The Complainant is サイボウズ株式会社 (Cybozu, Inc.) of Tokyo, Japan, represented by Atsumi & Sakai, Japan.
The Respondent is majiaai of Nanyang, Henan, China. 2. The Domain Name and Registrar
The disputed domain name ([]) is registered with Dynadot, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed in Japanese with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2018. On November 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 20, 2018, 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, and confirming that the language of the Registration Agreement Is English. On November 21, 2018, the Center sent an email in English and Japanese to the Parties regarding the language of the proceeding. The Complainant submitted a Complaint in English and requested English be the language of the proceeding on November 28, 2018. 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 3, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 23, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 24, 2018.
The Center appointed Jonathan Agmon as the sole panelist in this matter on January 7, 2019. 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, サイボウズ株式会社 (Cybozu, Inc.), is a Tokyo-based software company that provides web-based groupware services. Among these goods and services, the cloud services, “サイボウズ Office on ” and “Garoon on ”, as well as their packaged versions, “サイボウズOffice” and “サイボウズ ガルーン (Cybozu Garoon)”, have claimed a significant share in the section of groupware for small and medium-sized companies in Japan for 10 consecutive years.
On an international level, the Complainant develops and sells software solutions in countries such as Japan, China, Viet Nam, and the United States of America.
The Complainant is the owner of numerous trademarks worldwide for the mark, CYBOZU, in English and Japanese katakana including:
- CYBOZU (Registration No. 6075177) registered in Japan on August 24, 2018;
- CYBOZU (Registration No. 5237100) registered in Japan on May 5, 2009;
- (Registration No. 4647986) registered in Japan on February 28, 2003;
- サイボウズ (Registration No. 6075176) registered in Japan on August 24, 2018;
- サイボウズ (Registration No. 5237099) registered in Japan on June 5, 2009;
- CYBOZU (Registration No. G996160) registered in China on February 20, 2009.
The disputed domain name was registered on August 15, 2013 and the disputed domain name presently resolved to a pay-per-click website.
The Respondent appears to be an individual living in China. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions include the following:
The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s registered mark CYBOZU / サイボウズas the disputed domain name incorporates theサイボウズ mark in its entirely and only differs from theサイボウズ mark by the addition of the generic Top-Level Domain (“gTLD”) suffix “.com”. The Complainant stated that サイボウズ is the Japanese katanata of “cybozu” and when used in the disputed domain name, is identical with and confusingly similar with the Complainant’s registered mark.
The Complainant also argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name as the Respondent is not commonly known by the disputed domain name and that the disputed domain name had previously resolved to a webpage with various links such as “サイボウズlive”. Further, the Respondent is also offering the disputed domain name for an excessive amount that far exceeds the Respondent’s out-of-pocket expenses in registering the disputed domain and has requested for payment from the Complainant in exchange of the transfer of the disputed domain name.
The Complainant further argues that the disputed domain name was registered and is being used in bad faith. The Complainant asserts that the Respondent’s request for payment in exchange for the transfer of the disputed domain name is indicative that the Respondent “registered or acquired the domain name mainly for the purpose of selling, lending or transferring the same for a compensation in an amount directly required for acquiring such domain name exceeding the amount that can be presented in writing”. The Complainant also asserts that the Respondent has “intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website…by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site or location of a product or service on [the Respondent’s] website or location,” by attempting to obtain advertising revenue from promotional links listed on its website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 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.
The Complainant has provided evidence of its numerous trademark registrations in Japan and China, where the Respondent is based and registered the disputed domain name.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The disputed domain name integrates the Complainant’sサイボウズ trademark in its entirety (see Wal-Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033; Hoffmann-La Roche Inc. v. Andrew Miller,WIPO Case No. D2008-1345).
It is well established that the gTLD suffix is generally disregarded while assessing the identity or confusing similarity between the disputed domain name and the Complainant’s mark (see Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393). In the present case, the addition of “.com” does not serve to distinguish the similarity between the disputed domain name and the Complainant’s mark.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to a 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. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 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 Complainant has provided evidence that it owns various trademark registrations in Japan and China long before the disputed domain name was registered and that it is not affiliated with nor has it licensed or otherwise permitted the Respondent to use the Complainant’s trademark (See LEGO Juris A/S v. DomainPark Ltd, David Smith, A Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138).
The Complainant also provided evidence that the Respondent is not commonly known by the disputed domain name (See WIPO Overview 3.0, section 2.3).
Further, the Respondent did not submit a Response in the present case and did not provide any explanation or evidence to show rights or legitimate interests in the disputed domain name which is 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 also show that the Respondent registered and is using the disputed domain name in bad faith (see 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 registration for the CYBOZU trademark since the year 2003 and for the サイボウズ trademark since 2009. In view of the evidence filed by the Complainant, and the widespread use of the CYBOZU and サイボウズ trademark globally, 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).
Furthermore, the disputed domain name includes the Complainant’s trademark in its entirety. Previous UDRP panels ruled 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 under paragraph 4(b)(iv) of the UDRP.
Whilst the disputed domain name resolves to an inactive website at present, evidence submitted by the Complainant showed that the disputed domain name previously resolved to a pay-per-click website. Past UDRP panelists have found that the use of a domain name to host a parked page comprising pay-per-click links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users (see WIPO Overview 3.0, section 2.9).
In the present case, the evidence provided by the Complainant demonstrates that the sole purpose of the disputed domain name is to resolve to pay-per-click advertising websites and collect click-through revenue from advertising links. The links offered on the website under the disputed domain name are all connected with the Complainant services as the links wholly incorporate the Complainant’s mark. Such use demonstrates that the Respondent has used the disputed domain name to obtain a commercial benefit (see Mpire Corporation v. Michael Frey,WIPO Case No. D2009-0258). The Panel is convinced that the Respondent is using the Complainant’s trademark without authorization for the purpose of attracting visitors which may be confused into believing, at least initially, that the website resolved by the disputed domain name is in some form connected or endorsed by the Complainant, when it is not (see Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273). The Respondent’s behavior is yet another indication of bad faith registration and use of the disputed domain name.
The Complainant also submitted evidence that its trademark CYBOZU is a coined term which does not have any specific meaning. CYBOZU is made up of “cy” meaning “cyber” and a Japanese word “坊主(bozu)” meaning a “boy” and “サイボウズ” is Japanese (katakana) signage for “cybozu”. As such, the Panel is of the view that the Respondent could not have registered the disputed domain name without actual prior knowledge of the Complainant’s distinctive mark which is further indication of the Respondent’s bad faith in registering the disputed domain name.
The evidence submitted by the Complainant therefore shows that the Respondent targeted the Complainant and that the ultimate purpose of purchasing and registering the disputed domain name was to sell the disputed domain name to the Complainant, for an amount exceeding the Complainant out-of-pocket costs. In its email response to the Complainant’s query, the Respondent attempted to justify its offer of USD 8,600 by stating that it had purchased the disputed domain name from an “auction”. However, no further explanation or evidence was given to the Complainant support that assertion. Neither was a Response submitted in the present case to address this issue or any of the Complainant’s above contentions.
Based on the evidence presented to the Panel, including the registration of the disputed domain name long after the registration of the Complainant’s marks, the confusing similarity between the disputed domain name and the Complainant’s marks, the Respondent’s use of the disputed domain name, the Respondent’s failure to present any credible rationale for registering the disputed domain name, and the fact that is no plausible good faith use the Respondent can put the disputed domain name to, the Panel draws the inference that the disputed domain name was registered and is being used 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 the Complainant.
Jonathan Agmon
Sole Panelist
Date: January 20, 2019
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