taken. The Center acknowledged both communications.
The Center appointed Dina Leytes as the sole panelist in this matter on February 24, 2015. 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
Complainant is a member of the Kyocera Corporation family of companies and exclusive licensee in the USA of the KYOCERA and TASKALFA trademarks, which are used, among other things, in connection with document imaging equipment and accessories. The Kyocera Corporation is a Japanese corporation and it or its affiliated companies are the owners of trademark registrations for KYOCERA and TASKALFA in numerous jurisdictions worldwide. Complainant is responsible for maintaining and defending the Kyocera Corporation's intellectual property interests in the USA.
Respondent appears to be an individual or entity located in Las Vegas, Nevada, in the USA.
Annex 4 to the Complaint shows that at the time that the Complaint was filed, the disputed domain name resolved to a website that showed cardboard boxes bearing the KYOCERA and TASKALFA marks in a warehouse or other storage facility. The top of the website contained the following language: "Kyocera TaskAlfa 250CI 5201 6201 for sale. Call 702-588-0335." At some point after the Complaint was filed, the disputed domain name ceased to resolve to the website described.
The disputed domain name was registered on July 9, 2014. 5. Parties' Contentions A. Complainant
Complainant alleges that the disputed domain name fully incorporates and is confusingly similar to the KYOCERA and TASKALFA marks and that the addition of the descriptive word "copiers" does not prevent confusion.
Complainant alleges that Respondent cannot demonstrate any rights or legitimate interests in the disputed domain name because Respondent registered the disputed domain name after Complainant had established rights in the KYOCERA and TASKALFA marks, Respondent is not commonly known by the disputed domain name, Respondent has not been granted a license or other rights to use the KYOCERA and TASKALFA marks, and Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Complainant further alleges that Respondent is engaging in the unauthorized resale of the Kyocera Corporation's products, which does not confer a legitimate interest in the disputed domain name. Complainant maintains that the foregoing demonstrates that Respondent registered the disputed domain name for deceptive purposes.
Complainant also alleges that the disputed domain name was registered and is being used in bad faith because Respondent's use demonstrates Respondent's intent to divert Internet traffic and disrupt and divert Complainant's business. Moreover, Complainant alleges that the registration by Respondent of the disputed domain name constitutes initial interest confusion, which Complainant explains arises when a junior user adopts a senior user's mark to gain attention in a crowded field, and which is actionable under the trademark laws of the USA. Complainant maintains that evidence of Respondent's continued bad faith use is apparent because Respondent has had actual notice of Complainant's trademark rights since August 2014, when Complainant sent a letter to Respondent informing Respondent of Complainant's rights and requesting transfer of the disputed domain name. Complainant further contends that Respondent has had many years of constructive notice of Complainant's registered trademark rights under the trademark laws of the USA. B. Respondent
Respondent did not formally reply to Complainant's contentions. However, on February 25 and March 2, 2015, after the Panel was appointed, Respondent sent two informal communications to the Center, requesting that Respondent's domain name property not be taken. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark 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 has been registered and is being used in bad faith.
The complainant bears the burden of proof on each of these elements. If a respondent does not submit a response to the complaint, a panel may draw appropriate inferences from such a default. However, the complainant must still support its assertions with actual evidence to succeed in a UDRP proceeding. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the "WIPO Overview, 2.0"), at paragraph 4.6 and the cases cited therein. A. Identical or Confusingly Similar
The Panel finds that Complainant has established rights in the KYOCERA and TASKALFA trademarks as the exclusive licensee in the USA of the Kyocera Corporation. The Panel further finds that the disputed domain name is confusingly similar to the KYOCERA and TASKALFA marks. The disputed domain name incorporates the KYOCERA and TASKALFA trademarks in their entirety and merely adds the descriptive term "copiers," in combination with the generic Top-Level Domain (gTLD) ".com."
Accordingly, the Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been met by Complainant. B. Rights or Legitimate Interests
To prevail, Complainant must make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances that may be used to show a respondent's rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name 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 domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Although Respondent did not file a Response, a respondent's default does not automatically result in a decision in favor of the complainant. See WIPO Overview 2.0 at paragraph 4.6 and the cases cited therein. Here, there is no evidence to show that factors 4(c)(ii) or (iii) of the Policy would apply. There is no evidence that Respondent has been commonly known by the domain name, or that Respondent is making a legitimate noncommercial or fair use of the domain name. Nor does the evidence show that Complainant authorized Respondent's use of the KYOCERA and TASKALFA trademarks in the disputed domain name. The key question in this case falls under factor 4(c)(i) of the Policy, whether Respondent is using the domain name in connection with a bona fide offering of goods or services.
A number of UDRP decisions have addressed the question of when a reseller's use constitutes a bona fide offering of goods and services. The consensus view was articulated in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. See WIPO Overview 2.0 at paragraph 2.3. In that case, the authorized reseller's domain name incorporated the complainant's OKIDATA trademark in full. The panel in Oki Data concluded that for a respondent to demonstrate that an offering was bona fide, the following conditions must be met:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the corresponding website to sell only the trademarked goods, otherwise there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods;
- the site itself must accurately disclose the respondent's relationship with the trademark owner, i.e., respondent may not falsely suggest that it is the trademark owner, or that the website is the official site, if that is not the case; and
- the respondent must not try to "corner the market" in all relevant domain names, or deprive the trademark owner of reflecting its own mark in a domain name.
Subsequent UDRP decisions have addressed whether the Oki Data criteria should apply to an unauthorized reseller as well. The Panel here follows the precedent of ITT Manufacturing Enterprises, Inc., ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments, Inc.,WIPO Case No. D2008-0936, National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racing Connection, Inc.,WIPO Case No. D2007-1524, and Dr. Ing. Hc.c F. Porsche AG v. Del Fabbro Laurent,WIPO Case No. D2004-0481, which are all cited in the WIPO Overview 2.0 at paragraph 2.3, among other decisions, in finding that the Oki Data criteria are appropriate for evaluating the rights or legitimate interests of an unauthorized reseller. Complainant did not address the Oki Data test or other relevant precedent in its Complaint.
As seems plausible from Respondent's use of the site corresponding to the disputed domain name and Complainant's assertions, Respondent was apparently offering for sale the goods at issue, namely what appeared to be (but which may not actually have been) the branded goods of the Kyocera Corporation or its affiliated companies. The record suggests that Respondent was using the website to sell only such goods since the site does not appear to have contained any third party goods and Complainant did not assert otherwise. Nor did the site contain any third party links or ads. While the inexpert appearance of the site may dispel any conclusion that the site was approved or endorsed by Complainant or the Kyocera Corporation, the site did not bear any disclaimer disclosing any relationship, or lack thereof, with the trademark owner. The site was comprised of grainy and non-professional photos with language across the top that read: "Kyocera TaskAlfa 250CI 5201 6201 for sale. Call 702-588-0335." It gave the impression that the goods apparently offered for sale and stacked one on top of the other in a warehouse or similar facility may not have been obtained through ordinary commercial channels (i.e., legitimately). Other than the branding on the boxes themselves and the referenced language, there was no other use of the KYOCERA or TASKALFA marks on the site. Finally, the record does not show that Respondent tried to corner the market in all relevant domain names or deprive the trademark owner of reflecting its own mark in a domain name.
The Panel has carefully considered the record in its entirety, and finds that, on balance, Complainant has met its burden of demonstrating that Respondent's use of the KYOCERA and TASKALFA trademarks does not constitute what would normally be considered a bona fide offering under paragraph 4(c)(i) of the Policy. Internet users encountering the disputed domain name through a search engine are likely to believe that they will find a corresponding website containing the genuine goods of the trademark owner. However, in the absence of a disclaimer or other clarifying language, the site itself did not address Respondent's relationship with the trademark owner. Internet users have no way of knowing whether Respondent is an authorized reseller of the trademark owner's goods or an unauthorized reseller of the trademark owner's goods, or, indeed whether Respondent is selling third party goods that merely purport to be the trademark owner's goods. Respondent had the opportunity to clarify the record, but chose not to do so. In addition, none of the other circumstances in paragraph 4(c) of the Policy are applicable here.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been met by Complainant. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that may be used to show evidence of a respondent's bad faith registration and use:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration 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 respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has engaged in a pattern of such conduct; or
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent's web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of respondent's web site or location or of a product or service on your web site or location.
Given the circumstances described above, and the Panel's finding under the second element, the Panel finds that the registration and use of the disputed domain name falls under the circumstances described under paragraph 4(b)(iv) of the Policy, namely, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by seeking to create a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been met by Complainant. 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 Complainant.
Dina Leytes
Sole Panelist
Date: March 29, 2015
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