The Complainant is Isetan Mitsukoshi Ltd. of Tokyo, Japan, represented by Nakamura & Partners, Japan.
The Respondent is Colvin Peng, Ethan Corporation of Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Beijing Innovative Linkage Technology Ltd. dba (the "Registrar"). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on September 23, 2016. On September 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 27, 2016, 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 October 3, 2016, the Center transmitted an email to the Parties in English and Chinese regarding the language of the proceeding. The Complainant submitted a request that English be the language of the proceeding on October 4, 2016. The Respondent did not comment on the language of the proceeding by the specified due date. The Complainant filed an amended Complaint on October 4, 2016 and a second amended Complaint on October 5, 2016.
The Center verified that the Complaint together with the first amended Complaint and the second 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 and 4, the Center formally notified the Respondent of the Complaint in English and Chinese, and the proceeding commenced on October 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 2, 2016. On November 9, 2016, upon a clarification request from the Center, the Complainant submitted a third amended Complaint. On the same day, the Center requested the Respondent to submit its comments (if any) to the Complainant's third Complaint by November 12, 2016. The Respondent did not submit any comments by the specified due date.
The Center appointed Jonathan Agmon as the sole panelist in this matter on November 18, 2016. 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 Isetan Mitsukoshi Ltd., a Japanese based company, the result of a merger between Isetan Co., Ltd. (established in 1886) and Mitukoshi, Ltd. (established in 1673). The Complainant is a consolidated subsidiary, which mainly operates department stores, wholly owned by "Isetan Mitsukoshi Holding Ltd.".
The Complainant is the owner of several trademark registrations for the mark ISETANMITSUKOSHI. For example: Chinese trademark registration no. 6597386, with the registration date of April 14, 2010; Chinese trademark registration no. 6597405, with the registration date of April 14, 2010, and many more.
The Complainant also owns several Chinese domain names incorporating its trademarks.
The disputed domain name was registered on February 10, 2012 and resolves to an inactive website. 5. Parties' Contentions A. Complainant
The Complainant argues that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
The Complainant further contends that the Respondent's use of the disputed domain name may confuse consumers and traders that it is associated with the Complainant business.
The Complainant further argues that the Respondent has no right or legitimate interest in the disputed domain name.
The Complainant further argues that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, nor a legitimate noncommercial of fair use.
The Complainant further argues that the disputed domain name was registered and used in bad faith.
The Complainant further contends that the Respondent has intentionally attempted to use the fame and reputation of the Complainant so that general consumers will be misled to websites, advertisement or communications not owned by the Complainant.
The Complainant further argues that by registering the disputed domain name the Complainant is unable to obtain its own domain name for its trademark.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
Paragraph 11 of the Rules provides that:
"(a) 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."
The language of the Registration Agreement for the disputed domain name is Chinese, as confirmed by the Registrar in its verification email to the Center of September 27, 2016.
The Complainant requested that the language of the proceeding be English.
The Respondent did not respond to the Complainant's language request.
The Panel cites the following with approval:
"Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this 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 judicially in the spirit of fairness and justice to both parties taking into consideration matters such as 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 abilities to articulate the arguments for the case." (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:
(i) The disputed domain name consists of Latin letters, rather than Chinese letters;
(ii) The Respondent having been notified of the proceeding in both Chinese and English failed to submit any comments on the language of the proceeding, or to provide any response to the Complaint;
(iii) The use of a language other than English would impose a significant burden on the Complainant in view of the facts in question.
Upon considering the above, the Panel determines that English be the language of the proceeding. 6.2 Substantive Matters A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.
The Complainant is the owner of several trademark registrations for the mark ISETANMITSUKOSHI. For example: Chinese trademark registration no. 6597386, with the registration date of April 14, 2010; Chinese trademark registration no. 6597405, with the registration date of April 14, 2010, and many more. The disputed domain name reproduces entirely the Complainant's ISETANMITSUKOSHI trademark with the addition of the generic Top-Level Domain ("gTLD") ".com".
The addition of the gTLD suffix ".com" does not have the capacity to distinguish the disputed domain name from the Complainant's ISETANMITSUKOSHI registered trademark and is disregarded when comparing the disputed domain name with the Complainant's trademark. See Volkswagen AG v. Todd Garber,WIPO Case No. D2015-2175; See also Dassault (Groupe Industriel Marcel Dassault) v. Ma Xiaojuan,WIPO Case No. D2015-1733; Lego Juris A/S v. Chen Yong,WIPO Case No. D2009-1611; Dr. Ing. h.c. F. Porsche AG v. zhanglei,WIPO Case No. D2014-0080.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical to the ISETANMITSUKOSHI trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the Complainant's trademarks or a variation thereof and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services.
The Respondent has not submitted any substantive Response to the Complaint and did not provide any explanation or evidence to show any rights or legitimate interests in the disputed domain name sufficient to rebut the Complainant's prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant has owned a registration for the ISETANMITSUKOSHI trademark since at least the year 2010 but the ISETAN and MITSUKOSHI marks have been in existence and use for centuries. It is suggestive of the Respondent's bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735). This is especially the case with registered trademarks whose origin and use spans centuries.
The disputed domain name is identical to the Complainant's trademark. Previous UDRP panels have found that "[a] likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site". (See E, Inc. v. Triple E Holdings Limited,WIPO Case No. D2006-1095.) To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith.
The Complainant also provided evidence that suggests that the Respondent registered the disputed domain name under a false name and under a fake organization.
In addition, the disputed domain name is currently inactive which can, in appropriate circumstances, indicate the Respondent's bad faith. (See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.)
Having regard to the evidence, the Panel finds that the disputed domain name was registered and used by the Respondent with knowledge of the Complainant and in bad faith with the intent to create an impression of an association with the Complainant. The Respondent's actions therefore constitute bad faith.
Based on the evidence that was presented to the Panel, including the Complainant's registered trademarks, the use of the Complainant's trademark in the disputed domain name, the passive use of the disputed domain name, the Respondent's use of a fake name to register the disputed domain name, and the Respondent's failure to answer the Complaint, the Panel finds that the disputed domain name was registered and is being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) 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.
Jonathan Agmon
Sole Panelist
Date: December 2, 2016
Full & Egal Universal Law Academy