The Complainant is JIN CO., Ltd of Tokyo, Japan, represented by Sanderson & Co, the United Kingdom of Great Britain and Northern Ireland.
The Respondent is Michael Doyle, Accurate Imaging Resources of California, United States of America, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2015. On February 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 28, 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.
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, and the proceedings commenced on March 10, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 30, 2015. The Response was filed with the Center on March 30, 2015. On April 2, 2015, the Center received one Supplemental Filing from each party.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on April 17, 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 is a Japanese company that manufactures and sells eyewear. The Complainant is the holder of, inter alia, the following registered trademarks, which it uses in connection with its activities:
, international trademark registered on February 7, 2011 with registration number 1069479 in classes 9 and 35;
, international trademark registered on November 25, 2009 with registration number 1024064 in classes 9 and 35;
, international trademark registered on April 10, 2012 with registration number 1124610 in class 9.
The disputed domain name was created on September 18, 2013 and is registered by Respondent. The disputed domain name does not resolve to any website, but previously resolved to a web page containing an image of glasses, the text “Coming Soon” and “Interested in this website – Click here”, and a link to an email address “[…]@”. 5. Parties’ Contentions A. Complainant
The Complainant considers the disputed domain name to be confusingly similar to 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 name. According to the Complainant, the Respondent has not used the disputed domain name in connection with a legitimate use. Also, according to the Complainant, the Respondent has not been commonly known by the disputed domain name.
Finally, the Complainant considers that the domain name was registered and is being used in bad faith. B. Respondent
The Respondent does not contest the Complainant’s trademark rights, but states it purchased the disputed domain name in good faith. The Respondent's plan was to use the disputed domain name to sell the Complainant’s products in the US market.
Finally, the Respondent claims it did not use or plan to use the disputed domain name in bad faith. 6. Discussion and Findings A. Procedural Matters
The panel notes that the Center received Supplemental Filings by the Respondent and the Complainant respectively on April 2, 2015.
Rule 12 of the Rules unambiguously provides that the Panel may request, in its sole discretion, further statements or documents from either of the Parties. There is no provision in the Rules for a party to file an additional submission without leave of the Panel. This is because, under the expedited process provided under the Policy and the Rules, each party is given one opportunity to put forward all the material on which it wishes to rely and is expected to do so.
The Panel follows the reasoning of the Panel in Viz Communications, Inc. v. Redsun dba and David Penava and accordingly finds that it is appropriate to consider the circumstances of each case before deciding whether or not to admit unsolicited additional submissions (Viz Communications, Inc. v. Redsun dba and David Penava,WIPO Case No. D2000-0905).
In this case, both Supplemental Filings relate to the allegation by Respondent that Complainant was the previous holder of the disputed domain name. However, there is insufficient evidence to support this allegation.
In any event, the Panel finds that the issue as to whether or not the Complainant previously held the disputed domain name is of no relevance in view of the circumstances of this case. Therefore, the Panel decided not to take the Supplemental Filings into account. B. Substantive Matters
Paragraph 15 of the Rules provides that the Panel is to decide 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 the Complainant to make out its case and it is apparent, both from the terms of the Policy and the previous decisions of UDRP panels, that the 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 in nature, the standard of proof is the balance of probabilities.
Thus, for the 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 domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2. The Respondent has no rights or legitimate interests in respect of the domain name; and
3. The domain name has been registered and is being used in bad faith. B.1. 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. The Complainant has clearly established that there is a trademark in which the Complainant has rights.
The Panel considers the disputed domain name to be composed of a name nearly identical to the dominant element of one of the Complainant’s trademarks, namely J!NS PC. In this case, the Panel considers that the exclamation mark is confusingly similar with the letter “i”. This is not contested by the Respondent.
Accordingly, the Complainant has made out the first of the three elements that it must establish. B.2. 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 domain name.
It is established case law 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 name in order to place the burden of rebuttal on the 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 has not been commonly known by the disputed domain name and that Respondent has not acquired trademark or service mark rights. The Respondent’s use and registration of the disputed domain name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent existed.
Moreover, the Panel is of the opinion that the Respondent is not making and does not intend to make a legitimate noncommercial or fair use of the disputed domain name. The Respondent states it was planning to sell the Complainant’s products in the US market, but does not provide any evidence to support this statement.
Although a reseller can make a bona fide offering of goods and services, the use of a third party trademark must fit certain requirements and the relationship with the trademark holder must be accurately disclosed. See e.g., Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, where it was held that the website hosted at the disputed domain name must, inter alia, accurately disclose Respondent's relationship with the trademark owner, and only market the goods and services of the trademark owner.
This is obviously not at hand in the current case. Indeed, as mentioned above, the Complainant did not authorize the Respondent to use its trademarks, which it could be argued may be necessary to be able to sell the Complainant’s products particularly where the disputed domain name exactly matches the Complainant’s trademark.
For these reasons, the Panel finds that Respondent has no rights or legitimate interest in the disputed domain names. B.3. 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 are being used in bad faith. See e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052.
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 is the registration of the domain name in order to prevent the holder of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the domain name holder has engaged in a pattern of such conduct, and circumstances indicating that the registrant 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrants documented out-of-pocket costs directly related to the domain name. 1. Bad faith registration
In the instant case, it is inconceivable that Respondent was unaware of the Complainant’s trademark rights when it registered the disputed domain name. Indeed, the Respondent explicitly states it registered the disputed domain name with the intention to sell the Complainant’s products.
The Panel finds that the Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070, where POKÉMON was held to be a well-known mark of which the use by someone without having any connection or legal relationship with the complainant suggested opportunistic bad faith.
The Respondent’s allegations regarding the planned use of the disputed domain name do not justify its registration, as this use requires the authorization of the Complainant. 2. Bad faith use
The disputed domain name resolves to a webpage without any content. Under the circumstances of the case, the passive holding of a domain name can amount to bad faith registration and use. See e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyP,WIPO Case No. D2013-2059. The passive holding of a domain name amounts to bad faith when it is difficult to imagine any plausible future active use of the domain name by the Respondent that would be legitimate and not infringing the Complainant’s well-known mark or unfair competition and consumer protection legislation. See Inter-IKEA v. Polanski,WIPO Case No. D2000-1614; Inter-IKEA Systems B.V. v. Hoon Huh,WIPO Case No. D2000-0438; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
In the instant case, in view of the well-known character of Complainant’s trademark, the Panel considers that it is impossible to imagine any plausible legitimate use of the domain name, which exactly matches the Complainant’s trademark (as opposed to use of the trademark plus a term which would make the fact that the Respondent would be an unauthorized reseller clear to Internet users), by the Respondent. As a matter of fact, the Respondent states it was planning to use the Complainant’s trademarks to sell the Complainant’s products without any authorization.
The Panel also finds that the Respondent prevents the Complainant, as the holder of a trademark, from reflecting its mark in a corresponding domain name.
Finally, the Respondent offered to sell the disputed domain name to the Complainant. Although the Respondent did not specify the price for which it would have accepted to sell the disputed domain name, the Panel finds that there are sufficient indications of bad faith in the circumstances of this case. Indeed, the offer to sell the domain is inconsistent with the Respondent’s allegations with regard to its own planned use of the disputed domain name.
As a result, these circumstances support a finding of bad faith use pursuant to paragraph 4(b)(iv) 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.
Flip Jan Claude Petillion
Sole Panelist
Date: May 1, 2015
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