The Complainant is OMRON Corporation of Kyoto, Japan, represented by Sanderson & Co., United Kingdom of Great Britain and Northern Ireland.
The Respondent is Domains by Proxy, Inc. / LeaseD, of Scottsdale, Arizona, United States of America and Palos Park, Illinois, United States of America, respectively. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC . 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2011. On December 16, 2011, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the disputed domain name. On December 16, 2011, GoD, LLC 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 Complainant requested a suspension of the administrative proceedings on December 20, 2011, and a suspension was granted on December 21, 2011. The Complainant then requested reinstitution of the proceedings on December 28, 2011, which was entered on December 29, 2011.
The Center sent an email communication to the Complainant on December 29, 2011, 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 January 3, 2012. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 1, 2012. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent that it would be proceeding to Panel Appointment on February 3, 2012.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on February 9, 2012. 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 OMRON Corporation, an entity organized under the laws of Japan whose principle place of business is Kyoto, Japan. According to the Complaint, the Complainant is a Japanese electronics company based in Kyoto, which was established by Kazuma Tateishi in 1933 and incorporated in 1948. The Complainant’s main business is the manufacture and sale of automation components, equipment and systems, but it is also generally known for medical equipment such as digital thermometers, blood pressure monitors and nebulizers.
The Complainant is the owner of the trademark OMRON registered in several jurisdictions:
Trademark
Jurisdiction
Registration No.
Date
OMRON
EU
000216721
01/04/1996
OMRON
EU
009142837
31/5/2010
OMRON
Japan
2504071
07/03/1990
OMRON
Japan
0622187
26/06/1961
OMRON
Japan
1742268
11/03/1982
OMRON
USA
3774983
24/03/2009
OMRON
USA
0984928
20/09/1971
OMRON
USA
3204195
28/09/2004
OMRON
USA
1374625
01/10/1985
OMRON
USA
1185582
20/10/1981
OMRON
USA
0863793
21/01/1969
OMRON
International
873578
28/09/2004
The disputed domain name was registered on May 12, 2010. 5. Parties’ Contentions A. Complainant
The Complainant contends it is the owner of the mark OMRON trademark registered in the European Union, Japan, United States and other jurisdictions.
The disputed domain name consists of and the Complainant’s trademarks consist of OMRON. The “.me” component in the disputed domain name is just a generic country code top level domain identifier and may be ignored when making a comparison to determine confusing similarity. The domain name is therefore identical to the registrations of OMRON.
The word “omron” contained in the disputed domain name is identical to the Complainant’s trademarks. Therefore, according to the Complainant, the public would easily associate the disputed domain name with the Complainant’s marks and be misled into believing that the domain name is associated with the Complainant. Hence, the disputed domain name is confusingly similar to the Complainant’s.
According to the Complaint, there is clearly no legitimate use of the website by the Respondent as it simply contains a number of paid for links and advertising (the content of the disputed domain name is shown as Annex 5 to the Complaint).
The Respondent is not licensed to use the Complainant’s trademarks, nor is the Respondent in any way associated with the Complaint’s group of companies. Investigations have shown that the Respondent has neither trademark registrations for “omron”, nor any variant, and further the Respondent has not been commonly known by the disputed domain name on any legitimate grounds. The Respondent is in no way authorized by, or affiliated with, the Complainant
The disputed domain name is identical or confusingly similar to the Complainant’s trademark, and the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Nor is such use a legitimate, noncommercial or fair use.
The Respondent “Leased” seems from its website “www.leased” to be a domain registration and hosting company and a domain reseller and as such can have no legitimate reason to own the disputed domain name.
With respect to bad faith, the Complainant states that by the use of the trademark OMRON in the disputed domain name, the Respondent intentionally attempted (and continues to attempt) to use the reputation of the Complainant, so that Internet users will be lured to websites not owned or authorized by the Complainant. The Respondent is not using the disputed domain name for any bona fide purpose.
The Respondent is blocking the Complainant from registering or using the disputed domain name and is interrupting their business by directing potential customers to competitors or by falsely making those customers believe there is an association between the Respondent and the Complainant.
The Respondent’s registration and use of the disputed domain name are in bad faith because the Respondent intentionally attempts to attract members of the public who have an interest in purchasing or obtaining additional information about OMRON goods and services, and then forwarding them to other websites. Forwarding via the advertising links to other web sites not associated with the Complainant will result in benefit, financial or otherwise, to the Respondent. The Complainant states that there is also a link on the website associated with the disputed domain name suggesting that it is for sale. If this link is followed one ends up at an auction page on GoD’s website were the disputed domain name is being offered at a starting price of GBP 3155 or USD 4800 (according to evidence attached as Annex 6 to the Complaint). This figure is clearly far in excess of the costs associated with registration of the disputed domain name and thus the Respondent is also attempting to profit by the sale of the disputed domain name at an inflated cost.
The Complainant states that following the disclosure of the true identity of the Respondent, searches revealed three proceedings under the UDRP identifying “LeaseD” as a respondent. In all these “LeaseD” was the losing party and as such can clearly be said to be displaying a pattern of abusive behavior. The cases cited are: MasterCard International Incorporated. v. Leased,WIPO Case No. D2008-1785; and Société Nationale des Chemins de Fer Français, SNCF v. Domains by Proxy, Inc., LeaseD,WIPO Case No. D2011-1431.
The remedy requested is the transfer of the disputed domain name to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. However, in an electronic mail sent to the Center on February 6, 2012, the Respondent stated: “has this domain been transferred to the complainant yet?”.
It has therefore not contested the allegations of the Complaint and the Panel shall decide on the basis of the Complainant’s submissions, and all inferences that can reasonably be drawn there from. 6. Discussion and Findings
Paragraph 4(a) of the Policy places on the Complainant the onus of proving that:
(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. A. Identical or Confusingly Similar
The Complainant has provided sufficient evidence to prove that it has rights in the OMRON trademark through long use and a large portfolio of registered trademark across the world including the United States where the Respondent resides.
This Panel accepts the Complainant’s submission that the disputed domain name is confusingly similar to the Complainant’s OMRON trademark. The disputed domain name is a combination of the Complainant’s distinctive OMRON mark and the ccTLD extension “.me”. The Complainant’s trademark OMRON is the dominant element of the disputed domain name. It is well established that when comparing a domain name and a trademark, the domain name extension can usually be ignored.
This Panel finds therefore that the disputed domain name is confusingly similar to the OMRON trademark in which the Complainant has rights and the Complainant is therefore entitled to succeed in the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Under the Policy, once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in a domain name the burden of production shifts to the respondent to demonstrate that it has such rights or legitimate interests.
In the present case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has established that it has rights in the OMRON trademark.
In the absence of any Response or other submission from the Respondent, this Panel finds on the balance of probabilities the Respondent has no rights or legitimate interests in the disputed domain name. It follows that the Complainant is entitled to succeed in the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
This Panel finds that the Complainant has proven on the balance of probabilities that the disputed domain name was registered and is being used in bad faith.
The Complainant states that at some point in time, the Respondent was using the disputed domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, as shown in the screenshot of the website associated with the disputed domain name attached as Annex 5 of the Complaint. The Respondent has not denied this assertion.
The website associated with the disputed domain name showed that the disputed domain name was used not only to promote the Complainant's products, but also to promote the products of the Complainant's competitors. The Panel concludes that this activity demonstrates bad faith use by the Respondent.
Thus, the Panel infers that the disputed domain name was registered with the intention to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant's trademarks. Under the circumstances, therefore, the Panel concludes there is no question that the disputed domain name was registered in bad faith. E.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Akbank Turk A.S. v. Arif Bilgin, The Diamond Bar,WIPO Case No. DME2009-0009.
The Panel further finds that the Respondent's failure to reply to the Complaint is further evidence of bad faith use. Finally, the Respondent has been a party to other UDRP cases were it was found that the domain names in dispute were registered and used in bad faith. See: MasterCard International Incorporated. v. Leased,WIPO Case No. D2008-1785; Société Nationale des Chemins de Fer Français, SNCF v. Domains by Proxy, Inc., LeaseD,WIPO Case No. D2011-1431; and Mead Johnson & Company LLC v. LeaseD, NAF Case No FA1417912. In view of the Panel, this fact also suggests in combination with other factors bad faith on the part of the Respondent.
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established. 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 the Complainant.
Pablo A. Palazzi
Sole Panelist
Dated: February 24, 2012
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