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WIPO Domain Name Decision: D2000-1637

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Asahi Kasei Kogyo K.K. v. Interdealer

Case No. D2000-1637

 

1. The Parties

The Complainant is Asahi Kasei Kogyo K.K. (English name: Asahi Chemical Industry Co., Ltd.), a company incorporated in Japan, with its registered head office at 1-2, Yuraku-cho 1-chome, Chiyoda-ku, Tokyo 100-8440, Japan.

The Respondent is Interdealer, whose contact address is PO Box 28, Soka, 340-8691, Japan.

 

2. The Domain Name and Registrar

The Domain Name at issue is <asahi-kasei.com>. This Domain Name is registered with BulkRegister.com, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 24, 2000, by e-mail and on November 29, 2000, in hardcopy.

The Acknowledgement of Receipt of the Complaint was sent by the Center to the Complainant on November 30, 2000. On December 1 and 6, 2000, the Center sent a Request for Registrar Verification to BulkRegister.com, Inc. On December 11, 2000, the Center received from the Registrar a Verification Response confirming that the Registrar is the registrar of the said domain name, and that the said domain name is in "active" status.

On December 13, 2000, the Complainant amended the Complaint twice by e-mail and fax, and the Center acknowledged the amendments on the same day.

The Center, having confirmed that the formal requirements are complied, sent a Notification of the Complaint and Commencement of Administrative Proceeding to the Respondent on December 19, 2000, but the Notification was returned to the Center.

The Respondent has made no Response to the Complaint before the due date, and the Center sent a Notification of the Respondent's Default to the parties on

January 11, 2001.

The Center sent a Notification of the Appointment of Administrative Panel and Projected Decision Date on January 19, 2001.

 

4. Factual Background

The facts stated in the Complaint are as follows:

(1) The Complainant is one of Japan's biggest chemical companies, with the financial year 1999-2000 net sales (including consolidated subsidiaries) exceeding

1,194.4 billion Japanese Yen (approximately 11,163 million US Dollars) (see Annex C, p.3, to the Complaint). The Complainant's main activities, each of which is carried out or by reference to its name, "Asahi-Kasei", are the production and distribution of wide range of chemicals and plastics (including the conclusion of joint venture agreement with the Dow Chemical Company in September 1999), housing and construction materials (including famous Hebel Haus and Hebel Mezon) and fibers and textiles (such as newly developed Roica BZ), as well as many other products and services (see Annex C, p.1, to the Complaint). It has traded under the name of "Asahi-Kasei" since 1931.

(2) The Complainant is the owner of more than 24 registrations in Japan of trademarks containing the words "Asahi-Kasei" or "Asahikasei" in English characters for goods in various classes, details of which are described in Annex D to the Complaint, as well as many other trademarks containing the above words in Kanji characters. The name "Asahi-Kasei" has been broadly advertised and publicized in television and various other media for more than 40 years in the past (for the history of the Complainant's television commercials, see Annex E to the Complaint). The Complainant with the name "Asahi-Kasei" has obtained high popularity and recognition among Japanese consumers and business people, as shown by a recent research conducted by Nihon Keizai Shimbun, the Japan's representing business paper (see Annex F to the Complaint).

(3) The Complainant is the registrant of the domain name <asahi-kasei.co.jp> and currently operates its principal web site at <asahi-kasei.co.jp> (see Annex G to the Complaint). The site includes the information about the Complainant's corporate activities and subsidiaries, many of which have corporate names including the word "Asahi-Kasei" (see Annex C, p.56-7, to the Complaint).

(4) Prior to the issuing of the Complaint, the Complainant made substantial efforts to identify the contact detials of the Respondent. The postal address of the Respondent, as contained in the Registrar's Whois database, is the post office box number in the city of Soka of Japan (PO 28, Soka, 340-8691, JP). The Complainant tried to contact the Respondent using the above postal and e-mail addresses, but received no response (see Annex H and I to the Complaint). Also, the Complainant called the above telephone number twice and left messages, but was never answered or called back.

 

5. Parties’ Contentions

A. Complainant

The Complainant requests the Administrative Panel the issuance of a decision to effect the transfer of the Domain Name, <asahi-kasei.com>, to the Complainant on the following grounds:

1. Each of the following three elements specified in paragraph 4(a) of the Policy are applicable to the dispute:

(1) The domain name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;

(2) The Respondent has no rights or legitimate interests in respect of the domain name; and

(3) The domain name was registered and is being used in bad faith.

2. As to element (1) above, the relevant part of the Domain Name at issue is "asahi-kasei" and is clearly identical with or confusingly similar to various trademarks registered and used by the Complainant (see Annex D to the Complaint).

3. As to element (2) above, the word "Asahi-Kasei" is an invented word, and, considering its popularity, is not the word that traders would legitimately choose unless seeking to create an impression of an association with the Complainant. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks, nor has it licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating any of those marks. Accordingly, the Respondent has no rights or legitimate interests in respect of the Domain Name at issue.

4. As to element (3) above, evidence of bad faith registration and use is established by the following circumstances;

(i) The Respondent also registered at least 35 other domain names under the name of Interdealer, or with the domain administrator's name being Interdealer, most of which are identical or confusingly similar to the names of famous corporations in Japan (see Annex J and K to the Complaint). Interdealer once registered, under its own name as the registrant, at least 19 domain names, most of which are identical or confusingly similar to the names of major railway companies, banks and other famous corporations (see Annex J to the Complaint). In addition, at least 23 famous Japanese corporate names are currently registered by registrants having the same postal address (PO Box 28, Soka, Japan) and the domain administrator, Interdealer (see Annex K to the Complaint). Seven of these 23 domain names are same as those once registered by Interdealer under its own name as registrant as stated above. As a result, at least some 36 domain names (including the Domain Name at issue) are or were registered either currently or in the past, under the name of Interdealer or with the domain administrator's name being Interdealer. It is natural to believe that the Domain Name at issue and many other famous Japanese corporate names were registered by the same person, who used the same address and who also acts in the name of Interdealer.

(ii) None of these 36 domain names resolves to any meaningful web site or other online presence (see Annex L to the Complaint). It is impossible to imagine that the same person would register some 36 famous corporate names as domain name, without actually using them, for purposes other than selling or renting such names to the owners or their competitors or preventing the owners from reflecting their names in corresponding domain names (see paragraph 4(b) of the Policy: Evidence of Registration and Use in Bad Faith).

(iii) The Respondent intentionally concealed its actual name by applying the Domain Name <asahi-kasei.com> under an unregistered business name and using a post office box number and a mobile telephone number for the contact. In addition, the Respondent has provided a not-existing postal code ("340-8691") for the purpose of its domain name registration, in breach of the Respondent's warranty under paragraph 2(a) of the Policy.

(iv) The trademark "asahi-kasei" is among the best known trademarks in Japan, and it is inconceivable that the person or persons behind the Respondent would not be aware of this fact.

(v) By virtue of the wide spread use and reputation of the trademark "asahi-kasei", members of the public in Japan would believe that the entity owing the Domain Name "asahi-kasei.com" was the Complainant or in some way associated with the Complainant.

(vi) Any realistic use of the Domain Name must misrepresent an association with the Complainant and its goodwill, resulting in breaches of Japan's Unfair Competition Prevention Act (Law No. 47, 1993, Fusei Kyoso Boshi Ho). Unauthorized use for one's goods or business of a well-known or famous trademark of another can be enjoined under Article 2(1)(i) or (ii) of the Unfair Competition Prevention Act. The purpose of these provisions is to protect the owner's goodwill associated with his well-known or famous trademark, and prevent the distinctive quality of such trademark from being diluted. These statutes are also designed to protect the interest of the consumers. For these reasons, protection of a well-known or famous trademark should extend to prohibit its unauthorized appropriation for one's domain name.

For the same reason as above, the Administrative Panel in BUNGEI SHUNJU LTD. v. BUNGEISHUNJU.COM and BUNSHUN.COM (WIPO Case No. D2000-0434), where a famous Japanese publisher's trademarks were registered by unidentified person(s) having the same address and domain administrator (Interdealer) as here, found that the registration were made in bad faith (see Annex M to the Complaint).

B. Respondent

The Respondent failed to file a Response to the Complaint.

 

6. Discussion and Findings

Paragraph 4 (a) of the Policy requires the Complainant to prove that each of the following elements are present:

(1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) that the domain name has been registered and is being used in bad faith.

Since the Respondent has failed to respond to the Complaint within the stipulated time, the Panel assumes that the Respondent admits, and does not contest, all the facts asserted by the Complainant in the Complaint. Upon careful review of the evidential materials submitted by the Complainant to support its contentions, the Panel finds that:

(1) The dominant part of the Domain Name at issue <asahi-kasei.com>, being "asahi-kasei", is identical or confusingly similar to the appellation of the Complainant, or its company name in an abbreviated form, being "Asahi Kasei", and to the Complainant's trademarks consisting of the words "Asahi Kasei" or "Asahikasei" in Roman letters, and/or in Kanji characters, which are registered for goods in various classes (see Annex D to the Complaint). These trademarks have been used by the Complainant for the production and distribution of a wide range of chemical products. Due to an extensive promotional efforts by the Complainant (see Annex E to the Complaint), the mark "Asahi-Kasei" has become well-known and famous among the consuming public and business communities in Japan as indicating the Complainant's products;

(2) The Respondent has no rights or legitimate interests in respect of the Domain Name, because there is no evidence to show that the Respondent has been or is commonly known by the Domain Name, or that the Respondent has acquired any trademark rights in the Domain Name, and the Complainant has never authorized or permitted the Respondent to use the words "asahi-kasei" in its domain name;

(3) The Domain Name has been registered by the Respondent in bad faith, because it is inconceivable that the Respondent has adopted the words "asahi-kasei" for the Domain Name for any reason other than misappropriating the Complainant's well-known and famous company name and trademarks and thereby embarrass the Complainant. The Respondent's bad faith can be easily presumed by the fact that the Respondent registered numerous domain names that consist of famous names of Japanese companies (see Annex H and I to the Complaint).

The Complainant states, as to element (2) under paragraph 4(a) of the Policy, that the word "Asahi-Kasei" is an invented word. This statement is not accurate. Since the word "asahi" in Japanese has the meaning of morning sun and is used by many business establishments and companies, large and small, the distinctive element of the Complainant's name and mark "Asahi Kasei" is found in the combination of "asahi" with another word "kasei", meaning production of new substance by way of chemical combination, and thus, representing the Complainant's business. It is an arbitrary combination of the word "asahi" with "kasei" that makes the Complainant's name so famous as the name of a leading company in the chemical industry in Japan. It must also be pointed out that, even if the Respondent is allowed to keep the Domain Name at issue, it's use for any business purpose can be enjoined under the Unfair Competition Prevention Act (Law No. 47, 1993) as an act of unfair competition falling under Article (1)(i) or (ii). See, K.K. Jaccs v. Y.K. Nihonkai Pact, Chitekizaisanken Hanketsusokuho (Toyama District Court, December 6, 2000) (the defendant's use of its domain name, "http://www.jaccs.co.jp", for its business of selling and leasing of portable toilet equipment was enjoined as constituting an act of unfair competition falling under Article 2(1) (ii) of the Unfair Competition Prevention Act on the ground that the third level domain "jaccs" is similar to the plaintiff's famous trademark "JACCS", registered for its consumer credit service business).

The Respondent, in paragraph 1 of its belatedly filed Response, seems to say something not clearly understandable by pointing out that there are at least seven companies in Japan having the words "asahi kasei" in their respective company names. Even if this is true, the Complainant's company name and trademark "Asahi Kasei" is overwhelmingly famous and distinctive and such fact does not affect the Panel's findings stated above.

 

7. Decision

Based on the above findings, the Panel hereby decides that the registration of the Domain Name at issue, <asahi-kasei.com>, shall be transferred to the Complainant, Asahi Kasei Kogyo K.K.

 

 

Teruo Doi
Sole Panelist

Date: February 1, 2001

 

Источник информации: https://internet-law.ru/intlaw/udrp/2000/d2000-1637.html

 

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