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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
J-PHONE Phone West Co., Ltd and J Phone East Co., Ltd v. Mixed Media Co. Ltd
Case No. D2001-0786
1. The Parties
The Complainants are J Phone West Co., Ltd of Crystal Tower, Shromi 1-2-27, Chuo-ku, Osaka-shi, Osaka, Japan (First Complainant), and J Phone East Co., Ltd of JR Shiman-machi Building, Shinano-machi 34, Shinjuku-ku, Tokyo, Japan (Second Complainant).
The Respondent is Mixed Media Co Ltd of Space Five 2nd Floor, Seike 1053, Ooita-shi, Ooita 870-0031, Japan.
2. The Domain Names and Registrar
The domain names on which the Complaint is based are <j-phone-west.com>, <j-phonewest.com>, <jphone-west.com> and <jphonewest.com>.
The registrar with which the domain names are registered is Network Solutions, Inc. of 505 Huntmar Park Drive, Hendon, VA 20170, USA.
3. Procedural History
3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 ("the Policy") in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by email on June 13, 2001, and, by fax and in hard copy on June 15 and 18, 2001, respectively.
3.3 Following verification of the registration of the domain names and other details with the Registrar on June 21, 2001, the Center received a letter of amendment from the Complainant on June 21, 2001. The latter related to the remedies requested by the Complainant, in particular the party to whom transfer of the disputed domain names was requested.
3.4 On June 29, 2001, the Center completed its checklist of formal requirements, and, on the same day, the Respondent was notified of the Complaint and the commencement of administrative proceedings, together with a copy of the amended Complaint, both by email and post/courier.
3.5 A Response from the Respondent was received by the Center on July 20 and 23, 2001, by email and hardcopy respectively.
3.6 On August 30, 2001, the Center notified the parties of the appointment of the administrative panel comprising Professor Staniforth Ricketson (presiding member) and Professor Haruo Goto and Mr Richard Lyon (panelists), and the projected decision date of September 13, 2001.
3.7 On September 10, 2001, the Panel issued its Procedural Order No 1, requesting certain additional information from both parties, and, on September 12, 2001, the Panel extended its projected decision date to 17 September 17, 2001.
3.8 Pursuant to Procedural Order No 1, the Center and Panel received a further submission from the Complainant on September 11, 2001. No further submission was received from the Respondent by the time specified in the Order, but subsequently the projected decision date a document dated September 12, 2001, was received by the Center and notified to the Panel. The Panel has received that document and considered it in any event, but its decision is unaffected by this late submission.
3.9 In light of the above, the Panel finds that
- The Complaint and amended Complaint were filed in accordance with the requirements of the Rules and the WIPO Supplemental Rules.
- The Respondent was properly notified of the Complaint and the Response was also filed in accordance with the Rules.
- The Panel was correctly constituted.
- The Panel has jurisdiction over the parties and the subject matter of this dispute.
4. Factual Background
4.1 The Complainants are juridical persons duly registered under the laws of Japan. Both are affiliated companies that are part of a group of affiliated companies, the J-Phone group, that operates a mobile telephone network in Japan and sells services and products as part of that network. No further information is provided in the Complaint as to the age and size of the two companies, and the scope of their operations. However, it appears from the Complaint that the Second Complainant was previously named J-Phone Tokyo and that since 1 October 1997 it has allowed its affiliated companies of the J-Phone Group to use the trade mark "J-PHONE". It further appears that J-Phone West Co Ltd, a member of the group which operates in Western Japan has been using the trade mark since around this time, although it appears that the name J-Phone West Co Ltd was not adopted until October 1, 2000. Prior to this, it was named "J-Phone Kansai Co Ltd" and before October 1, 1999, it was called Kansai Digital Phone Co (Complaint, page 8).
4.2 The trade mark "J-PHONE" was registered under the laws of Japan on June 16, 2000, in the name of the Second Complainant (then J-Phone Tokyo Co Ltd) in respect of telecommunication machines and apparatus (class 16) and mobile telephone communication, services and rental services for telecommunication devices including telephone and facsimile apparatus (Complaint, Annexes 9-11). The Complaint alleges that prior to this, the trade mark was used by the Complainants and was well known in Japan.
4.3 According to the WHOIS database of Network Solutions, the Respondent is listed as the Registrant of the each of the disputed domain names, (Complaint, Annexes 3-6). The record of each was created on the same date (January 11, 2000), expiring on January 11, 2001. Mixed Media Inc is listed as the registrant, administrative and billing contact, and the technical contact on each record.
4.4 The Complaints allege that, when the First Complainant planned to provide online services under the domain name <J-phone-west.com>, they found that this name and the others in dispute had already been registered by the Respondent (Complaint, page 8). After various communications between the parties, it is alleged that the Respondent agreed to transfer the names to the Complainants, but that subsequently the Respondent indicated that it would only do this subject to payment of a significant sum of money (Complaint, Annexe 12). The Complainants refuse to pay this sum, and the present Complaint was then instituted.
5. Parties’ Contentions
The Complainants seek transfer to the First Complainant of each of the domain names listed above, J-PHONE and in support of this contention addresses each of the elements described in paragraph 4(a) of the Policy as follows.
- With respect to the element described in paragraph 4(a)(i), the Complainant submits that the disputed domain names are identical or confusingly similar to its registered trade mark "J-PHONE, being a mark registered in the name of the Second Complainant that it has allowed its affiliated company, the First Complainant, to use. The Complainants assert further that the mark is well-known in Japan as the a trade mark and service mark of the J-Phone group of companies.
- With respect to the element described in paragraph 4(a)(ii), the Complainants submit that there is no evidence of any right or legitimate interest by the Respondent in the domain names. They state that the Respondent is in no way affiliated with the Complainants, that it does not carry on a business under the domain names, and that the names were registered by the Respondent on behalf of, or in the interest of, Cycle Plaza Shiraishi, a distributor of mobile phones supplied by the J-Phone group of companies.
- With respect to the element described in paragraph 4(a)(iii) of the Policy, the Complainants submit that the Respondent has registered and used the domain name in bad faith. In particular, they allege that this bad faith is established by Respondent’s request (Complaint, Annexe 12) that the Complainants pay the sum of $US2,500,0000 for the formal transfer of the disputed domain names or otherwise immediately cease using the domain name and pay $800,000 for use up to the present time. They assert further that the Respondent had previously agreed to the transfer, and then had neglected to implement the agreement, before asking for these sums of money. Further evidence of bad faith registration, the Complainants suggest, is to be seen in the registration by the Respondent of some 23 other domain names, each of which incorporate the word "J-PHONE" or "JPHONE" in various ways (Complaint, Annexes 13-35). Finally, the Complainants assert that the Respondent might, through the use of its domain names, resort to intentionally disrupting the current Internet services provided by the Second Complainant, damaging the latter’s business and causing enormous confusion among Internet users.
The Respondent denies each of the above contentions in turn.
- As to the element described in paragraph 4(a)(i), the Respondent argues that the registered trade mark "J-PHONE" and the disputed domain names are not identical and are not confusingly similar. In support of this, it argues that the use of the letter "J" throughout Japan is common as a shorthand reference to "Japan" and is used in a number of other contexts in a descriptive manner, eg "J-LEAGUE" for soccer and "JR" for railways. It also argues that the term "J-PHONE" was incorporated in the names of each of the independent phone companies that merged to form the Second Complainant, showing the "common use of the term in connection with the services". It also argues that the Second Complainant was not even in existence at the time the domain name <j-phone-west.com> was registered, and notes that there are no trade mark registrations containing the word "west".
- As to the element described in paragraph 4(a)(ii), the Respondent argues that the domain names were registered for the legitimate purposes of "renting" them to Cycle Shop Shiraishi (the correct name appears to be Cycle Plaza Shiaishi), a company in West Japan that sold J-PHONE mobile products. It alleges that this was done pursuant to a commercial arrangement with Cycle Shop/Plaze (documented in its late submission to Procedural Order No 1) and that it earned rental income from these registrations. It alleges that when the First Complainant approached it concerning the use of the domain names, the Respondent informed the First Complainant that, with the permission of the Cycle Shop/Plaza, the Complainant could use the name subject to a price to be agreed upon. This was an oral agreement, that the Respondent now contends that the Complainants have now reneged on.
- As to the element described in paragraph 4(a)(iii), the Respondent refers to the agreement described under the preceding dot point and notes that it did not approach the Complainants concerning the use of the domain names, but that it was the Complainants that approached it. It argues further that it acted as quickly as it could to ensure that the Complainants could use the names, subject to an agreement to pay for this. It notes further that, without any payment from the Complainants, it changed the routing configuration for J-PHONE so that the Complainants could use the names and that the latter have continued to do so without compensation. It argues further that there can be no bad faith in its registration and use of the domain names, as it did so to assist Cycle Shop/Plaza Shiraishi which is not a competitor of the Complainants but an independent distributor of the latter’s products. In consequence, any sales by Cycle Shop/Plaza will only benefit the Complainants rather than divert customers or tarnish the trade mark. It notes further that Cycle Shop/Plaza also carries on business in West Japan and that, in any event, the domain names were registered before the trade mark "J-PHONE". Finally, it argues that the Complainants do not have the exclusive right to "J-PHONE" at least where this used in conjunction with other names and phrases, and that the Complainants have allowed the use of "J-PHONE" in the names of other independent distributors (citing here the example of www.j-phone-shop.com" by one such distributor). The Complainants' failure to take action against such uses therefore indicates that the Complainants are "keenly aware" that they do not have an exclusive right in the name "J-PHONE" at least where used with other words and goes to establishing that the Respondent here was not acting with the required bad faith.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainants have the burden of demonstrating three elements.
6.1 That the complainant has rights in a trade or service mark with which the respondent’s domain name is identical or confusingly similar
As noted in paragraph 4.2 above, the Complainants have provided evidence of their Japanese trade and service mark registration. It is noted that this only became effective on June 16, 2000, which is some months after the registration of the domain names. However, there is no requirement under paragraph 4(a)(i) that the Complainant’s rights subsist in a registered trade mark: proof of rights in an unregistered mark will also suffice. It must be said that the Complainants have not provided direct evidence of the extent and volume of their usage of the mark "J-Phone" prior to the date of registration. However, it appears from the Complaint that the word "J-Phone" has been used in the name of the Second Complainant from at least October 1997, and as part of the name of the First Complainant since at least October 1999. There is the further assertion by the Complainants that this has been used as a trade and service mark throughout this period, and the Panel is aware of the decision of the Tokyo District Court of April 24, 2001, that the "J-Phone" is a well known mark. While the Panel would normally prefer to be furnished with greater evidence of these matters, in the present case it is prepared to infer that prior to the date of registration of both the trade and service marks and the domain names that the Complainants had "rights" in the unregistered mark "J-Phone", and that this part of paragraph 4(a)(i) is therefore satisfied.
The next question is whether the disputed domain names are identical or confusingly similar to the Complainant’s marks. In this regard, there is no question of identity, as each of the domain names incorporate the word "West" and have minor variations as to the placing of hyphens between the component words of the phrases "J Phone West" as well as the addition of the suffix ".com". There are numerous prior Panel decisions where minor differences of spelling and punctuation have nonetheless been held to make a domain name confusingly similar to a trade or service mark: see, for example, World Wrestling Federation Entertainment Inc v Michael Bosman WIPO Case No. D1999-0001 (January 14, 2000) and InfoSpace.com, Inc v Registrar Administrator Lew Blank, WIPO Case No. D2000-0069 (April 3, 2000). Many panels have also held that confusion is likely when a distinguishing word is added to the principal element of a well known mark. E.g., America Online, Inc. v. Tirona, WIPO Case No. D2001-0645; Professional Golfers of America v. Baldwin, WIPO Case No. D2000-0339.
In the present case the question is whether confusing similarity is avoided by the addition of the word "West" in each of the disputed domain names. In this regard, the Respondent has submitted that the letter "J" is commonly used in other contexts, as an obvious abbreviation for "Japan" and "Japanese", and therefore is purely descriptive. However, if it is accepted that the Complainants have rights in the composite phrase "J-Phone" that have arisen through use, this removes the descriptive element from the equation, and the question is simply whether "J-Phone" and "J-Phone West" (and its variants) are confusingly similar. The Respondent has pointed to other usages of the words "J-Phone" that the Complainants have apparently not objected to in composite phrases used by other independent distributors. However, in the absence of any further evidence as to the circumstances of these third party uses (and whether these were in fact subject to licences from the Complainants) the Panel cannot draw any conclusions one way or other from such assertions. Accordingly, when the Panel considers the trade and service mark and the disputed domain names in the present proceedings, it reaches the following conclusions:
1. That the words "J-Phone" form a critical part of each of the disputed domain names.
2. That the addition in each instance of the suffix "West" does little to differentiate the domain names from the overwhelming impression that each is in some way associated with the mark "J-Phone".
3. That each domain name is therefore confusingly similar.
In this regard, the Panel refers, with approval, to the statement of principles governing this question that were made by the Panel in Jordan Grand Prix Ltd v Gerry Sweeney, WIPO Case No. D2000-0233.
6.2 That the Respondents must be shown to have no rights or legitimate interests in the Domain Name
Paragraph 4(c) of the Policy sets out certain matters to which a Respondent can point as demonstrating rights or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii). These include:
"(i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
In the present proceeding, there is no evidence that the Respondent has used any of the domain names in connection with any bona fide offering of goods and services (subpara (i)). Nor is there any evidence of "demonstrable preparations" to use the domain name in that way (subpara (i)), while it is clear that there has been no licence or authorization given by the Complainant to the Respondent to use the name or mark "J-PHONE" in any of the domain names.
Likewise, there is no evidence before the Panel that indicates that the Respondent has ever carried on a business under the name "J-PHONE" or any variant of this expression, or that it has been commonly known by that name (subpara (ii)). On the contrary, it seems clear that the domain names have been registered simply in order to hold and "rent" it to Cycle Plaza as a distributor of J-Phone products.
Finally, there is no evidence before the Panel that indicates whether any of the factors referred to in subparagraph (iii) are applicable.
The matters referred to in paragraph 4(c) are not an exhaustive statement of what may constitute rights or legitimate interests in a domain name, and it is therefore open to a Respondent to point to other evidence that may show this. In the present proceeding, all the Respondent has done is to refer to its relationship with Cycle Plaza, but this goes no way towards establishing any right or "legitimate interest" in the domain names in question. At the most, this might suggest that there is some interest on the part of Cycle Plaza, but this cannot be used as a leverage point to provide the Respondent with a basis for its claim to an entitlement for the purposes of paragraph 4(a)(ii). In any event Respondent has not shown any right of Cycle Plaza, by contract with Complainants or under Japanese law, to use the name of one of its suppliers without a license.
The Panel therefore concludes that the Complainants have established this element of Paragraph 4(a) of the Policy, namely that the Respondent has no rights or legitimate interests in the disputed domain names.
6.3 That the Respondent registered and is using the Domain Name in bad faith
Paragraph 4(b) of the Policy lists certain factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This is not an exclusive list, and includes:
"(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
It will be noted that, under paragraph 4(a)(iii) of the Policy, both registration and use of the domain name in bad faith are required. Of the factors listed in paragraph 4(b) above, (i)-(iii) relate specifically to registration (and acquisition) of the name, while (iv) relates to use following registration. However, in view of the fact that these factors are stated to be inclusive, it follows that there can be other factors that can be relied upon to point to bad faith, both in registration and in use. In this regard, it is worth noting an early decision of an Administrative Panel to the effect that registration in bad faith followed by a passive holding of a domain name when there is no way in which it could be used legitimately can amount to use in bad faith: Telstra Corporation Ltd v Nuclear Marshmallows WIPO Case No. D2000-0003. In addition, it would be both mistaken and artificial to confine paragraphs (i)-(iii) solely to the time of registration: presumably, it would also be a use of a disputed domain name in bad faith to do so, after registration, with one of the purposes outlined in those paragraphs. Support for this view is to be found in several Panel decisions: see, for example, Estee Lauder Inc v estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869 and E & J Gallo Winery v Hanna Law Firm, WIPO Case No. D2000-0615.
In the present proceeding, the Complainants raises a number of matters that go to the questions of registration and use in bad faith under paragraph 4(a)(iii), but the most relevant of these for present purposes is that referred to in paragraph 4(b)(i). In this regard, after there was apparent agreement between the parties that the domain names would be transferred to the Complainants, there was an express request in the letter dated May 15, 2001, from Berger, Kahn, Shafton, Moss, Figler, Simon and Gladstone, as attorneys for the Respondent, that the Complainants pay $US2,500,000 for the transfer of the names or that they desist immediately from any use and pay $US800,000 by way of compensation for such use. On any view, this request falls within the criteria specified in paragraph 4(b)(i), namely that the registrations were made primarily for the purpose of selling, renting or otherwise transferring the domain names to the owner of the trade or service mark "for valuable consideration in excess of…documented out-of-pocket expenses directly related to the domain name". The sum of $US2,500,000 is so far in excess of what might be regarded as needed for out-of-pocket expenses that the Panel has no difficulty in concluding that the registration and use of each of the disputed domain names was in bad faith, and accordingly the requirements of paragraph 4(a)(iii) of the Policy are satisfied.
The Panel finds that the Complainant has established its case with respect to each of the elements stated in paragraph 4(a) of the Policy.
Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Administrative Panel accordingly directs that the registrations of the domain names <j-phone-west.com>, <j-phonewest.com>, <jphone-west.com> and <jphonewest.com> should be transferred to the First Complainant.
Professor Haruo Goto
Richard G. Lyon
Dated: September 17, 2001