The Complainant is Harima Chemicals Group, Inc., Japan, represented internally.
The Respondent is Domain Administrator, DomainMarket.com, United States of America (“United States”), represented by Brian H. Leventhal, Attorney at Law, P.C., United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2021. On October 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 22, 2021, 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 November 1, 2021 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 November 5, 2021.
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, and the proceedings commenced on November 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 8, 2021. On December 8, 2021, the Respondent requested an extension of the due date for the Response under paragraph 5(b) of the Rules. The Response was filed with the Center on December 13, 2021.
The Center appointed Assen Alexiev as the sole panelist in this matter on January 17, 2022. 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 BackgroundThe Complainant was established in Japan in 1947. It is a manufacturer of products based on chemical substances obtained from pine trees. The Complainant has branches in Brazil, the United States, and 11 other countries in the Americas, Europe and Asia.
The Complainant is the owner of the following registrations of the sign “HARIMA” (“the HARIMA trademark”):
- the combined trademark HARIMA with registration No.13555893, registered on March 14, 2015 in China for goods in class 30;
- the combined trademark HARIMA with registration No.13555895, registered on February 14, 2015 in China for goods in class 6;
- the combined trademark HARIMA with registration No.13555896, registered on December 21, 2015 in China for goods in class 4; and
- the combined trademark HARIMA with registration No.13555898, registered on April 28, 2016 in China for goods in class 1.
The Complainant is also the owner of the domain name
The disputed domain name was registered on November 25, 1998. It currently resolves to a webpage of DomainMarket.com, containing an offer for sale of the disputed domain name for a price of USD 29,888.
5. Parties’ Contentions A. ComplainantThe Complainant claims having common law trademark rights in the United States in the HARIMA trademark. It points out in this regard that it has established its base in the United States in 1980 and that it has used its domain name
The Complainant states that the disputed domain name is confusingly similar to the HARIMA trademark, because it comprises of this trademark in its entirety.
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name, because it is primarily in the business of owning and reselling large numbers of domain names. The Complainant states that it has no relationship with the Respondent and has not given it permission to use the HARIMA trademark, and that the disputed domain name redirects to the Respondent’s website which resells domain names. According to the Complainant, the purpose of the registration of the disputed domain name was to sell it to the Complainant or to a competitor of the Complainant. The Complainant concludes that it can be assumed that the disputed domain name has been registered without any bona fide reason.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. According to it, the disputed domain name has been registered primarily for the purpose of selling it to the Complainant or to a competitor of the Complainant for the price of USD 29,888, which is far in excess of the Respondent’s costs related to the disputed domain name. According to the Complainant, the Respondent knew or should have known the HARIMA trademark of the Complainant, and has acted in willful blindness by failing to search for and avoid trademark-abusive domain name registrations, as long as on November 25, 1998, when the Respondent registered the disputed domain name, it should have been able to easily discover the HARIMA trademark using online databases.
B. RespondentThe Respondent submits that the Complainant has failed to meet its burden of proof on all three elements of the Policy.
According to the Respondent, the Complainant has not provided sufficient evidence to demonstrate that it holds a valid registration of the HARIMA trademark, and any possible trademark rights of the Complainant could only have arisen after the disputed domain name was registered by the Respondent.
The Respondent points out that the Complainant alleges that it holds common law trademark rights in the United States without any evidence of such rights, and the four registrations of the HARIMA trademark in China are dated several years after the Respondent acquired the disputed domain name on December 31, 2008. According to the Respondent, the mere use by the Complainant of its corporate name and the use of the domain name
The Respondent maintains that he has a legitimate interest in the disputed domain name, because it is in the business of buying and selling domain names comprised of descriptive, geographic, and generic terms, common phrases, and combinations thereof. The Respondent offers its domain names for sale through a secondary marketplace website located at “www.domainmarket.com”, and sells over 1,000 domain names per year. The Respondent notes that the disputed domain name was acquired by it in 2008 and resolves to a landing webpage that displays the sale price of the disputed domain name, a means to purchase it, a phone number for DomainMarket.com, as well as links to information about the Respondent and DomainMarket.com and other marketing material about domain names. This landing webpage does not include any pay-per-click or other advertising, and since it was acquired by the Respondent, it has never been used to sell goods or services competitive with the Complainant.
The Respondent disputes the Complainant’s allegation that the sole purpose of registering the disputed domain name was to sell it to the Complainant or one of its competitors and that it was registered without a bona fide reason, and points out that there is no supporting evidence for such allegation, and the Respondent first learned of the Complainant’s existence through the present proceeding. The disputed domain name was registered in connection with the Respondent’s legitimate business of reselling premium domain names, which is a bona fide offering of goods and services that has an accepted place in the domain name industry.
The Respondent contends that it is using the disputed domain name in connection with a landing page to offer it for sale, and that it has rights and legitimate interests in the disputed domain name. The Respondent’s landing page for the disputed domain name makes it clear to visitors that the disputed domain name is only an item of inventory amongst many other domain names being offered for sale by the Respondent. The Respondent, who is based in the United States, acquired the disputed domain name without any knowledge of the Complainant and because “Harima” is a short single word domain name comprised solely of the name of a geographic location, which gives it significant potential resale value for a variety of potential legal uses, just as the Respondent has acquired many other domain names comprised of names of geographic locations. The Respondent states that the landing page used by it has never referenced the Complainant or any of its competitors, and the Respondent has never attempted to sell the disputed domain name to the Complainant or any of its competitors.
The Respondent states that it did not register and has never used the disputed domain name in bad faith. The Respondent notes that it was not aware of the Complainant’s alleged rights in the HARIMA trademark at the time it acquired the disputed domain name, and the disputed domain name was not registered with an intent to profit from or otherwise abuse any trademark rights of the Complainant. The Respondent notes that it has registered the disputed domain name as part of its business model of creating or buying and then selling domain names consisting of combinations of descriptive, geographic and/or generic terms and common phrases. According to the Respondent, the Complainant did not hold any registration for the HARIMA trademark at the time the Respondent registered the disputed domain name. The Complainant makes a point to state that it has been doing business in the United States and asserts common law trademark rights in the HARIMA trademark in the United States, but has failed to meet its burden in proving its asserted rights and there were no live registered trademarks in the United States for HARIMA at the time the Respondent registered the disputed domain name.
The Respondent states that it has registered the disputed domain name in order to sell it in the ordinary course of its legitimate business in good faith and without any knowledge of the Complainant’s existence. The Complainant offers no evidence to support any of its claims that the term “Harima” was famous or had gained secondary meaning as a designation for the Complainant in the United States at the time the Respondent registered the disputed domain name.
The Respondent maintains that it was within its rights in the context of its legitimate business to have registered the disputed domain name in an effort to sell it to someone interested in using it for the many lawful purposes for which it is suitable. According to the Respondent, no person arriving at the Respondent’s landing webpage offering the disputed domain name for sale would believe the webpage has any association with the Complainant, and the mere offering of the disputed domain name for sale does not establish that it was registered for the purpose of targeting the Complainant or its competitors.
6. Discussion and FindingsPursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
A. Identical or Confusingly SimilarThe Complainant has provided evidence of the registration of the HARIMA trademark (in China) and has thus established its trademark rights for the purposes of the Policy. As noted by the Respondent, the HARIMA trademarks were registered only in 2015, the earliest, which is about seven years after the acquisition of the disputed domain name by the Respondent. However, as discussed in section 1.1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the Policy makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, but such rights must be in existence at the time the complaint is filed, and the fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element. However, where a domain name has been registered before a complainant has acquired trademark rights, only in exceptional cases would a complainant be able to prove a respondent’s bad faith. This aspect of the present dispute is discussed in the following sections of this decision.
The Complainant also claims having unregistered trademark rights in the sign HARIMA in the United States. As summarized in section 1.3 of the WIPO Overview 3.0, to establish unregistered trademark rights for the purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. Relevant evidence demonstrating such acquired distinctiveness includes a range of factors such as the duration and nature of use of the mark, the amount of sales under the mark, the nature and extent of advertising using the mark, the degree of actual public recognition, and consumer surveys. Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.
The evidence submitted by the Respondent shows that “Harima” is the name of a city in Japan and the former name of one of its provinces, so it is arguably not inherently distinctive and there is arguably a greater onus on the Complainant to present evidence of acquired distinctiveness/secondary meaning.
To support its contention for having unregistered trademark rights, the Complainant points out that it has established its base in the United States in 1980 and that it has used its domain name
Therefore, the Panel is not satisfied that the Complainant has shown that the HARIMA trademark has become a distinctive identifier which consumers in the United States associate with the Complainant’s goods and/or services. Accordingly, the Panel finds that the Complainant has not established for the purposes of the Policy that it has unregistered trademark rights in the sign HARIMA in the United States.
The Panel will therefore proceed on the basis of its finding above that the Complainant has established its standing to file the Complaint on the basis of its registered HARIMA trademark.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview 3.0. The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name.
The relevant part of the disputed domain name is therefore the element “harima”, which is identical to the word element of the HARIMA trademark.
Therefore, the Panel finds that the disputed domain name is identical to the HARIMA trademark in which the Complainant has registered trademark rights.
B. Rights or Legitimate InterestsThe Complainant maintains that the Respondent does not have rights or legitimate interests in the disputed domain name, because it was registered primarily for the purpose of selling it to the Complainant or to a competitor of the Complainant for the price of USD 29,888, which is far in excess of the Respondent’s costs related to the disputed domain name. According to the Complainant, the Respondent knew or should have known the HARIMA trademark of the Complainant, and has acted in willful blindness by failing to search for and avoid trademark-abusive domain name registrations.
The Complainant has however failed to provide evidence supporting a conclusion that the Respondent was aware of the Complainant or that the Respondent has somehow targeted the Complainant through the registration and use of the disputed domain name. The HARIMA trademark of the Complainant was first registered in 2015, while the disputed domain name was acquired by the Respondent in 2008 – seven years earlier, so the trademark could not have been found at least in any registered trademark database at that time. As mentioned above, the Complainant has not established at least on the record before the Panel that it had unregistered trademark rights in the sign HARIMA in the United States either. There is no evidence that the webpage at the disputed domain name has referred to the Complainant or has been used to generate profit using the Complainant’s goodwill.
The Respondent’s argument is that it acquired the disputed domain name without any knowledge of the Complainant and because “Harima” is a short single word domain name comprised solely of a geographic location, which gives it significant potential resale value for a wide variety of potential legal uses. The disputed domain name was registered in connection with the Respondent’s business of reselling premium domain names. As summarized in section 2.1 of the WIPO Overview 3.0, panels acting under the Policy have accepted that aggregating and holding domain names (usually for resale) consisting of acronyms, dictionary words, or common phrases can be bona fide and is not per se illegitimate under the Policy. In order to find rights or legitimate interests in a domain name comprised of a dictionary word or a common phrase, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning or common phrase and not to trade off third-party trademark rights.
To sum up, the circumstances of this case before the Panel do not support a conclusion that the disputed domain name was acquired by the Respondent to trade off the Complainant’s trademark rights or to carry out any activity that is illegitimate under the Policy.
Therefore, the Panel finds that the Complainant has not established that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad FaithAs summarized in section 3.8.1 of the WIPO Overview 3.0, where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent. This Panel is of the opinion that the same approach is applicable also to situations where an already registered domain name is acquired by a respondent prior to the coming into existence of the complainant’s trademark rights.
The disputed domain name was acquired by the Respondent prior to the registration of the HARIMA trademark, and the Complainant has failed to establish that it had unregistered trademark rights in the HARIMA at the time when the Respondent acquired the disputed domain name. There is no evidence that the website at the disputed domain name has targeted the Complainant or its HARIMA trademark, or that the Respondent has offered the disputed domain name for sale directly to the Complainant or to any of its competitors. The Respondent has provided a plausible explanation for the registration of the disputed domain name and there is no evidence that the Respondent was aware of the Complainant when acquiring it. In view of this, the Panel sees no reason to disapprove of the Respondent’s conduct and no reason to accept that the Respondent has somehow targeted the Complainant with the registration and use of the disputed domain name.
Therefore, the Panel finds that the Complainant has failed to establish that the Respondent has registered and used the disputed domain name in bad faith.
7. DecisionFor the foregoing reasons, the Complaint is denied.
Assen Alexiev
Sole Panelist
Date: January 31, 2021