The Complainant is Crouzet Automatismes, France, represented by AARPI Scan Avocats, France.
The Respondent is Whois Privacy Protection Service by Value-Domain, Japan / Yasutaka Sakatani, Japan. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2020. On February 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 25, 2020, 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 the Complainant on February 27, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 2, 2020. On February 27, 2020, the Center sent a communication to the Parties, in English and Japanese, regarding the language of the proceeding. On February 27, 2020, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. The Center verified that the Complaint together with the 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 both English and Japanese, and the proceedings commenced on March 5, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 2, 2020. The Center appointed Teruo Kato as the sole panelist in this matter on April 7, 2020. 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 According to the Complainant, the Complainant is an independent company which manufactures electro mechanics and electronic components for demanding applications in Aerospace & Transportation, Energy, Building and Machinery Industry. It also provides Switches and Sensors, Electromechanical Actuators, Electrical Protection Equipment, Cockpit Controls, Automation Controllers and Relays, and Instrumentation Services. The Complainant submitted evidence of various trademark registrations and owns, inter alia, the Japanese trademark CROUZET No. 0901724, registered on June 14, 1971, as set out in section 6.2 A below. The disputed domain name The Respondent is Whois Privacy Protection Service by Value-Domain, Japan / Yasutaka Sakatani, Japan. According to the Complaint, the website at the disputed domain name currently directs towards a webpage presenting a malformation of male genital tract. The Complainant requests that the disputed domain name be transferred to the Complainant. 5. Parties’ Contentions A. Complainant The Complainant contends that it is the owner of various trademarks including CROUZET. The Complainant also contends that the disputed domain name includes the CROUZET trademark in its entirety and that the disputed domain name is confusingly similar to the Complainant’s CROUZET trademark. The Complainant further contends that the Respondent has no rights or legitimate interests in respect to the disputed domain name. The Complainant also contends that the Respondent has registered and is using the disputed domain name in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Finding 6.1 Preliminary Issue: Language of the Proceeding A. Language of the Proceeding Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to authority of the Panel to determine otherwise having regard to the circumstances of the administrative proceeding. The Panel notes that in the present case the Registrar confirmed that the language of the Registration Agreement is Japanese. The Complainant has filed the Complaint in English and requests that the language of the proceeding be English and contends, among others, that, if Japanese were the language of the proceeding, “the time and costs involved in translating the Complaint would be unfair to the Complainant”. The Panel notes that information of these proceedings was provided to the Respondent both in English and Japanese. In particular, the Panel notes that the Respondent was advised in both English and Japanese that, if the Respondent was to object to the Complainant’s request for English, the Respondent was invited to indicate that objection and to submit any arguments or supporting materials as to why the proceedings should not be conducted in English by March 3, 2020. The Respondent did not respond by this deadline nor later. The Panel would have accepted a Response from the Respondent in Japanese, but none was filed. Further, the Panel notes that the disputed domain name includes “motors”, which is an English word. In view of the circumstances of this case, and in accordance with paragraph 11(a) of the Rules, the Panel decides that English be the language of the proceeding. 6.2 Substantive Issues A. Identical or Confusingly Similar The Panel must determine whether (a) the Complainant has a trademark or service mark; and (b) whether the disputed domain name is identical or confusingly similar to that trademark or service mark. The Complainant submitted evidence of various trademark registrations and the Panel is satisfied that the Complainant is the owner of CROUZET registered trademarks, including inter alia the Japanese trademark CROUZET No. 0901724, registered on June 14, 1971, covering goods in classes 7 and 9. As to the confusing similarity element for the purposes of the Policy, the Panel has proceeded to compare the disputed domain name to the CROUZET trademark in which the Complainant has rights. Section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that “[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”, and the Panel finds no reason why this established practice should not be applied to the present case. Apart from the generic TLD, the disputed domain name consists of the Complainant’s trademark CROUZET and the term “motors”, which is a dictionary word. The Panel finds that the recognizable element of the disputed domain name is the Complainant’s trademark CROUZET. It is well established that, where a disputed domain name incorporates, as here, the entirety of a complainant’s trademark, the addition of other terms does not typically prevent a finding of confusing similarity. (See Salvatore Ferragamo S.p.A v. Ying Chou,WIPO Case No. D2013-2034; Salvatore Ferragamo S.p.A. v. Haonan Hong,WIPO Case No. D2013-2040; Salvatore Ferragamo S.p.A. v. Brian E. Nielsen,WIPO Case No. D2014-1123; Salvatore Ferragamo S.p.A. v. Wei Huan,WIPO Case No. D2014‑1290; and Yamaha Motor Corporation, U.S.A. v. Domain Admin, Hush Whois Protection Ltd.,WIPO Case No. D2018-1359). The Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademarks and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a domain name: (i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The consensus view of UDRP panels is that the burden of proof in establishing no rights or legitimate interests in respect of a domain name rests with the complainant in as far as making out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent (see section 2.1 of the WIPO Overview 3.0). In the present case, the Complainant contends that “the Respondent is not currently and has never been known under the name “Crouzet” and that “the Respondent is not in any way related to its business, is not one of its distributors and does not carry out any activity for or have any business with it”. The Complainant also contends that “the Respondent has never filed any trademark identical or similar to its own rights”. The Complainant submitted to the Panel documentary materials to support its contentions as above, and the Panel finds that the Complainant has established prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name. By not submitting a Response, the Respondent has failed to rebut such prima facie case and has also failed to invoke any of the defenses as set out in paragraph 4(c) of the Policy. The Panel also notes that the disputed domain name consists of the Complainant’s trademark CROUZET and the term “motors”, which corresponds to one of the core products of the Complainant, yet there is no evidence made available to the Panel that the Respondent was involved in any “motor” related activities. In view of the above, 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 To fulfill the third requirement, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. As to the registration in bad faith, the Panel notes and accepts that the trademark CROUZET was registered and is known internationally, including in Japan, before the disputed domain name was registered on May 24, 2018. The Panel also notes from its own research that an Internet search carried out using Google search engine in Japan, with “crouzet” as a key word, returned a number of references to the Complainant and its distributors in Japan (and none relating to the Respondent). In the premises, the Panel is satisfied that the Respondent is most likely to have known of the Complainant, its products and trademarks prior to registering the disputed domain name and that it registered the disputed domain name in bad faith. As to the use in bad faith, the Complainant contends that “[t]he Respondent is using the litigious domain name to resolve a website which presents a malformation of the male genital tract”. Therefore, it appears that the Respondent is seeking to create confusion with CROUZET’s prior well-known trademarks in order to attract Internet users wishing to reach for a CROUZET’s official website. Furthermore, such use is highly detrimental to the image of CROUZET as Internet users may believe that the said website has received the approval of CROUZET.” The Panel is not entirely persuaded by these contentions by the Complainant. This is because the contents of the webpage in question deal with apparently genuine clinical issues (not displaying erotic nor pornographic features). They are also written predominantly in Japanese language words, with only six inexplicit illustrations (no photographs) of male genitals used. The Panel finds no apparent indication that its contents would be considered to be associated with the Complainant’s business, products, tradenames or domain names and does not readily agree to the Complainant’s contention that “Internet uses may believe that the said website has received the approval of CROUZET”. Having considered the contents of the webpage, the Panel is of a view that the webpage probably aims to target male readers with certain clinical issues e.g., phimosis who are located in the vicinity of Shizuoka City to the west of Tokyo. The Panel is under an impression that such visit are guided by commercial search engines, e.g., Google, with the relevant key words, e.g., the Japanese word corresponding to phimosis. The Panel would think that they are probably not interested in the name of the Complainant and its products. In the premises the Panel finds that this is not a typical case where the example of bad faith given in paragraph 4(b)(iv) of the Policy (quoted below) would typically apply to, because the requirement of the intent (i.e., “intentionally attempted”) on the part of the Respondent is not clear in the present case. “(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on that website or location” (emphasis added). The Panel, however, notes that the above example 4(b)(iv) is non-exclusive and thus allows the Panel to consider other contentions raised by the Complainant as below. The Complainant contends that “[s]uch bad faith is confirmed by the fact that the Respondent used a privacy protection service in order to avoid being contacted” and submit documentary evidence in support thereof. The Complainant further contents that “[a]s further evidence of the Registrant’s bad faith, it appears that the latter is engaged in a pattern of infringing domain name registrations. Indeed, it was involved in four UDRP similar cases where the transfer of the domain names at stake to the Complainant was obtained” and cites Associazione Radio Maria v. Yasutaka Sakatani,WIPO Case No. D2019-1754; Merck KGaA v. Yasutaka Sakatani,WIPO Case No. D2018-1948; Thyssenkrupp AG,VDM Metals International GmbH v. Yasutaka Sakatani,WIPO Case No. D2017-1969; and John Hutton International v. Whois Privacy Protection Service by Value Domain / Axelight co.,Ltd., Yasutaka Sakatani,WIPO Case No. D2015-0318. The Respondent has submitted no comments to any of the Complainant’s contentions as above. Having considered all the circumstances, the Panel holds on the balance of probabilities that the Respondent is using the disputed domain name in bad faith. In the premises, the third requirement of the Policy has been satisfied. 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 Teruo Kato
Sole Panelist
Date: April 20, 2020
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