Complainant is ETH Zürich (Eidgenössische Technische Hochschule Zürich of Zurich, Switzerland, represented by Schneider Feldmann AG, Switzerland.
Respondent is Mitsuhiro Suwa of Tokyo, Japan, represented by Anderson Mori & Tomotsune, Japan. 2. The Domain Name and Registrar
The disputed domain name (the "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 December 24, 2015. On December 28, 2015, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
In response to an e-mail communication from Respondent dated January 4, 2016, and another e-mail communication from the representative of Respondent dated January 12, 2016, Complainant requested a suspension of the administrative proceeding in order to explore a settlement on January 14, 2016. The administrative proceeding was suspended on January 14, 2016. On February 20, 2016, Complainant requested re-institution of the proceeding. On February 22, 2016, the proceeding was reinstituted.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceeding commenced on February 23, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 14, 2016. The Response was filed with the Center on March 14, 2016.
The Center appointed Robert A. Badgley, Lorenz Ehrler and Keiji Kondo as panelists in this matter on April 12, 2016. 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. 4. Factual Background
The Panel notes at the outset that it will not address each and every fact and argument raised by the Parties, since many such points are extraneous to the Panel's disposition of this case.
According to the Complaint, Complainant ETH Zürich (Eidgenössische Technische Hochschule Zürich) is "one of the leading international universities for technology and the natural sciences," having more than 18,500 students from more than 110 countries. Complainant regularly ranks among the best universities in the world and boasts 21 Nobel Laureates who have studied, taught, or conducted research at the school.
Complainant asserts that it has used ETH as a trademark for over 100 years, and puts into the record of this proceeding several Swiss and international trademark registrations comprised of or featuring the ETH mark.
The Domain Name was registered on July 20, 1998. Respondent acquired the Domain Name on August 26, 2014, paying USD 1,000 for it. The Domain Name currently resolves to a rather rudimentary parking page which features a handful of apparently sponsored links, including: "ETS ORG," "ETH," "On Line Training," "Free online College Games," "Free Bible Games," and "Französisch" (the German word for "French").
Respondent was born in the United States in 1971, and appears to have lived for several years there, but now lives in Japan and appears to have spent most of his adult life in Japan. Respondent asserts that he is a Japanese entrepreneur and founder of a Japanese company, Loftwork, Inc. ("Loftwork"). According to Respondent, Loftwork "provides new creative services, based on its creator network consisting of more than 20,000 individual creators," and "undertakes more than 400 projects annually, including web design, business design, community design and spatial design." Loftwork uses different domain names "depending on the content and nature of businesses in which Loftwork is involved." Put another way, Loftwork draws on its portfolio of domain names to match them with the kind of business in question. Respondent also notes that "short and impressive domain names are convenient for users when visiting the same page again."
Complainant prepared a cease-and-desist letter dated December 10, 2015 and claims to have sent it to Respondent, who denies ever having received it before this proceeding. 5. Parties' Contentions A. Complainant
Complainant contends that it is entitled to a transfer of the Domain name because it has satisfied all three elements under the Policy required for a transfer. B. Respondent
Respondent contends that he has a legitimate interest in the Domain Name and that he did not register or use it in bad faith.
Respondent denies having had any knowledge of Complainant or its ETH mark when he registered the Domain Name. He asserts that this is unsurprising, since ETH stands for the German-language abbreviation of the Complainant university, and few people in Japan understand German. Moreover, Respondent notes that Complainant had no trademark registration published in Japan until September 11, 2014, two weeks after Respondent had acquired the Domain Name on August 26, 2014.
Respondent asserts that the Domain Name fits within the general business plan of his company, Loftwork. With specific reference to the Domain Name, Respondent claims to be planning the establishment of "several work groups whose theme is 'sustainability,'" and the letter string e-t-h "evokes the 'Earth.'" Somewhat relatedly, Respondent adds, Respondent has plans to "work in the form of 'sustainability + fashion'" and "launch[] a 'brand' whose main image is 'sustainability.'" In this connection, Respondent puts into the record some materials concerning a company called Hidakuma, formed by Loftwork in May 2015. According to these materials, Hidakuma, in conjunction with Hida City and a forestry business, plans to launch a business selling wood products and managing hostels and cafés, and plans to use the "sustainability" theme offered by the Domain Name in aid of this venture.
Respondent also points out that there are numerous third parties using "eth" in domain names, including , , , , , and . As such, Respondent asserts, Complainant does not have the exclusive right to use the letters "eth." This is particularly true here, since Respondent's business is totally unrelated to the Complainant university. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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. A. Identical or Confusingly Similar
There is no doubt that Complainant holds rights, through registration and use, in the mark ETH. There is also no doubt that the Domain Name is identical to the ETH mark.
Accordingly, Complainant has satisfied Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, a complainant is required to establish that the respondent lacks rights or legitimate interests in respect of the disputed domain name. UDRP panels have held that it suffices for a complainant to make out a prima facie case that the respondent has no such rights or legitimate interests and that, if the complainant does so, the burden shifts to the respondent to show that it has such a right or legitimate interest. Once the burden shifts to the respondent, the respondent may establish its rights or legitimate interests by showing any of the elements listed under Policy, paragraph 4(c), with the overall burden still resting with the complainant.
Because a successful complaint under the Policy must establish all three elements required for the transfer of a domain name, however, the Panel's findings and conclusions with respect to the "bad faith" element below render it unnecessary to address the "rights or legitimate interests" element. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, "in particular but without limitation," are evidence of the registration and use of the Domain Name in "bad faith":
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of- pocket costs directly related to the Domain Name; or
(ii) that 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) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
On the record before it, the Panel cannot conclude that the Domain name was registered and used in bad faith within the meaning of the Policy. Respondent flatly denies having ever heard of Complainant or its ETH mark at the time he acquired the Domain Name in August 2014. Based on the facts presented here, the Panel finds this denial to be plausible.
While the Panel does not doubt that Complainant is an elite university, its renown as ETH particularly in the United States of America and Japan (the two countries in which Respondent is known to have lived) has not been established in this record such that the Panel would find Respondent's denial implausible. Respondent is not an engineer and does not speak German. These two facts, coupled with the lack of evidence put forth by Complainant about the fame of the ETH mark, support Respondent's denial of knowledge of the mark. Moreover, Respondent's registration of several other domain names (, , , and ) tends to corroborate Respondent's claim that he acquired the Domain Name in part because it is short and therefore attractive to potential Loftwork clients or business partners.
In sum, the limited evidence put before the Panel is insufficient to establish that Respondent more likely than not had Complainant or its ETH trademark in mind when acquiring the Domain Name, and Respondent's somewhat vague explanation for its decision to acquire the Domain Name is just plausible enough to avoid a "bad faith" finding here.
The Panel would emphasize that trademark law is not coextensive with the elements under the Policy. Concepts such as constructive notice (a legal incident to having a registered trademark in a particular jurisdiction which deems persons in that jurisdiction to have notice of the mark's existence) are not necessarily imported into the Policy. As such, whether a viable claim for trademark infringement could be pursued in some tribunal somewhere is not a relevant consideration under the Policy, which is chiefly concerned with clear cases of cybersquatting. This is not such a case. 7. Decision
For the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Presiding Panelist
Lorenz Ehrler
Panelist
Keiji Kondo
Panelist
Date: April 29, 2016
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