ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Kubota Corporation v. Media Matrix LLC Case No. D2022-3397 1. The Parties The Complainant is Kubota Corporation, Japan, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America ("United States"). The Respondent is Media Matrix LLC, United States, represented by Greenberg & Lieberman, United States. 2. The Domain Name and Registrar The disputed domain name
is registered with Network Solutions, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 13, 2022. On September 13, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 15, 2022, 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 (Perfect Privacy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 16, 2022 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 amendment to the Complaint on September 17, 2022. The Center verified that the Complaint together with the amendment to 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 September 21, 2022. In accordance with the Rules paragraph 5, the due date for Response was October 11, 2022. Upon request from the Respondent on September 29, 2022, the due date for Response was extended to October 15, 2022. The Response was filed with the Center October 13, 2022. page 2 On October 31, 2022 and November 1, 2022, the Center received by email supplemental filings from the Complainant and the Respondent respectively. The Center appointed Wilson Pinheiro Jabur, Alan L. Limbury, and Alistair Payne as panelists in this matter on November 9, 2022. The Panel finds that it was properly constituted. Each member of 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 was established as a foundry in 1890 and changed its corporate name to Kubota Tekko-jo (Kubota Iron Works) in 1897, having developed and commercialized the first Japanese firm tractor in 1960 and established in 1972 in the United States Kubota Tractor Corporation. As of December 31, 2020, the Complainant had a capital of 84.1 billion Japanese yen and a consolidated revenue of 1,853.2 billion Japanese yen, also counting with 41,605 employees. The Complainant is the owner of the domain name, which was registered on February 22, 1997 in addition to hundreds of worldwide trademark registrations containing the KUBOTA trademark (Annex 7 to the Complaint), amongst which: - Japan trademark registration No. 634179 for KUBOTA, registered on January 16, 1964 and successively renewed; - United States trademark registration No. 922,330 for KUBOTA, registered on October 19, 1971 and successively renewed. The Respondent is a company based in Puerto Rico, United States engaged in the domain name purchase and resale, having acquired the disputed domain name in August 2022 as part of a large domain name portfolio. The disputed domain name was registered on August 29, 1997 and transferred to the Respondent on or about August 9, 2022. The disputed domain name has been used in connection with a parked webpage displaying pay-per-click ("PPC") advertisements for services related to the KUBOTA trademark, including "New Tractors For Sale," "Tractor Parts for Sale," and "Tractor Repair Service" (Annex 6 to the Complaint). 5. Parties' Contentions A. Complainant The Complainant asserts to be a global manufacturing company specializing in agriculture, water, and living environment products, with a worldwide network over 120 areas. In the Complainant's view, the disputed domain name incorporates its KUBOTA trademark entirely and is therefore identical to that mark for the purposes of UDRP standing. According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name given that: (i) the Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the KUBOTA trademark in any manner; (ii) by using the disputed domain name in connection with a PPC page that includes links for services related to the KUBOTA trademark, the Respondent has failed to create a bona fide offering of goods or services under the Policy and, therefore, the Respondent cannot demonstrate rights or legitimate interests under Paragraph 4(c)(i) of the Policy; page 3 (iii) to the Complainant's knowledge, the Respondent has never been commonly known by the disputed domain name and has never acquired any trademark or service mark rights in the disputed domain name; and (iv) by using the disputed domain name in connection with a monetized parking page, the Respondent's actions are clearly commercial and, therefore, the Respondent cannot establish rights or legitimate interests pursuant to paragraph 4(c)(iii) of the Policy. The Complainant contends that in spite of having been registered on August 29, 1997, the disputed domain name was acquired by the Respondent on or about August 9, 2022, the date on which the WhoIs record indicates that the disputed domain name was updated and that the assessment of bad faith to be made ought to consider this date and not the original registration date, as set forth in section 3.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). In the Complainant's view, the KUBOTA trademark is widely known and the disputed domain name is "so obviously connected with" the Complainant, that the Respondent's actions suggest "opportunistic bad faith" in violation of the Policy. In addition to that, given the global reach and popularity of the Complainant's services under the KUBOTA trademark, "it is inconceivable that Respondent chose the contested domain name without knowledge of Complainant's activities and the name and trademark under which Complainant is doing business." Pancil LLC v. Domain Deluxe, WIPO Case No. D2003-1035. As to the use of the disputed domain name the Complainant argues that its use in connection with a monetized parking page constitutes bad faith pursuant to Policy 4(b)(iv). In the amendment to the Complaint dated September 17, 2022 the Complainant argues that the Respondent's bad faith is further corroborated by the fact the Respondent has engaged in a pattern of bad faith conduct, having registered other domain names that are identical or confusingly similar to well-known trademarks owned by third parties such as , , and . On October 31, 2022, the Complainant submitted an unsolicited Supplemental Filing to address "factual circumstances that have changed since the Complaint was filed (i.e., Respondent's revisions to the website that was associated with the Disputed Domain Name and Respondent's admission that it is a professional domain name investor); Respondent's false and misleading arguments submitted in the Response; and Respondent's unsupported request for a finding of Reverse Domain Name Hijacking (RDNH)." B. Respondent The Respondent asserts that it occasionally invests in domain names which it buys, holds with parking and re-sells. According to the Respondent, the domain names which it buys individually are chosen for their prospective re-sale value and as such the Respondent's computer system has been trained to look for generic words in any language and domain names with traffic. Also, according to the Respondent, it owns a little over 10,000 domain names, 7,269 of which were acquired in August 2022, including the disputed domain name. The Respondent furthers claims that it was unaware of any particular domain name in the portfolio as it was acquired solely on the basis of its gross income, the Respondent not having had the time to review every single domain name which it acquired. The Respondent points out that it has never before been involved in an UDRP or any federal law suits and that the Complainant has not sent a demand letter of any sort. In addition, the Respondent says that upon becoming aware of the Complainant, as a result of this procedure, the Respondent modified the Google advertising at the disputed domain name so as not to conflict with any of the Complainant's goods or services, and in particular with the Complainant's Google ads. According to the Respondent, the parking company rotates ads and uses psychographic targeting which consists of displaying advertisements based upon what the user has looked for in past searches. page 4 The Respondent further claims to have made use of the term "Kubota" in association with advertising services for others which is one of the few services that the Complainant asserts that it provides. MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC, WIPO Case No. D2006-0550. The Respondent argues that the Complainant has registered the word mark KUBOTA for every possible good or service but the Complainant fails to actually use the word mark KUBOTA in the United States and although an exhaustive review of the Complainant's trademarks has not been done, the Respondent, suggests that it has failed to do so for many years, which it says makes the Complainant fail under the first element. In the Respondent's view the term "kubota" is generic given that it is a dictionary word in Japanese meaning "sunken rice paddy", while also being a common surname in Asia. Therefore, the Respondent asserts that it has a legitimate right to use the disputed domain name based on its generic and commonly used meaning. Lastly, the Respondent makes a request for a finding of Reverse Domain Name Hijacking since it believes that the Complainant filed this Complaint solely to obtain the disputed domain name without having to buy it from the Respondent. On November 1, 2022, the Respondent submitted a rebuttal to the Complainant's unsolicited supplemental filing stating inter alia that it is true that generic terms can become famous, such as Apple, Amazon, etc., but that is not the case of "Kubota" which an entity based in the United States would have no reason to know about unless they are part of the farming community which in this case the Respondent most certainly is not. 6. Discussion and Findings As a preliminary matter, the Panel notes that both Parties have submitted unsolicited supplemental filings. While the Panel finds that those supplemental filings are reiterative of each Parties positions, and close to an attempt of rebutting each Parties arguments, the Panel has decided to accept them for the sake of completeness. The Panel further notes that, should the Panel have not considered these supplemental filings, it would not have affected the outcome of this decision. Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present in order to obtain the transfer of the disputed domain name. A. Identical or Confusingly Similar The Complainant has established rights in the KUBOTA trademark, duly registered in several jurisdictions, including the United States where the Respondent is located. Past panels have already found that the Complainant has rights in the KUBOTA trademark: Kubota Corporation v. CONG TY TNHH 01TV SX-TM DV HOANG GIANG, CONG TY TNHH 01TV SX-TM & DV HOANG GIANG, WIPO Case No. D2020-0276 ("the Complainant has clearly evidenced that it has registered trademark rights to KUBOTA"); and Kubota Corporation v. Privacy Protection / zhang wei, WIPO Case No. DCO2022-0045 ("Complainant established its rights in the trademark KUBOTA"). page 5 The Panel unanimously finds that the disputed domain name reproduces the Complainant's mark in its entirety and is therefore identical to that mark under the Policy which, as recognized by past UDRP panels involves a "comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name" (WIPO Overview 3.0, section 1.7). In undertaking the comparison, it is permissible in the present circumstances to disregard the generic TopLevel Domain ("gTLD") component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11. Disregarding the ".net" gTLD, therefore, the disputed domain name consists of the Complainant's registered trademark. The Panel therefore finds that the first element of the Policy has been established. B. Rights or Legitimate Interests The conclusions of the Panel in respect of the second and third elements under paragraph 4(a) of the Policy are divided. The following findings are those of the Panelists Wilson Pinheiro Jabur and Alistair Payne ("the Majority Panelists" or "the Majority of the Panel"), and there appears below in section 8 of this Decision the dissenting opinion of the Panelist Alan L. Limbury. Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate a respondent's rights to or legitimate interests in a disputed domain name. These circumstances are: (i) before any notice of the dispute, the respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. In this case, the Majority Panelists find that the Complainant has made a prima facie showing that the Respondent does not have rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. This finding is inter alia based on the following circumstances: (1) the Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the KUBOTA trademark in any manner; (2) the Respondent does not hold any registered trademark relating to KUBOTA and is not commonly known by the disputed domain name; and (3) the disputed domain name has been used in connection with PPC links relating to the Complainant's activities. The question therefore turns to the Respondent's claim that it was not aware of the Complainant and that "kubota" consists of a generic word. Given the fact that the Respondent, by its own admission, is a professional domainer who acquired the disputed domain name as part of a lot of 7,269 for investment purposes due to their "gross income", the onus must be upon the professional domainer to ensure that it does its due diligence properly and either does not acquire domain names that are identical or confusingly similar to well reputed registered trademarks such as page 6 KUBOTA, or if it does acquire them as part of a bulk purchase that it has a policy in place of not using them until they are cleared. If however, as in this case, the Respondent chooses to permit them to be used, whether to divert to PPC parking pages or otherwise, then it runs the risk of falling foul of the Policy. The Respondent here has effectively admitted that it has no rights or legitimate interests per se in the disputed domain name other than to use it as an investment. The Complainant's registered trademark is very well reputed internationally and even if the word "kubota" may also be used generically, that does not trump the obligation upon the Respondent to at least check that the mark contained within the disputed domain name has not been registered by a third party and enjoys a well-developed secondary meaning. The rationale by which the Respondent suggests that its computer system automatically chooses domains for investment purposes (those which are generic and those that have a lot of traffic) means that the domainer necessarily runs the risk of automatically acquiring domain names that contain well-known or reputed marks. That does not excuse the registration of a well reputed mark and the onus must therefore be upon the Respondent to adopt policies that mitigate that risk, or indeed to accept the risk that it may not be entitled to keep those domain names. In this case the Majority Panelists find that the Respondent, in making a bulk acquisition of domain names, failed to check whether the disputed domain name presented such a risk in circumstances that the Complainant had prior rights and also failed to take steps to ensure that the disputed domain name was not used to trade off the Complainant's trademark rights pending such a review. In relation to the Respondent's assertion that "kubota" is a generic term, section 2.10.1 of the WIPO Overview 3.0 indicates that "[p]anels have recognized that merely registering a domain name comprised of a dictionary word or phrase does not by itself automatically confer rights or legitimate interests on the respondent; panels have held that mere arguments that a domain name corresponds to a dictionary term/phrase will not necessarily suffice. In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights." The WIPO Overview 3.0 further indicates that "the status and fame of the relevant mark and whether the respondent has registered and legitimately used other domain names containing dictionary words or phrases in connection with the respective dictionary meaning" are also to be taken into account in assessing whether it has a legitimate interest in a domain name under dispute. In this regard the Majority Panelists note, based on the evidence provided by the Complainant, that the Respondent has similarly registered domain names that incorporate such well reputed marks as "Lloyds Bank". In circumstances that the Complainant's KUBOTA mark is very well reputed internationally, that the Respondent admits that it has no rights or legitimate interests in the disputed domain name other than for use as an investment and considering that the Respondent has in a similar manner and without undertaking any due diligence or adopting usage policies to mitigate such risk, registered other domain names that contain well reputed marks solely for investment purposes, the Majority Panelists find that the Respondent lacks rights or legitimate interests in the disputed domain name. The second element of the Policy has therefore also been met. C. Registered and Used in Bad Faith As seen above, the Majority of the Panel finds that the Complainant's KUBOTA trademark is at the least extremely well reputed and was registered many years prior to the date on which the Respondent appears to have acquired the disputed domain name, being August 9, 2022. The Respondent has freely admitted that its system chooses domain names for acquisition based on their gross income and accordingly it is implicit that its system chooses domain names for acquisition because they have generated very considerable traffic and ipso facto are either very well reputed, or of a generic nature such that traffic is attracted to the domain name. In either case the mere fact that the disputed domain name was automatically chosen by the Respondent's computer system does not let the Respondent off the hook. A simple Internet search would page 7 have identified the very well established and international operations of the Complainant and its use of and interest in the KUBOTA mark. Non-Japanese speakers in the United States would not understand that "kubota" is a generic term and also considering the range of products produced by the Complainant under the KUBOTA mark (including both "lifestyle" and "agricultural" and "construction" and "industrial" products) there is a strong inference on the balance of probabilities that the Respondent knew or should have known of the Complainant and its KUBOTA trademark, but either omitted to or chose not to make appropriate enquiries before registering the disputed domain name. At the very least the Respondent could have implemented a policy of checking its newly acquired portfolio before putting the domain names to use to generate income, but it did not do so. Rather, it permitted the disputed domain name initially to redirect Internet users to a PPC webpage featuring links to the same goods or services as previously or currently offered by the Complainant. This amounts to trading off the reputation attaching to the Complainant's mark and to conduct that falls under paragraph 4(b)(iv) bad faith. By changing this re-direction after notice of the Complainant's rights the Respondent tacitly admitted as much. The Majority Panelists' view of the Respondent's bad faith is further reinforced by the fact that: (a) the disputed domain name consists solely of the Complainant's trademark; (b) the Respondent's use of a privacy protection service in an apparent attempt to mask its identity; and (c) the Respondent acquiring other domain names that wholly incorporate well-known third party trademarks, such as . Professional domainers making bulk acquisitions of domain names should not be held to any lesser standard than any other domain name registrant. The blind registration in bulk of domain names some of which obviously incorporate well reputed marks and their subsequent use to trade off the benefit of the reputation attaching to those marks, without any apparent attempt to mitigate the associated risks, should not be condoned under the Policy. For the reasons above, the Respondent's conduct has to be considered, in the Majority Panelists' view, as bad faith registration and use of the disputed domain name and accordingly the Complaint succeeds under the third element of the Policy. 7. Reverse Domain Name Hijacking ("RDNH") The Respondent argues that the Complainant brought this case in bad faith, solely to obtain the disputed domain name without buying it, not having the right to do so and not having attempted to solve the case prior to this proceeding. The Majority of the Panel finds no RDNH and that the Complainant was justified in bringing this Complaint for the reasons set out above. page 8 8. Dissenting Opinion Assuming for present purposes that the Respondent has failed to rebut the Complainant's prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and assuming that the Respondent has used the disputed domain name in bad faith by allowing it to resolve to a parked web page displaying pay-per-click links associated inter alia with products marketed by the Complainant under its trademark, this Panellist is nevertheless not satisfied that the Complainant has shown that the disputed domain name was registered in bad faith. This is so because the Policy requires the Complainant or its mark to be targeted, i.e., that the disputed domain name was registered with the Complainant's mark in mind in order to take advantage of the reputation of the mark. Hence when domain investors knowingly choose individual domain names, they have a responsibility to check whether they correspond to well-known trademarks. If they fail to do this, they can be found guilty of willful blindness and to have registered the domain names in bad faith. See Fragrance Foundation, Inc. v. Texas International Property Associates, WIPO Case No. D2008-0982 (August 28, 2008). ("[i]t seems to this Panel and others that people who make a living from registering vast numbers of domain names must make a reasonable effort.to ensure that they are not infringing on the rights of others."). See also Citigroup Inc. v. Andrew Robert Wilson, Andrew Robert Wilson, WIPO Case No. D2021-1058 (June 1, 2021): "Nor indeed will mere ignorance of the existence of the trade mark be sufficient to bring the adoption and use of the name within the fold of honest practice. Honest practice in the choice of a name to be used in trade must imply reasonable diligence in ascertaining that the name chosen does not conflict with, inter alia, an existing trade mark, and thus in verifying the existence of any such mark."). In the present case the CEO of the Respondent has declared upon penalty for perjury that, before receiving the Complaint (some six weeks after the disputed domain name was transferred to the Respondent as part of the portfolio) he was unaware of any particular domain name in the portfolio and had not had the time to review every single domain name in the portfolio. Hence this is an unusual case in which the registrant of the disputed domain name was unaware of the domain name at the time of registration and, before doing so, could not have conducted any search to determine whether the domain name infringed a trademark. The Respondent has shown that, although the Complainant has numerous registrations in many countries for the trademark KUBOTA, it is not the only registrant of that trademark; the word "kubota" is a dictionary word in Japanese meaning "sunken rice paddy"; a common surname and first name; a geographic name (Kubota Gardens, a location in Seattle); and a brand of Sake. Indeed, the initial registrant of the disputed domain name in 1997 was named Osamu Kubota (Complaint Annex 9). The Majority Panellists' statement that in the United States "Kubota" is not a generic term for non-Japanese speakers does not prevent the generic character of the word in Japan from being taken into account in considering whether the Respondent registered the disputed domain name in bad faith. See Intocable, Ltd. v. Paytotake LLC, WIPO Case No. D2016-1048 (July 29, 2016): "The Panel concludes that Respondent, especially as a professional in the domain name business, and consistent with paragraph 2 of the Policy, did have a duty to ensure that registration of the Domain Name would not infringe the rights of a third party. It appears from the record that Respondent failed to perform such checks in relation to the term 'intocable.' However, that fact alone is not determinative, since even if Respondent had performed such due diligence, the word 'intocable' is not merely an acronym or fanciful term that could refer reasonably only to Complainant and its musical group; it is also a common Spanish language word. This case is therefore distinguishable from the UDRP cases, Sibyl Avery Jackson and Red Nacional, cited by Complainant. In those cases the domain names in dispute - and - referenced the distinctive personal name and acronym for the respective complainants, and carried no other common language meaning or plausible use". page 9 Likewise, in Teapplix, Inc. v. Johnny Gray / ArtWired, Inc., FA2111001974009 (Forum, January 4, 2022) the panel found: "To what extent a registrant is expected to perform a search to ensure that it is not infringing on the rights of others depends on the linguistic elements of the mark. If a mark is generic without doubt, that is one set of facts, but as a phrase moves to the other end of the continuum, that is another set of facts. Here, Respondent labels 'ACTIONSHIP' as a generic phrase, but offers no evidence that the phrase has any widespread usage in any linguistic community. A search by the Panel of the United States trademark database, where both parties are located, would have revealed Complainant as the sole user of the term. This is evidence that although the words 'action' and 'ship', taken separately, are generic, the combined phrase 'ACTIONSHIP' is not generic but rather one-of-a-kind. Panels have generally found 'willful blindness' in cases of famous or well-known marks. It cannot be said that ACTIONSHIP is in either category. Does this make a difference? In the Panel's view, marks that are neither famous nor well-known but are one-of-a-kind cannot be ignored by professional domain resellers even if their failure to conduct research is less than willful. [.] The Panel has found that the phrase 'action ship' as a trademark is distinctive to the Complainant alone. Of the four nonexclusive circumstances evidencing bad faith, the Panel finds that the domain name was registered and is being used in violation of Paragraph 4(b)(iv) of the Policy. Had the Respondent offered any evidence to the contrary and demonstrated other persons marketing goods or services under that mark, the Panel would have been constrained to agree with the Respondent and dismissed the Complaint, but there is no such evidence in the record". As noted above, in the present case, the Respondent has produced evidence that the word "Kubota" is not distinctive of the Complainant alone and indeed is in common use in several countries in different ways, including as a geographical term in the United States, where the Respondent is located. Under these circumstances, this Panellist is of the opinion that the Respondent's registration of a large portfolio of domain names based upon the revenue generated by the portfolio, without being aware that the disputed domain name was part of that portfolio, should not be regarded as willful blindness towards the Complainant's KUBOTA trademark. Accordingly, this Panellist would find that the Complainant has failed to establish that the Respondent registered the disputed domain name in bad faith. 9. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Majority of the Panel orders that the disputed domain name be transferred to the Complainant, rejecting a finding of RDNH. /Wilson Pinheiro Jabur/ Wilson Pinheiro Jabur Presiding Panelist Alan L. Limbury Alan L. Limbury Panelist (Dissenting) /Alistair Payne/ Alistair Payne Panelist Date: November 23, 2022
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