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WIPO Domain Name Decision: D2000-1735
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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nagatanien Co., Ltd. v. Interdealer
Case No. D2000-1735
1. The Parties
1.1 The Complainant is Nagatanien Co.,Ltd., a company incorporated in Japan, with its head office at 36-1, 2 chome, Nishi-shinbashi, Minatoku, Tokyo 105-8448, Japan.
1.2 The Respondent is Interdealer for "nagatanien.com ", the Domain Name at issue. According to thc WHOIS database, Registrant's name is accompanied by the following information: Administrative Contact, Technical Contact: Domain Administrator (DA56-BR) email@example.com, JP Interdealer, PO Box 28, Soka, 340-8691, Japan.
2. The Domain Name and Registrar
The Domain Name at issue is nagatanien.com. 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 December 13, 2000 by e-mail and in hardcopy on December 18, 2000. The Acknowledgement of Receipt of the Complaint was sent by the Center to the Complainant on December 15, 2000. On December 26, 2000, the Center received the Registrar's Verification Response to the Center’s Verification Request of December 20, 2000. The Center, having confirmed that the formal requirements are complied, sent a Notification of the Complaint and Commencement of Administrative Proceedings to the Respondent on January 5, 2001. On January 25, 2001, the Center sent a Notification of Respondent.
default. The Center received a late response by e-mail on January 29, 2001. On January 30, 2001, the Center acknowledged the receipt of Complainant's comments to response.
On February 13, 2001, the Center sent a Notification of the Appointment of Administrative Panel and Projected Decision Date on February 26, 2001.
4. Factual Background
4.1 The Complainant is one of the Japan's biggest food companies, with the financial year 1999-2000 gross sales exceeding 73.5 billion Japanese Yen (approx.668 million US Dollars (see Complaint's Annex C). The Complainant's major activities are the production and distribution of ochazuke-nori, furikake, instant miso-soup and wide range of other processed food, each of which is carried out or by reference to its name, "Nagatanien". It has traded under the name of "Nagatanien" since 1953.
4.2 The Complainant is an owner of more than 15 registrations in Japan of trademarks containing the word "Nagatanien" in Chinese characters or Latin alphabet for goods in various classes (see Complaint's Annex E). The name "Nagatanien" has been widely advertised and publicized in television and various other media for more than 40 years in the past (see Complaint's Annex D, p.14). The Complainant's name "Nagatanien" as gained a high popularity and recognition among Japanese consumers and dealers, shown by the fact that it was listed in the AIPPI Japan's publication "FAMOUS TRADEMARKS IN JAPAN" (see Complaint's Annex F.)
4.3 The Complainant is the registrant of the domain name "nagatanien.co.jp" and currently operates its principal web site at "nagatanien.co.jp" (see Complaint's Annex G). The site includes the information about the Complainant's corporate activities, corporate history, recruit and many other information. Prior to the filing of the Complaint, the Complainant made substantial efforts to identify and contact the Respondent. The postal address of 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 database also contains the same domain administrator, Interdealer, which has the same postal address (PO 28, Soka, 340-8691, JP), firstname.lastname@example.org and mobile telephone number (+81 9045367881). The Complainant tried to contact the Respondent using the above postal and e-mail address as well as leaving a message at the above telephone number, but received no meaningful response (see Complaint's Annex H, I and J).
5. Parties' Contentions
The Complainant requests the Administrative Panel to issue a decision that the Domain Name at issue be transferred to the Complainant on the following grounds.
(1) Each of the following three elements specified in paragraph 4(a) of the Uniform Domain Name Dispute Solution Policy (the "Policy") applicable to this dispute.
(i) The 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 domain name; and
(iii) The domain name was registered and is being used in bad faith.
(2) As to the element (1), the relevant part of the domain name at issue is "nagatanien" and is clearly identical with or confusingly similar to the various registered and owned trademarks by the Complainant (see Complaint's Annex E).
(3) As to the element (2), the word "nagatanien" 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 the element (3), the Complainant contends that evidence of bad faith registration and use is established by the following circumstances.
(i) The Respondent also registered at least 36 other domain names under the name of Interdealer. That is to say, such domain names are identical or confusingly similar to the names of major railway companies, banks and other famous corporations in Japan (see Complaint's Annex K and L). In addition, at least 24 famous Japanese corporate names are currently owned by the Respondent (see Complaint's Annex L). At least some 37 domain names (including the disputed domain name) are or were registered, either currently or in the past, by the Respondent.
(ii) None of these 37 domain names resolves to any meaningful web site or other online presence (see Complaint's Annex M). It is impossible to imagine that the same person(s) would register some 37 famous corporate names as domain names, 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.
(iii) It is clear, from the following fact, that the Respondent registered the disputed domain name, as well as many other domain names, for the purpose of selling, renting or otherwise transferring the registration for valuable consideration in excess of its direct costs.
(iv) The Registrant intentionally concealed its actual name by applying the domain name under unregistered business name and using a post office box number and mobile telephone number for the contact. Further, 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.
(v) The trademark "Nagatanien" 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.
(vi) By virtue of the wide spread use and reputation of the trademark "Nagatanien", members of the public in Japan would believe that the entity owning the domain name "nagatanien.com" was the Complainant or in some way associated with the Complainant.
(vii) 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 Law (Fusei Kyoso Boshi Ho).
The late Response filed by Respondent Interdealer for nagatanien.com is as follows.
(1) The same name companies of <nagatanien.com.>. In Japan, there are at least 2 companies what are including "nagatanien". These companies are NOT subsidiary company of complainant. These companies have rights about this domain, and it had better that this domain is used by one of these companies, to make better use of domain resources. ICANN UDRP is defective rules, because such problems are ignored (sic).
(2) Registration of domain is not illegal in Japan. There are differences about trademark law between Japan and United States. In Japan, "registration only" (not used) of domain names is not against trademark law, unfair competition prevention act, and so on.
This explanation is the majority in Japan (sic).
(3) The others.
There is postcode "340-8691" in Japan, but this is not open because of Japanese law. Post office can not answer about this postcode because of Japanese law, even if it is required from lawyer and bar association (sic).
6. Discussion and Findings
6.1 Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following.
(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; and
(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.
6.2 The Panel has reviewed the Complaint, the Response and the Documents annexed to these documents. The Panel finds as set out below.
6.3 The domain name "nagatanien.com" is identical or confusingly similar to trademarks in respect of which the Complainant has extensive rights. The Complainant is therefore within paragraph 4(a)(i) of the Policy.
6.4 It is clear that the Complainant is an owner of more than 15 registrations in Japan of trademarks containing the word "Nagatanien" in Chinese characters or Latin alphabet and has spent a substantial sum of expenses in advertising and publicizing its trademarks in television and various other media for more than 40 years in the past. As a result of its continual efforts, the Complainant's domain name "Nagatanien" has gained a high popularity and recognition among Japanese consumers and dealers as well as internet users. Thus, the domain name "nagatanien.co.jp" has acquired so strong a power to attract customers as that of the trademarks owned by the Complainant. The Complainant is justified to have a continued use of the same.
6.5 Respondent's domain name is <nagatanien.com>. It is clear that this domain name is confusingly similar to Complainant's trademarks and the domain name "nagatatanien.co.jp" at Complainant's site. That is to say, it is the portion "nagatanien" that has the distinctive function in the Registrant's domain name and the Complainant's domain name at the site. Thus, both of them are the same in their essential parts, resulting in being similar in entirety. Taking into consideration such similarity and the popularity among internet users in processed food industry, there is no doubt that the Registrant's domain name is confusingly similar to the said trademarks in relation to their origins or sources.
6.6 There is not clarified the actual use of Registrant's domain name. The similarity between Registrant's domain name and Complainant's domain name <nagatanenien.co.jp> as well as Complainant's well-known or famous trademarks is taken into over-all consideration. It is understood that the Registrant would anticipate internet users to have access to Registrant's site, mistaking "nagatanien.com" for <nagatanien.co.jp>. It is further understood that the Registrant would have a free ride on the popularity of the said trademarks or impair their distinctive character. The fact that the Registrant has obtained as many as 37 domain name registrations containing famous company names or trademarks in Japan (see Annex K, N). Such registrations have been made with an intent to sell the domain name at issue can be inferred form its e-mail reply that " With reference to a possible transfer, please advise us of any definite terms and conditions, procedures, etc. if you have them in mind" (see Complainant's Annex I). In view of such Registrant's approach to the Complainant, the Registrant's registration and use or maintenance of the domain name are intolerable business practice. It must be, therefore, held that the Respondent has made the domain name registration in bad faith. Thus, the Respondent's act is construed to come under registration and use thereof in the Policy 4(a)(iii). The Response states that there are at least two companies, in Japan, having the corporate names containing <negatanien.com> and that they are not the subsidiaries of the Complainant. The Respondent further states that it is duly entitled to the domain name at issue. However, it is impossible to ascertain, from the Respondent's statement, whether such fact actually exists. But even if such fact does exist, whether this may be allowed under Japanese law shall be a different subject-matter of study. Further, such existence cannot be the ground for justifying the Respondent's assertion.
6.7 As mentioned above, the Registrant has no rights and legitimate interests for obtaining and maintaining the registration of the domain name at issue. The Registrant asserts constructively that the registration of the domain name is not against the Japanese Trademark Law and Unfair Competition Prevention Law. Such assertion comes from the misunderstanding of the Trademark Law and the Unfair Competition Prevention Law. This assertion is not accepted. Although the mere adoption of a well-known or famous trademark of another person as one's domain name does not technically constitute an infringement of that trademark, such domain name weakens the association of that trademark with its owner and its business. When one adopts a mark identical or similar to a well-known or famous trademark of another for one's goods or business , he/she is not entitled to trademark registration under Article 4(1)(x), (xv) or (xix) of the Trademark Law.
Unauthorized use for one's goods or business of a well-known or famous trademark of another can be prohibited under Article2(I)(i) or (ii) of the Unfair Competition Law.
The purpose of these provisions is to protect the owner's goodwill associated with a well-known or famous trademark, and prevent the distinctive character of such trademark from being diluted. These statutes are also designed to protect the interest of the consuming public. For these reasons, protection of a well-known or famous trademark should extend to prohibit its unauthorized appropriation for one's domain name, as in the case of the Domain Name at issue. The Registrant asserts that the registration of the domain name <nagatanien.com> is not against the Japanese law. But both the Trademark Law and the Unfair Competition Prevention Law of Japan do not admit of any use thereof with unfair intention. The registration thereof with unfair intention are excluded under the Trademark Law, Article 4(1)(x),(xv) and (xix), etc. Further, the use of a trademark with unfair intention violating the rule of fair competition is not protected as seen in Articles 11 (1) (ii), (iii) and (iv) of the Unfair Competition Prevention Law and Articles 26 (2), 32, etc. of the Trademark law. Furthermore, even if the use of a registered trademark, if used with unfair intention violating the rule of fair competition, constitutes the abuse of a right and prohibited. This is supported by the established judicial precedent.
6.8 The postcode has been designed and adopted for a speedy and efficient postal service. The undisclosed postcode does not technically exist. It is very hard to understand what is meant by Respondent's statement in 5.B(3) above. The known fact is, however, that postcode "340-8691" is made available for any post box users at Soka Post Office and not necessarily required to open to the public. It can be said that the postcode be possibly made open. But it is impossible to identify who the Domain Name Registrant at issue is. Thus, the Respondent's assertion in 5.B(3) above is not accepted. The Respondent does not disclose the sufficient contact information. This fact clearly endorses that the Respondent has made the domain name registration in bad faith.
The Panel finds in favor of the Complainant. The domain name at issue is identical or confusingly similar to trademarks in which Complainant has rights; Respondent lacks rights or legitimate interests in the domain name; and the domain name has been registered and used in bad faith. Under Paragraph 4(i) of the Policy, therefore, the Panel hereby decides that the registration of the Domain Name at issue, nagatanien.com, should be transferred to the Complainant, Nagatanien Co., Ltd.
Dated: February 26, 2001