Complainant is Casio Keisanki Kabushiki Kaisha of Tokyo, Japan, represented by Konishi & Nakamura, Japan.
Respondent is Naoki Kobayashi of Kyoto, Japan. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2010. On October 20, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On October 20, 2010, eNom transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 26, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 15, 2010.
On November 11, 2010, the Center received an email from Respondent on record Mr. Kobayashi, in which he asserted he is not the owner of the domain name. Materials attached to this email were Responses in English and Japanese versions dated November 3, 2010 from Mr. Fujiwara as representative of Yugen Kaisha (Limited Liability Company) “Big Blue” (“YKB”).
The Center appointed Yukukazu Hanamizu, Teruo Doi and Keiji Kondo as panelists in this matter on December 3, 2010. 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 (undisputed facts)
Complainant is a company organized and existing under the laws of Japan with its head office at Tokyo, Japan and is a globally well-known and famous manufacturer of watches, digital cameras, etc. under the trademark CASIO.
Complainant registered the trademark CASIO for broad description of goods and services, including watches, starting in 1961 (the first registration was KASHIO in Japanese in 1957). And since then, Complainant has registered and used CASIO trademarks in connection with many kinds of goods, especially timepieces, digital cameras, electronic dictionaries, etc. in a number of countries including Australia, the People’s Republic of China, Germany, Italy, Japan, the Republic of Korea, Malaysia, the United Kingdom of Great Britain and Northern Ireland and the United States of America. The list of CASIO trademarks registered and owned by Complainant is attached to the Complaint as Annex 6.
Complainant’s trademark CASIO is well-known and famous in these countries as exemplified by a recent decision by the Chinese Trademark Office ((2009) TMRV No. 11817) which recognized that CASIO is a well-known famous mark on electronic calculators, electronic watches and electronic musical instruments. The mark is also registered as defensive mark in Japan, which requires well-known fame for registration. In addition, a number of prior UDRP decisions of WIPO have recognized CASIO as Complainant’s famous mark worldwide.
Respondent registered the disputed domain name on September 14, 2007 for the purpose of YKB’s using it.
The website at the disputed domain name is an on-line retail shop run by YKB specializing in Casio watches.
On April 1, 2010, Complainant wrote to Respondent to demand the transfer of the disputed domain name. Respondent replied on May 6, 2010 that the substantial owner of the domain name was YKB. Then Complainant wrote to YKB for the transfer on May 19 and June 3, 2010 but received no response before this procedure commenced. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is identical or confusingly similar to its trademark CASIO, which is a coined word, because “casio” in the domain name is the functional part as an indicator of source, and ”.bz” is merely a ccTLD identifier and has no distinctiveness. Therefore, in light of distinctiveness, originality, creativity, fame and reputation of the mark,YKB’s use of the disputed domain name in connection with the retail services for watches manufactured by Complainant causes confusion with the services by Complainant.
Complainant also claims that Respondent and YKB have no rights or legitimate interests in respect of the disputed domain name because 1) Respondent registered the disputed domain name for YKB after Complainant first used and registered the trademark CASIO and after it first used the domain names and ; 2) there is no authorization or distributor agreement between Complainant and Respondent or YKB to provide retail services for watches manufactured by Complainant or to use the mark CASIO as a trademark or a domain name; and 3) Casio is a coined word with no descriptive significance and is not used in a descriptive manner by Respondent or YKB, and they are not operating a noncommercial website.
Complainant further claims that the disputed domain name was registered and is being used in bad faith because 1) Complainant, without any relationship with Respondent or YKB, has never acquiesced expressly or impliedly in the use and registration of the disputed domain name by them; and 2) while YKB had actual or constructive knowledge of Complainant’s trademark and trade name Casio, YKB put no disclaimer on their website to advise the public that they are not affiliated with Complainant, and is using the website to free ride on the goodwill and reputation of CASIO. Therefore, Complainant contends, by using the disputed domain name, YKB intentionally attempted to attract, for commercial gain, Internet users to YKB’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of YKB’s website or location or of a product or service on YKB’s website or location. B. Respondent
As will be discussed later in ”6. Discussion and Findings”, the Panel takes YKB’s Response dated November 3, 2010 as the Respondent’s formal Response in this case.
YKB does not dispute that the disputed domain name is identical or confusingly similar to Complainant’s trademark CASIO.
However, YKB contends that it has rights or legitimate interests in respect of the disputed domain name substantially because 1) is not a trademark itself and thus there is no reason to have contracts with Complainant or its authorization to register and use it; 2) YKB actually uses the disputed domain name to sell only wristwatches manufactured by Complainant; and 3) YKB owns only one domain name that includes ”casio” and obviously has no intention to prevent Complainant’s use of ”casio” domain names; and 4) in order to avoid confusion by people, YKB shows that it is just a reseller carrying Casio wrist watches on the top page of its website and there are no words in the website to mention or imply existence of any business relationship or affiliation with Complainant.
YKB further contends that the disputed domain name was not registered or is not being used in bad faith because 1) YKB has actually used the disputed domain name for selling wristwatches manufactured by Complainant and obviously has not meant to gain by selling or leasing the disputed domain name; 2) YKB has only one domain name including the word ”casio” and obviously has no intention of preventing Complainant from using other domain names including ”casio”; 3) being a retailer of wristwatches manufactured by Complainant, YKB has no competing relationship with Complainant and there is no reason that YKB disrupt Complainant’s business, which may have bad effect to YKB’s business; 4) YKB sells only wristwatches of Complainant with the domain name and there is no possibility to confuse people; and 5) in order to avoid confusion, YKB indicates that it is just a reseller of Casio watches on the top page of the website, and there is no words mentioning or implying that YKB has any business relationship or affiliation with Complainant. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, Complainant must prove that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
Before looking into these requirements, this particular case poses a prerequisite question. The Response dated November 3, 2010 was submitted in the name of a Mr. Fujiwara as representative of YKB as an attachment to the email of November 11, 2010 from the Respondent on record, Mr. Kobayashi, who asserted he is not the substantive owner of the domain name. The Panel needs to decide whether or not it should treat YKB’s Response as that of the Respondent in this procedure, and in consideration of the requirements under the Rules.
The Panel decides to accept YKB’s Response as that of the Respondent, and further that YKB’s circumstances rather than Mr. Kobayashi’s should be discussed as Respondent’s ones in this procedure for the following reasons:
Mr. Kobayashi is a representative of Bet Inc. and according to information on its website ”/service/domain.php“, it offers its customers services to assist them in acquiring at using proper domain names that they choose, including ”.bz“ as a part of its web hosting services.
Taking into account as well that Mr. Kobayashi asserts YKB as the substantial owner of the disputed domain name, it could reasonably be assumed that Mr. Kobayashi registered the disputed domain name as a part of his company’s services in response to YKB’s request and solely for its use.
These circumstances indicate that with regard to this particular dispute, Mr. Kobayashi has no intention or objective circumstances to assert his own interests separate from YKB’s.
In addition, Complainant itself regards Mr. Kobayashi as a nominal registrant for YKB and contends and provides evidence on YKB’s use of the disputed domain name. Furthermore, YKB’s Response provides counter-arguments based on its own use of the disputed domain name.
From all the foregoing, in view of procedural due process and effective resolution of the dispute, the Panel finds it appropriate to take YKB’s Response and circumstances those of the Respondent in this procedure. A. Identical or Confusingly Similar
It is undisputed and obvious that Complainant is the owner of the trademark CASIO registered around fifty years ago, and well-known and famous in many countries including Japan where YKB operates the website with the disputed domain name.
Also, it is undisputed and obvious that the domain name registered and used by YKB is identical or confusingly similar to Complainant’s trademark CASIO because ”casio“ is the dominant and functional part as an indicator of source and ”.bz“ has no distinctive quality or function.
Therefore the Panel finds the disputed domain name is identical or confusingly similar to Complainant’s trademark CASIO, thus this criterion as per paragraph 4(a) of the policy is established. B. Rights or Legitimate Interests
The Policy requires that none of the three conditions provided under paragraph 4(c) be met to establish that Respondent has no rights or legitimate interests in respect of the disputed domain name. In this case, it is obvious that to the Panel Respondent is not commonly known by the disputed domain name, and paragraph 4(c)(ii) does not apply. And because there is no dispute that YKB’s website at the disputed domain name has offered Casio watches for sale since 2007, which is before being notified of this case, it is also obvious that paragraph 4(c)(iii) does not apply. Therefore, the question before the Panel is whether Respondent has rights or legitimate interests by using the disputed domain name in connection with a bona fide offering of goods as provided by paragraph 4(c)(i) of the Policy, with the real issue being whether YKB’s such offerings are bona fide.
In this respect, the Panel finds that YKB’s offerings are not bona fide and thus YKB does not have rights or legitimate interests to use the disputed domain name. In reaching this conclusion the Panel has considered the way in which YKB uses the disputed domain name and the Panel's analysis here overlaps its analysis of the third requirement, registration and use in bad faith (paragraph 4(b)(iv) of the Policy to be specific), because it is generally the case that if the latter is satisfied so is the former, and if the latter is not, nor is the former. Therefore, the Panel gives the reason for this finding in the next section where the third requirement is discussed. C. Registered and Used in Bad Faith
The substantive issue before the Panel as contended by Complainant regards paragraph 4(b)(iv) of the Policy. And as it is undisputed and apparent that YKB’s use of the website at the disputed domain name is for commercial gain by selling watches, the question is whether or not, by using the disputed domain name, YKB has intentionally attempted to attract Internet users to the website by creating a likelihood of confusion with Complainant’s mark CASIO as to the source, sponsorship, affiliation, or endorsement of the website or a product or service on the website.
In addition, because CASIO is a well-known and famous mark, registering and using it as a main part of a domain name without Complainant’s authorization and with such knowledge may be presumed to be an act in bad faith, and therefore, YKB shall bear the burden of rebutting Complainant’s case with regard to these points, namely to show that it did register and has used without bad faith or that it has rights or legitimate interests in respect of the disputed domain name.
The Panel first finds that YKB’s website creates likelihood of confusion with Complainant’s mark CASIO as to certain affiliation, etc. because without a clear disclaimer, Internet users are likely to assume the affiliation or other special relationships of the website with Complainant. YKB’s website does indicate, as Respondent contends, that YKB is just a reseller of Casio watches on the top page of the website, and there are no words mentioning or implying that Respondent has any business relationship or affiliation with Complainant. However, the Panel finds this insufficient to prevent ordinary users’ confusion or assumption.
Secondly, indication of a link to Complainant’s ”Official Site” at the upper area of the top page might in some instances work to suggest that YKB’s website is not the official one authorized by Complainant. But the Panel finds it insufficient to overturn ordinary users’ confusion.
Furthermore, although there is an indication that “This site is operated by Limited Liability Company Big Blue’’, this is placed at the end of the “About the Company” pages and ordinary users are not likely to think that YKB’s website is totally independent of Complainant’s.
Therefore, the Panel finds that the ”likelihood of confusion” is created by YKB’s website.
With regard to the intentional attempt to attract Internet users by creating the likelihood of confusion, to add to all the above factors, it is observed that YKB has another website to sell watches of another trademark, Suunto, under ”/suunto“. This suggests that for the website to sell CASIO watches, YKB could have chosen ”/casio“ instead of ”www.“. Also, as the linked “Official Site” shows Complainant’s catalogue of the watches with the prices, it appears that YKB intends to show that YKB’s website offers better prices than Complainant’s official ones.
In addition, the fact that YKB did not respond to Complainant’s letters of May 19 and June 3, 2010 before this procedure suggests and matches with the presumption of YKB’s bad faith.
From all these factors referred to above, the Panel finds that YKB intentionally attempted to attract Internet users by creating the likelihood of confusion.
Therefore, in the Panel’s view, Respondent has no rights or legitimate interests in respect of the disputed domain name and the disputed domain name has been registered and is being used in bad faith. 7. Decision
For all 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.
Yukukazu Hanamizu
Presiding Panelist
Teruo Doi
Panelist
Keiji Kondo
Panelist
Dated: December 17, 2010
Full & Egal Universal Law Academy