The Complainant is Sumitomo Corporation of Tokyo, Japan, represented by TMI Associates, Japan.
The Respondent is SumitomoSumitomo of Hong Kong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Jiangsu Bangning Science & technology Co. Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 26, 2015. On January 26, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 27, 2015, 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 January 28, 2015, the Center sent an email communication to the parties in Chinese and English regarding the language of the proceeding. On January 29, 2015, the Complainant submitted a 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 Chinese and English, and the proceeding commenced on February 3, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 23, 2015. The Response was filed with the Center on February 23, 2015.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on March 4, 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
The Complainant in this administrative proceeding is Sumitomo Corporation, a Japanese corporation with its principal place of business in Tokyo, Japan. Founded in 1919, the Complainant is a multinational company that has 139 offices and subsidiaries (as of April 1, 2014) in 67 countries, and is one of the main companies in the Sumitomo group which has a history of more than 400 years. The Complainant engages in multifaceted business activities which include sales of a variety of products and services within Japan, import and export, trilateral trade, and domestic and international business investment. The Complainant has used its SUMITOMO trade mark and trade name for almost 100 years as an indication of its company, its group, and the products and services of the company and group. The website of the Complainant is located at "".
The Complainant has a significant presence in China through its wholly owned subsidiaries and branch offices (located in Beijing, Chengdu, Changchun, Wuhan, Tianjin, Dalian, Shanghai, Suzhou, Qingdao, Guangzhou and Hong Kong) engaging in import, export and general trading. The website of the Complainant's subsidiary in China is located at "" and "".
The Complainant has registered its SUMITOMO mark and/or variations of that mark in more than 20 countries around the world. It owns numerous registrations in China for the SUMITOMO mark (the "SUMITOMO Mark") for classes 4, 13, 15, 16, 18, 20, 22, 23, 24, 25, 27-35, 41, and 42 since as earliest as 1984.
The disputed domain name was registered on April 28, 2014. 5. Parties' Contentions A. Complainant
First, the Complainant asserts that the disputed domain name is identical or confusingly similar to its marks. The reasons are summarized as follows:
1. The Complainant is the registered trade mark owner of the SUMITOMO Mark in over 20 countries, including China.
2. The disputed domain name is clearly completely identical to the SUMITOMO Mark since ".org" merely indicates the type of the generic Top-Level Domain (gTLD).
Second, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The grounds are summarized as follows:
1. There is no company registered under the name "Sumitomo Sumitomo" in Hong Kong as indicated in the WhoIs information.
2. The Respondent has no registered marks including the word "sumitomo."
3. The Complainant has no relationship whatsoever with the Respondent and has never authorized the Respondent to use the SUMITOMO Mark or to register the disputed domain name.
4. The Respondent registered the disputed domain name on April 28, 2014, which is long after the trade mark registrations of the SUMITOMO Mark and the SUMITOMO Mark had already become famous within China and other countries as the Complainant's mark.
5. The Respondent was aware that the SUMITOMO Mark was being used by the Complainant at the time of the disputed domain name registration.
6. The domain name was used only for the purpose of unfair commercial gain and/or tarnishing of the trade mark. Therefore, the Respondent is neither using the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services nor is the Respondent commonly known by the disputed domain name.
7. There is evidence that the Respondent has intent for unfair commercial gain and/or to tarnish the trade mark or service mark at issue from the content of the website using the disputed domain name and from the correspondence via email between the Complainant and the Respondent prior to this Complaint.
Third, the Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. The grounds are summarized as follows:
1. The content of the website itself clearly indicates that the disputed domain name was registered primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of that the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name. The website is made up of a single webpage with the words "To buy this domain '' please contact email: […]@ Keep the domain for your group fame, and to avoid more issues and potential future problems. It's the right time to buy now!!!"
2. The website also uses the device mark registered by the Complainant and the SUMITOMO Mark registered by the Complainant in the upper-left corner and the bottom of the page, which indicates that the target of the above message is the Complainant and/or the Complainant's group.
3. Furthermore, the four photographs of women in swimsuits next to the words "Useful Links:" are each linked to websites which stock photographs of lightly clothed women and which are not operated by the Respondent, and which may reasonably be considered to have been placed there for the purpose of tarnishing the Complainant and SUMITOMO Mark so as to motivate the Complainant enough to buy the disputed domain name at a high price.
4. The correspondence via email between the Complainant and the Respondent prior to this Complaint is a clear indication that the disputed domain name was registered primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name.
5. A person by the name "Peter" claiming to be the owner of the disputed domain name contacted an employee of the affiliated company of the Complainant via direct message on the social networking service LinkedIn (""dated July 17, 2014, suggesting that the Complainant buy the disputed domain name by insinuating to cause harm to the Complainant if the Complainant does not buy the disputed domain name.
6. In response to the warning letters sent to the Respondent (at the email address written on the website – […]@) by the Complainant dated August 19, 2014 and August 27, 2014 requesting for the voluntary transfer of the disputed domain name, the Respondent answered that the disputed domain name would be sold to a third party soon and the third party would increase the selling price by 10 times.
7. In response to the warning letter sent to the Respondent (at the e-mail address written as the registrant's e-mail address in the WhoIs information – […]@) by the Complainant dated August 27, 2014 (Annex No.19), requesting for the voluntary transfer of the disputed domain name, the Respondent answered that if the Complainant resorts to legal actions, the price for the disputed domain name shall be increased "much more for the revenge purpose". B. Respondent
The Respondent rejects the Complainant's contention that the disputed domain name is identical or similar to the SUMITOMO Mark in which the Complainant has rights on the following grounds:
1. The Respondent is using the disputed domain name to conduct business in a sector which is different from the Complainant.
2. Given that the Respondent is conducting business in a different sector from the Complainant, the Respondent contends that there can be no confusion between the disputed domain name and the Complainant's trade mark SUMITOMO.
The Respondent rejects the Complainant's contention that the Respondent has no rights or legitimate interests in the disputed domain name on the following grounds:
1. Prior to the receiving the notification of the present administrative proceeding from the Center, the Respondent has been using the disputed domain name in connection with the performance testing of friction, modified and other materials.
2. The Respondent's website "Sumitomo Material Lab" is set up to promote the Respondent's material performance test laboratory and it is a not for profit organisation.
The Respondent rejects the Complainant's contention that the Respondent has registered and is using the disputed domain name in bad faith on the following grounds:
1. The Respondent plans to use the disputed domain name for its website "Sumitomo Material Lab" is set up to promote the Respondent's material performance test laboratory and it is a not for profit organisation.
2. The Respondent asserts that it has not employed any employee by the name of "Peter" and has not authorized anyone to set up any email settings for the disputed domain name.
3. The managing email account of the disputed domain name is […]@.
4. The Respondent asserts that it has not made an offer for sale in respect of the disputed domain name and there is no evidence that any such email offers have been sent from the managing email account of the disputed domain name.
5. Upon receipt of the information that the disputed domain name is parked or linked to third-party websites, the Respondent has undertaken actions to rectify the matter.
6. The Respondent has not used the disputed domain name and its associated website for the purposes of offering good or services for sale.
7. The Respondent is using the disputed domain name to conduct business in a sector which is different from the Complainant and therefore there can be no confusion. 6. Discussion and Findings 6.1. Language of the Proceeding
Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the case file, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be in English. The Complainant has submitted a request in the Complaint that English should be the language of the present proceeding for the following reasons:
1. Emails exchanged between the Complainant and the Respondent prior to submission of the Complaint is evidence which proves the Respondent's familiarity with the English language.
2. The language of the website (at the disputed domain name) is also English.
3. According to Article 9 of the Basic Law of the Hong Kong Special Administrative Region of the People's Republic of China, English is the official language in Hong Kong, the Respondent is located.
After considering the circumstances of the present case and the submission of the Complainant's request, the Panel is of the opinion that the language of the present proceeding shall be English and the decision will be rendered in English. The Panel based its decision on the following reasons:
(i) The Panel's discretion under the Policy
Paragraph 11 of the Rules provides:
"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
Thus, parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised in the spirit of fairness and justice to both parties taking into consideration matters such as the parties' command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.
(ii) The circumstances of this proceeding
One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.
In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On record, the Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest in the interests of fairness, the language of the proceeding ought to be English. In particular, the Panel notes that (a) the disputed domain name is made up of letters in ASCII and could be pronounced phonetically in English; and (b) the Panel accepts the evidence adduced by the Complainant evidencing that the Respondent is conversant and familiar with the English language; and (c) the Center has notified the Respondent of the proceeding in both Chinese and English. The Respondent had the option to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. The Respondent has responded substantively to o the Complaint filed in English and this suggests that the Respondent is conversant in the English language and is able to adequately respond. Considering these circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.
In considering the circumstances of the present case, the Panel decides that the language of the proceeding shall be English and the decision will be rendered in English. 6.2 Substantive Elements of the Policy
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:
1. the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
2. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3.the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the submissions and evidence introduced by the Parties and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Complainant has adduced evidence to demonstrate that it has registered trade mark rights and continues to have such rights in the SUMITOMO Mark for a variety of products in many countries in the world, including China. Furthermore, the Panel finds that the Complainant has registered trade mark rights in the SUMITOMO Mark in China, the country in which the Respondent appears to reside. The Panel finds that the Complainant's SUMITOMO mark is a widely-known trade mark for a variety of products offered by the Complainant in many jurisdictions.
In assessing the degree of similarity between the Complainant's trade mark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant's trade mark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned in this case, and the average consumer is the Internet user seeking to purchase or download information about the Complainant's products. Given the extensive reach of the Complainant and its products both in the brick-and-mortar world as well as online, the average Internet consumer seeking to purchase or download information about the Complainant's products may comprise of but is not necessarily limited to one which originates from China. The fame of the Complainant and its SUMITOMO trade mark is thus to be considered from an Internet user's perspective that is beyond the mainland China in which the Respondent appears to reside.
The disputed domain name consists of the Complainant's SUMITOMO Mark in its entirety and the gTLD suffix ".org". The Panel is of the view that the most prominent and distinctive part of the disputed domain name is the term "sumitomo" which for all intents and purposes is identical to the Complainant's registered SUMITOMO Mark and which is highly distinctive. Given the fame and notoriety of the Complainant's SUMITOMO Mark, the addition of suffixes such as ".org" being the gTLD is furthermore not a distinguishing factor.
Bearing in mind the following factors, in particular (a) the widespread reputation and high degree of recognition of the Complainant's SUMITOMO Mark as a result of its fame and notoriety and (b) the distinctive character of the Complainant's SUMITOMO Mark, the Panel therefore finds that the disputed domain name is identical or confusingly similar to the SUMITOMO Mark in which the Complainant has rights.
The Panel finds for the Complainant on the first element of the Policy. B. Rights or Legitimate Interests
Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:
1) the Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term "sumitomo" in its business operations except a bare assertion that it is the legitimate registrant of the disputed domain name;
2) there is no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trade mark or to apply for or use any domain name incorporating the SUMITOMO Mark;
3) there is no indication whatsoever that the Respondent is commonly known by the disputed domain name. Furthermore, there is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Here, while the evidence shows that the website at the disputed domain name indicates the disputed domain name is for sale, the Respondent contends that it registered the disputed domain name to promote its material testing lab and has submitted a webpage design purported to be the future website of its testing laboratory. Without further explanation and substantiating evidence, this does not in the opinion of the Panel show a sufficient demonstrable preparation to use the disputed domain name for a bona fide offering of goods or services;
4) the Complainant and its SUMITOMO Mark enjoy a widespread reputation and high degree of recognition as a result of its fame and notoriety in various sectors and is a registered trade mark in relation to a wide range of goods in many countries all over the world, including China. Consequently, in the Panel's view, in the absence of contrary evidence from the Respondent, the SUMITOMO Mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.
The Panel notes the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant's contentions. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1. Based on the above reasons, the Panel finds that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
"(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you [Respondent ] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue."
The Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name.
In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent appears to be unable to adduce evidence of any rights to or legitimate interests in the disputed domain name.
The Panel finds for the Complainant on the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:
(i) circumstances indicating that the respondent has registered or 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 trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website 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 the respondent's website or location or of a product or service of the respondent's website or location.
The above circumstances are indicative of registration and use of a domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute registration and use of a domain name in bad faith by a respondent in appropriate cases.
One important consideration in the Panel's assessment of whether the Respondent has registered and is using the disputed domain name in bad faith is prior knowledge on the part of the Respondent of the Complainant's rights in the trade mark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcend national borders. Taking into account the worldwide reputation of the Complainant and its SUMITOMO Mark, as well as the market presence of the Complainant in numerous countries including China, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant's trade mark rights at the time of the registration of the disputed domain name. Furthermore, the Complainant has established substantial Internet presence via its official website and its many other websites and Internet addresses. A simple search on the Internet would reveal the presence of the Complainant's trade mark and domain names. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant's trade mark rights at the time of the registration of the disputed domain name.
Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of association with the Complainant and its products. However, the Respondent has not provided a plausible explanation of his choice in the disputed domain name.
Where the Respondent has chosen to register a disputed domain name that is identical or confusingly similar to the Complainant's trade mark and where the trade mark in question has through substantial use acquired worldwide fame, reputation and notoriety, a reasonable conclusion is that the trade mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, the burden on the Respondent to show that the choice of the disputed domain name was made legitimately and in good faith for the genuine offering of goods or services on the Internet is a very heavy one. There is no persuasive evidence that the Respondent has used or intends to use to the disputed domain name for purposes of bona fide offering of goods and services over the Internet. As mentioned above, the mere assertion that the Respondent intends to promote the Respondent's material performance testing laboratory at the disputed domain name and submitting a potential webpage design without substantiating evidence such as a certificate of incorporation of company; sales invoices etc. does not establish that the Respondent is using or has shown a demonstrable preparation to use the disputed domain name for the purpose of bona fide offering of goods or services over the Internet. The Panel cannot reconcile the Respondent's purported future plans to use the disputed domain name for its laboratory website and the statements on its website "To buy this domain [ ] please contact …. It's the right time to buy now!!!" In this regard, the Panel finds that the Respondent has not provided any plausible explanations. It should be noted that the Complainant is the registered owner of the SUMITOMO word mark and device marks in China as well as in many jurisdictions and the use of the term "sumitomo" without the Complainant's consent is potentially an infringement of the Complainant's registered trade mark rights. The Panel finds that unless the Respondent is able to offer plausible explanations, which it has not, such a conduct is indicative of bad faith as the Respondent's act of registering and using a disputed domain name which is identical or confusingly similar to a trade mark in which the Complainant has registered rights for a potential website which purports to offer material performance testing services constitutes a misrepresentation to Internet users that the Respondent is connected to or affiliated with the Complainant when this is not true.
The Panel finds that the Complainant has adduced evidence and proved that by using a confusingly similar disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website under paragraph 4(b)(iv) of the Policy. The Panel finds that given the widespread fame of the Complainant's SUMITOMO Mark and a lack of plausible explanation for the choice of incorporating the Complainant's famous trade mark in the disputed domain name, the unauthorized use of the term "sumitomo" in the Respondent website onto which the disputed domain name resolves are certainly relevant factors indicating bad faith registration and use.
Thus, the Panel finds for the Complainant on the third part element 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 name be transferred to the Complainant.
Susanna H.S. Leong
Sole Panelist
Date: March 18, 2015
Full & Egal Universal Law Academy