The Complainant is Nipro Corporation of Osaka, Japan, represented by Yozo Sawada, Japan.
The Respondent is Liu Zhijun of Madrid, Spain. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 20, 2014. On October 20, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 21, 2014, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended the Complaint on November 6, 2014.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 6, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 26, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 27, 2014.
The Center appointed Richard Tan as the sole panelist in this matter on December 8, 2014. 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 is a manufacturer of pharmaceuticals and medical products, including dialysis products such as dialyzers (artificial kidneys) and products for the treatment of diabetes, and engaged in related businesses. It owns more than 100 trademarks in the mark NIPRO which has been registered by the Complainant in many countries, as early as 1996.
The disputed domain name was registered on December 14, 2013 by the Respondent. It resolves to a parking page that contains sponsored links related to medical products and to products on websites unconnected with the Complainant. 5. Parties' Contentions A. Complainant
The Complainant contends that it owns more than 100 trademarks registered in many countries with regard to the mark NIPRO. It claims that it is famous around the world in the field of pharmaceuticals products, diabetes products, medical products, including dialysis products such as dialyzers (artificial kidneys) and other related business, that its consolidated sales in 2014 exceeded 300 billion Yen and that it employs around 21,826 people. It claims that its mark is a famous mark and has been certified and registered by the Japan Patent Office as a famous trademark. It claims that it has used the mark on its products extensively and at many international exhibitions around the world over the years.
The Complainant claims that the disputed domain name is identical or confusingly similar to the Complainant's trademark in which it has rights.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. It has never licensed or authorized the Respondent to use the Complainant's trademark or the disputed domain name. The Respondent has not been commonly known by the disputed domain name. The Respondent is not making a legitimate non commercial or fair use of the disputed domain name but is using the disputed domain name for a website consisting of a parking page. The Respondent is using the disputed domain name for commercial gain by misleading Internet users and diverting them to the Respondent's own website.
The Complainant contends that the disputed domain name has been registered and used in bad faith by the Respondent. It claims that the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website. It further claims that the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the owner of the trademark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the disputed domain name. The Complainant sent an email on March 31, 2014 to the Respondent complaining about the disputed domain name. The Complainant claims that the Respondent replied the same day by email stating "Please give me a chance to make it up to you." The Complainant further claims that the Respondent offered to sell the disputed domain name to the Complainant. On the same day the Complainant replied to the Respondent but no reply was received from the Respondent. Thereafter, there were no further communications between the parties. The Complainant further claims that the disputed domain name is for sale by a third party at that third party's website at a price in excess of the Respondent's out-of-pocket costs relating to the registration of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Based on the evidence adduced by the Complainant, this Panel finds that the Complainant has rights in the NIPRO mark. The NIPRO mark has been registered in many countries around the world and has been extensively used by the Complainant for its business. This Panel is satisfied that the Complainant has acquired rights in the mark.
The Panel further accepts that the disputed domain name is identical or confusingly similar to the Complainant's mark. The threshold test for confusing similarity under the Policy involves a comparison between the trademark and the disputed domain name to determine the likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the disputed domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion. In this Panel's view, this threshold test is satisfied. The disputed domain name reproduces the NIPRO mark in its entirety. The addition of the country code top level domain ("ccTLD") ".co" is insufficient to avoid a finding of confusing similarity as that is a requirement of registration.
This Panel accordingly finds that the disputed domain name is identical or confusingly similar to the Complainant's trademark in which the Complainant has rights. B. Rights or Legitimate Interests
As several UDRP panels have found, a complainant is only required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name and once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In this case, the Respondent registered the disputed domain name well after the Complainant established its rights in its NIPRO mark.
The Panel finds that the Respondent is not and has not been commonly known by the disputed domain name, that the Respondent has not been granted any license or other rights to use the Complainant's mark for any purposes and that the Complainant is in no way associated or affiliated with the Respondent.
The Panel also accepts the Complainant's contentions that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and the disputed domain name has been used to mislead and attract users to its website for its own commercial gain by the use of a parking page with links to medical products and other products unconnected with the Complainant from which the Respondent is likely to receive revenue. The Respondent is not associated or connected in any way with the Complainant. Such a use of or association with the Complainant's mark for the Respondent's website to generate revenue is contrary to a bona fide offering of goods or services or the Respondent having a legitimate interest in the disputed domain name.
The Panel finds that the Respondent was seeking to create the impression that the Respondent was associated with the Complainant in order to mislead consumers into believing that the Respondent and its website was associated with the Complainant. In so doing, the Respondent was clearly seeking to trade on the Complainant's goodwill and reputation. Such use was not a legitimate noncommercial or fair use of the disputed domain name. The Respondent has not submitted a response to the amended Complaint and has not demonstrated any rights or legitimate interests in the disputed domain name
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant, in addition to the matters set out above, demonstrate that the disputed domain name has been registered and is being used in bad faith.
The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith.
On the undisputed evidence, the Respondent is not affiliated with the Complainant and has no license or other authorization to use the Complainant's trademark.
The disputed domain name was registered well after the Complainant's mark was registered and in use. The Panel finds that the Respondent must have had notice of the Complainant's mark and business when registering the disputed domain name.
The Complainant sent a cease-and-desist email to the Respondent who replied the same day by email stating "Please give me a chance to make it up to you." The Complainant further claims that the Respondent offered to sell the disputed domain name to the Complainant. There is no concrete evidence however from the documents produced by the Complainant that the Respondent offered to sell the disputed domain name to the Complainant. However, there is evidence that the disputed domain name has been placed for sale by a third party at that third party's website at a price, which the Complainant contends is in excess of the Respondent's out-of-pocket costs relating to the registration of the disputed domain name. Having regard to all the circumstances, including the Respondent's response to the Complainant's email as mentioned above and the subsequent failure of the Respondent to cease using the disputed domain name, the Panel finds that the Respondent was acting in bad faith.
The Panel also finds that the incorporation of the mark in question in its entirety as part of the disputed domain name is an indication of bad faith under the circumstances. The Respondent's choice of the disputed domain name which incorporates the Complainant's marks leads to the conclusion that the Respondent was seeking to derive unfair monetary advantage from the Complainant's reputation by its use of the website in question from which it could obtain revenue.
All of the above matters clearly demonstrate that the Respondent intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.
Based on the evidence submitted by the Complainant and having regard to all the relevant circumstances, the Panel accepts the Complainant's contentions that the disputed domain name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. 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.
Richard Tan
Sole Panelist
Date: December 29, 2014
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