Complainant is Toray Industries, Inc. of Tokyo Japan, represented by Sanderson & Co., United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
Respondent is Domain ID Shield Service, Domain ID Shield Service CO., Limited of Hong Kong, China / Domain eRegistration of London, UK. 2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2017. On September 25, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 26, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 29, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 4, 2017.
The Center verified that the Complaint together with the amended Complaint (hereinafter 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 proceedings commenced on October 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 26, 2017. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 27, 2017.
The Center appointed M. Scott Donahey as the sole panelist in this matter on November 10, 2017. 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 corporation organized under the laws of Japan and having its principle place of business in Tokyo, Japan. Complainant is involved in the business of the manufacture of various products developed from various chemical processes. Complainant is the holder of trademarks and service marks in the mark TORAY issued by various countries, including by the United Kingdom, in which Respondent is said to reside, and in the United States of America. Such marks were issued as early as June 12, 1986 (United Kingdom Registration No. 00001269068). Annex 4 to the Complaint. Complainant has been using the marks in Commerce for many decades, and claims common law trademark rights as well. Complainant conducts its business around the world. As of March 31, 2017 it employed (directly or through subsidiaries) over 46,000 people, and had consolidated net sales of YEN 2,026.5 billion for the last complete financial year.
The disputed domain name was registered on March 23, 2017. While it is impossible to know the identity of the registrant, as Respondent is using a privacy service in the registration of the disputed domain name, Respondent has used the disputed domain name to contact potential customers of Complainant’s products and services, sending emails in the name of one of Complainant’s senior employees, using the disputed domain name in the email address […]@. Annexes 5 and 6 to the Complaint. Respondent appears to be engaged in attempts to defraud people into believing that they are dealing with Complainant. Annex 6 to the Complaint. Complainant has never authorized Respondent to use its marks, to act on behalf of Complainant, or to represent to third parties that it is affiliated with Complainant in any way. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is confusingly similar to Complainant’s TORAY trademarks and service marks; that Respondent has no rights or legitimate interests in the disputed domain name, and that Respondent has registered and is using the disputed domain name in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute:
“A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that complainant must prove each of the following:
1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which complainant has rights; and,
2) that respondent has no rights or legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name consists of Complainant’s service mark and trademark TORAY together with the English word “global” which is descriptive of the area in which Complainant conducts its business. The Panel finds that the disputed domain name is confusingly similar to the trademarks and service marks in which Complainant has rights. B. Rights or Legitimate Interests\
While the overall burden of proof in UDRP proceedings is on complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of respondent. As such, where a complainant makes out a prima facie case that respondent lacks rights or legitimate interests, the burden of production on this element shifts to respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If respondent fails to come forward with such relevant evidence, complainant is deemed to have satisfied the second element.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”),
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Respondent in the present case is using the disputed domain name to present itself in emails as associated with Complainant, which it is not. It is attempting to use the association with Complainant as an entrée to unsuspecting recipients of its email and to entice the recipients into Respondent’s fraudulent scheme and to defraud them. Accordingly, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith. 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.
M. Scott Donahey
Sole Panelist
Date: November 15, 2017
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