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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Mizuno Kabushiki Kaisha Corporation and Mizuno USA, Inc. v. Henry Chan

Case No. D2004-0255

 

1. The Parties

The Complainants are Mizuno Kabushiki Kaisha Corporation, of Osaka, Japan and Mizuno USA, Inc., of Norcross, Georgia, United States of America (collectively referred to as the “Complainant”), represented by Troutman Sanders, LLP of Atlanta, Georgia, United States of America.

The Respondent is Henry Chan, of Nassau, Bahamas (the “Respondent”).

 

2. The Domain Name and Registrar

The domain name at issue is <mizunosports.com> (the “Domain Name”), created on December 31, 2002, with iHoldings.com, Inc. d/b/a DotRegistrar.com (the “Registrar” or “DotRegistrar”).

 

3. Procedural History

A Complaint dated April 2, 2004, was submitted by e-mail to the WIPO Arbitration and Mediation Center (the “Center”). The Center received the Complaint by e-mail on April 3, 2004 and by hard copy, on April 6, 2004. The submission was made in accordance with the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN), on August 26, 1999, (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

On April 6, 2004, the Center acknowledged receipt of the Complaint, and assigned case number WIPO Case No. D2004-0255.

On April 6, 2004, The Center notified the registrar of record, DotRegistrar, that Complainant had filed a complaint against Complainant, and that it would concern the domain name <mizunosports.com>. A request was made to the Registrar to indicate receipt of the Complaint, to confirm that the Domain Name was registered with Registrar and that Respondent was the current registrant. The Center requested the Registrar to confirm that the Domain Name would remain locked during the pending administrative proceeding.

On April 12, 2004, Registrar responded by confirming that the Domain Name is indeed registered with the Registrar and that the name of registrant was Respondent. The Registrar confirmed that the Domain Name would remain locked throughout the proceeding.

On April 14, 2004, the Center sent to the Respondent a Notification of Complaint and Commencement of Administrative Proceeding, in WIPO Case No. D2004-0255, at the address that Complainant had indicated in the Complaint, in accordance with the records of the Whois database. The Center marked May 4, 2004, as the deadline for the submission of response to the WIPO Center and the Complainant.

The Notification of the Complaint included following paragraph:

6. Default. If your Response is not sent by the above date or we have not received any required payment from you by that date, you will be considered in default. We will still appoint an Administrative Panel to review the facts of the dispute and to decide the case. The Administrative Panel will not be required to consider a late-filed Response, but will have the discretion to decide whether to do so and, as provided for by Rules, Paragraph 14, may draw such inferences from your default as it considers appropriate. There are other consequences of a default, including no obligation on our part to consider any designations you have made concerning the appointment of the Administrative Panel or to observe any guidelines you have provided concerning case-related communications.”

No response was filed by the Respondent. On May 18, 2004, the Center issued a Notification of Respondent Default by e-mail.

After having received the undersigned’s Statement of Acceptance and Declaration of Impartiality and Independence, the Center appointed Luis C. Schmidt as the Sole Panelist. Thus, the Administrative Panel finds the appointment properly made due to the qualifications of Panelist and his independence to the Parties.

Sharing the assessment of the Center, the Panel independently finds that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules, and that payment of the fees was made on time. The Panel finds that the Center has duly notified the Complaint to the Respondent, pursuant to Rules, paragraph 2(a), and that the Notification of Respondent Default was also properly notified.

There were no extensions granted or orders issued.

The registration agreement for the domain name at issue is in English. By undertaking that there are no special circumstances to determine otherwise, as provided in Rule paragraph 11, the language of this proceeding is English.

 

4. Factual Background

After Complainant’s assertions, supported by the documents annexed to the Complaint, all of them undisputed by Respondent – as having defaulted to the Complaint – and after proper verification conducted at the database of the United States Patent and Trademark Office by the Panel itself, based on the discretional powers conferred upon the latter, in accordance with paragraph 10(a) of the Rules, applicable to the present matter, and supported by precedents such as D2000-0076 (InfoSpace.com, Inc. v. Hari Prakash), the Panel finds that the Complainant owns, among others, the following trademarks (the “Marks”), registered on the Principal Register of the United States Patent and Trademark Office:

Registration Number

Date of Filing and Grant

Mark

Class

1755313

09/10/1990-02/03/1993

MIZUNO, THE WORLD OF SPORTS and design

18, 25, and 28

2163515

12/30/1996-09/06/1998

MIZUNO and design.

1, 2, 3, 22 and 41

2294808

12/30/97-23/11/1999

MIZUNO PRO and design.

22, 23, 38 and 50

2388213

12/30/97-19/08/2000

MIZUNO PRO and design.

28

2502972

12/15/99-10/30/2001

MIZUNO PLUS and design

25

Applications for the three service marks and variations were filed on the basis of actual use, under section 1(a) of the United States Lanham Act (USC 15, Chapter 22, Subchapter 1, and Section 1051), excepting registrations 2294808, 2388213 and 2502972, which were originally filed under section 1(b) and then changed to section 1(a). The date of first use reported to that effect was December 18, 1988, for registration number 1755313; January 1, 1994, for registration number 2433197; February 1, 1998, for registration number 2294808; September 19, 2004, for registration number 2388213; and October 30, 2001, for registration number 2502972.

In addition to the five trademark registrations that are referred to above, on November 26, 1996, Complainant sought and obtained registration for the domain name <mizuno.com>.

Complainant, Mizuno Kabushiki Kaisha Corporation, is a company founded in Japan doing business in the field of manufacture and sale of sporting goods. Products are made using the marks MIZUNO, THE WORLD OF SPORTS and design; MIZUNO and design; MIZUNO PRO and design; and MIZUNO PLUS and design. The place of business of Complainant in the United States of America is Norcross, Georgia, United States of America.

From consulting the website of Complainant, under <mizuno.com>, it can be perceived that a business is conducted there, dedicated to the making and distribution of sporting goods and where the trademark MIZUNO and design is displayed. While browsing through the homepage, as well as some of the options, such as “About Mizuno,” “Corporate Philosophy” or “Mizuno History,” information can be obtained about the company, the products that it sells to the public, and the international markets that it covers. All that can be read on the website coincides with what Complainant has stated in the Complaint. On the other hand, it can be seen from the Whois database that the registration for <mizuno.com> was created on November 26, 1996, Mizuno USA Corporation being the registrant, and Cable & Wireless IDC listed as the administrative, billing and technical contact.

The Domain Name was registered on December 31, 2002, in conformance with the documentation that Complainant has submitted and the searches that the Panel has discretionarily conducted, at the Whois database of Network Solutions, Inc. In conformance with the search that Complainant made prior to the filing of the Complaint, Respondent registered the Domain Name, which continues to hold ever since.

It is clear from the evidence submitted that Respondent applied for the registration of the Domain Name approximately fourteen years after Complainant had filed the first service mark application and nearly eight years after Complainant had obtained the <mizuno.com> registration.

There is one site that can be accessed under the domain name <mizunosports.com> that Respondent appears to have constructed and has operated. The website displays certain links to pages of third parties, apparently related to the selling of Complainant’s products. Complainant has submitted as evidence a printout with information obtained from Respondent’s website, made on March 31, 2004. In accordance with the printout, the website displays a search tool, as well as information presented in a certain format or listing. The tool can take users to directories and from there to links. The listing comprises five titles that are connected to an equal number of sites: “Buy and Sell Mizuno On eBay” to <pages.ebay.com>; “Mizuno Products-Lowest Prices at DealTime!” to <dealtime.com>; “Baseballs At BaseballEquipment.com” to <store.baseballequip.com>; “baseballs and Softballs at BaseballEquipment.com” to < store.baseballequip.com >; and “Mizuno:Compare Prices” to <bizrate.com>. Said titles have an apparent informative function, as pop-up or pop-under advertisements. The Panel has verified the printout that Complainant filed, and has taken note that the Domain Name gives access to the website referred to in the Complaint. A change has occurred in the listings though as the new titles and links are: “Mizuno: Compare Prices” to <bizrate.com>; “Mizuno Products-Lowest Prices at DealTime!” to <dealtime.com>; “Mizuno-Compare Prices at Nextaq.com” for <textaq.com>; “Buy and Sell Mizuno On eBay” to <pages.ebay.com>; and “RunningShoes.com” for <runningshoes.com>. From the foregoing, the Panel would conclude that Respondent has used the Domain Name in connection with a website indicating links to sites of a number of commercial brokers, and that the content has been recycled on at least one occasion.

On March 18, 2004, Complainant sent a cease and desist letter to the Respondent, requesting the latter to voluntarily transfer the ownership of the Domain Name to Complainant. According to the statements by Complainant, undisputed for the purposes of the present proceeding, Respondent did not reply to the letter.

 

5. Parties’ Contentions

5.1 Complainant

The Complainant asserts that:

• The Domain Name at issue is substantially identical to the trademark in which the Complainant has rights; the Respondent has no rights or legitimate interests in respect of the Domain Name; and that it was registered and is being used in bad faith.

• The trademarks MIZUNO, THE WORLD OF SPORTS and design; MIZUNO and design; MIZUNO PRO and design; and MIZUNO PLUS and design, identify sporting goods. The Complainant has registered its intellectual property rights in the United States of America, with complete success. There is thus no other individual or corporation than the Complainant holding trademark rights in the MIZUNO marks in the United States, in connection with sporting goods, and certainly the Respondent holds no rights, whatsoever, in said marks.

• The MIZUNO mark is distinctive and possesses secondary meaning. In addition to the inherent capability of MIZUNO to perform as a distinctive symbol per se, Complainant has built up valuable goodwill, through extensive and continuous use and advertising, which is symbolized by the MIZUNO mark, that has reached the status of wellknown as associated with Complainant.

• On December 31, 2002, Respondent registered the Domain Name. The registration is subsequent to the date when Complainant started using the same as a trademark in commerce in the United States of America and as a domain name.

• Complainant does not know the citizenship and address of Respondent, other than that the postal address submitted to the Registrar is a Nassau address, in the Bahamas, and that previously, Respondent had indicated to the Registrar that he was a citizen of Hong Kong.

• Respondent is the named registrant for over 1,100 domain names, and that he consistently has misappropriated the trademarks of numerous other companies. Frequently, Respondent has sought for registrations which make slight variations or “typosquatting” of the concerned trademarks.

• Complainant sent a demand letter to Respondent without response.

• The Domain Name is confusingly similar to the MIZUNO marks, inasmuch as they contain the exact same words and letters, the only distinction being the addition of the descriptive word “sports” in the second level domain name, and of the gTLD “. com”. The difference is minimal as a result.

• When an Internet user types in the Domain Name, it is diverted to the website of the Respondent, which provides links to the sites of third parties that offer MIZUNO sporting goods and equipment. The Respondent’s site also generates pop-up advertisements, pop-under advertisements, and exit pop-up advertisements. DomainSponsor.com apparently hosts Respondent’s site, with his approval or authorization. Upon information and belief, pursuant to an agreement between Respondent and DomainSponsor.com, the latter pays Respondent 50% of all revenues generated from sales of MIZUNO products resulting from following the links on Respondent’s pop-under advertisements, pop-up advertisements, and exit pop-up advertisements. That can be consulted at the FAQ section of DomainSponsor.com’s website.

• Respondent has no rights or legitimate interests in the Domain Name, as the Marks are solely associated with Complainant. Respondent is not known or identified by that name and holds no rights. Respondent has used the site to attract users or divert customers. Respondent is not making a legitimate non-commercial use.

• Respondent has registered and is using the Domain Name in bad faith as it has not conducted any legitimate commercial or non-commercial business; has made the registration to prevent Complainant from reflecting the Mark in the Domain Name; has knowledge of the rights of Complainant; is diverting consumers away from Complainant’s website; has intentionally attempted to attract, for commercial gain, Internet users to his website; has been involved in other UDRPs; and the use of the Domain Name would amount to trademark infringement, dilution and other actions in the United States of America.

• The Complainant requests the Administrative Panel to issue a decision that the contested Domain Name be transferred to the Complainant.

5.2 Respondent

The Respondent has not submitted a response, and therefore is in default. Since the Notification of Respondent Default, it has not made any submissions whatsoever.

 

6. Discussion and Findings

6.1 Effects of Respondent Default

Respondent was required to give an answer to the Complaint as filed by the Complainant. According with Rules, paragraph, 5(b)(i) “(t) he response shall (...) (r) espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name (...).”

Under the Rules, and, in particular, paragraph 14(a), the Panel “shall proceed to a decision on the complaint,” and under paragraph 14(b), the Panel “shall draw such inferences therefrom as it considers appropriate.” However, under the Policy, the complainant must still prove that each of these three elements are present. Policy, paragraph 4(a) in fine.

6.2 Independent Connection with the Website of Respondent

As concluded in WIPO Case No. D2000-0076, supra, the Panel considers that under paragraph 10(a) of the Rules, the Panel has the power to independently search over the Internet, in order to obtain as much information as required to render a decision.

The Panel visited the “www.mizunosports.com” website of the Respondent. The address routed the user to an active website displaying certain titles and links.

6.3 Identity or Confusing Similarity of Domain Name with a Mark in which Complainant has Rights.

The Panel has carefully considered the allegation that the Complainant has made that the Domain Name is virtually identical or confusingly similar to the registered trademarks MIZUNO. Likewise, the Panel reviewed the allegation and evidence filed in support that Complainant has rights in the Marks. On the other hand, the Panel could not analyze any arguments from Respondent contesting the foregoing, as it did not respond to the Complaint.

The Panel has made a comparison of the Domain Name at issue vis-а-vis the Complainant’s Marks, and finds that the second level domain name “mizunosports” is identical to word the Mizuno, except for the addition of the word “sports”; that, in addition to the reference “. com,” a generic top-level domain intended for commercial organizations. From the foregoing, it can be inferred that Respondent has employed an extended - but similar - version of the Marks, taking unlawful advantage of the goodwill of same. The Marks are strong due to their inherit capability to distinguish sports products. The copying or imitation of a strong mark leads to a presumption of confusion. This is a universal principle of trademark law resulting from international treaties and doctrines. Panelists have analyzed similar cases finding confusion. See VeriSign, Inc. v. Onlinemalls, WIPO Case No. D2000-1446; or Banca Popolare Friuladria S.p.A. v. Giovanni Zago, WIPO Case No. D2000-0793.

In addition, the Panel would agree that in order to register the Domain Name, Respondent has considered a predictable alternative that users would employ to find Complainant by adding a word, like ‘sports,’ which is related to the Marks, inasmuch as it is connotative of the products for which the Marks have been applied. That could not be anything else but a trick that Respondent has made use of to circumvent the existing domain names that Complainant has registered. Some cases cited by Complainant with similar fact situations are Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397 (domain name <nike-shoes.com> confusingly similar to complainant’s NIKE mark); Nike, Inc. v. Paul Verschoor, WIPO Case No. D2000-1707 (transferring domain name <nike-soccer.com> to the complainant; as the term ‘soccer’ is only descriptive).

Concerning the timing issue, it was Complainant who adopted the name “mizuno,” by securing protection therefor under trademark law, as well as the domain name system. Respondent showed up long after Complainant had registered the domain name <mizuno.com>, as well as the Marks, in the Patent and Trademark Office of the United States of America. From all the foregoing, it would be possible to conclude that the Domain Name is confusingly similar to the Marks and to the domain name pertaining to Complainant, and that Respondent made the registration of the Domain Name only after Complainant had secured protection for that name. Accordingly, the Panel finds that Complainant has met the burden of confusing similarity as required by the Policy.

6.4 Rights or Legitimate Interests in the Domain Name

The Panel has carefully considered the allegation of the Complainant as to the lack of rights or legitimate interests of the Respondent in respect of the Domain Name. In particular, the Panel has noted the argument that the Respondent lacks any legitimate trademark or other rights in the Domain Name and that it is not known or identified by the name “Mizuno sports,” nor is it connected or affiliated with Complainant. The Panel would again state that Respondent did not bring any defensive statement or arguments against the Complaint.

In the present default proceeding there is no contention on record, made by the Respondent, that the Panel could rely on, to conclude that it might have trademark or other intellectual property rights, or in general, legitimate interests in the Domain Name. Nothing can be evidenced reasonably leading to infer to the foregoing fact, pursuant to the Policy, paragraph 4(c). Complainant has argued that there is no legitimate interest considering that, far from having rights over the Domain Name, Respondent has not made a “legitimate noncommercial or fair use of the domain name.” On the contrary, “Respondent is using the <mizunosports.com> domain name to divert users who mistype Complainant’s domain name to Respondent’s website. Upon reaching Respondent’s website, Internet users are presented with pop-up advertisements, information about, and hyperlinks to e-commerce vendors selling Mizuno products.” The Panel is comforted by such an allegation as already discussed in connection with the confusion issue.

For the Panel, Respondent has not done anything that could have triggered a legitimate interest in the Domain Name as required by paragraph 4(c). As has been discussed above, there is nothing on record which gives the slightest clue that the Domain Name is in use or that there have been preparations to use, in connection with a good faith business or any activity in general. On the contrary, from the evidence provided by the Complainant, and from the checks that the Panel has made of Respondent’s website, the Domain Name has only been used for the purpose of linking visitors to the locations of third parties unrelated to Complainant who sell its products.

The situation above could only be interpreted as a disrupting or misleading practice, resulting from the intent that Respondent has made “to attract Internet users to other directly competitive sites,” and that cannot be “a legitimate use of a domain name.” Cases such as Ticketmaster Corporation v. Woofer Smith, WIPO Case No. D2003-0346; AltaVista Company v. O.F.E.Z. et al., WIPO Case No. D2000-1160; Expedia, Inc. v. Dotsan, WIPO Case No. D2001-1220; CSA International (a.k.a. Canadian Standards Association) v. John O. Shannon and Care Tech Industries, Inc., WIPO Case No. D2000-0071; America Online, Inc. v. Tencent Communications Corporation, NAF Case No. 93668; or Ross-Simons, Inc. v. Henry Chan, WIPO Case No. D2003-0970, would support the foregoing assertion. Respondent has apparently used the Domain Name in a commercial form. Complainant has filed evidence which leads to the inference or presumption that Respondent has acted for commercial gain in order to misleadingly divert consumers or to tarnish a mark. Commercial speculation rests on a presumption that Respondent has actually been receiving an income from sales that vendors have made from the use of the <domainsponsor.com> system. This Panel is inclined to believe that said presumption is strong enough to support the argument that by using the Domain Name, Respondent has been engaged in a commercial activity. In any event, Respondent having registered a domain name so close to the Marks, for use in connection with a website that only sends the users to locations of competing third parties or of vendors of Complainant’s products “could hardly be called ‘legitimate noncommercial or fair use’ of the Domain Name.” See CSA International International (a.k.a. Canadian Standards Association) v. John O. Shannon and Care Tech Industries, Inc., supra.

Respondent is not related or connected to the Complainant. There is also no possible “connection” amongst the Domain Name, the site of Respondent or the linked sites. Activities such as connecting, directing or linking sites that are unrelated, in a manner such as Respondent has done, cannot be regarded as legitimate use. Such practice could instead represent an infringement of trademark rights in a number of national jurisdictions. The foregoing is supported by cases such as Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199; Royal Bank of Canada v. Personal, WIPO Case No. D2001-0761; and Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413.

This Panel gives particular weight to the fact that Respondent has defaulted. It can be inferred that by having defaulted Respondent showed nothing but an absolute lack of interest in the Domain Name. The same could be said as far as the cease and desist letter is concerned. And in the absence of a response, it is truly difficult to conclude about the legitimate interests of the Respondent, on at least some sort of plan or intention to start using the Domain Name, especially when instead of that, Respondent used the site to forward the Domain Name to other latitudes. The Panel understands the difficulty that Complainant would face to show what is actually in the mind of Respondent, apart from what has been determined from the likeness between Domain Name and trademark, and from the contents of the website itself. Proving a negative is not a particularly easy task. For that reason, the Complainant only needs to make out a prima facie case, which it has clearly done in this proceeding.

Therefore, the Panel finds that the Respondent has no rights to or legitimate interests in the Domain Name at issue.

6.5 Registration and Use in Bad Faith

6.5.1. Preliminary Remarks

There are a number of general considerations, basically of a factual nature, requiring analysis before actually addressing the particular factors of paragraphs 4(a)(iii) and 4(b) of the Policy. They are as follows:

A presumption that Respondent was aware of the domain names and Marks pertaining to Complainant. Respondent most likely knew that Complainant was the holder of the domain name <mizunosports.com> as well as the Marks. It would have been difficult to believe that Respondent would have registered the Domain Name without such knowledge.

Respondent has used the Domain Name to send links to sites that are unrelated to Complainant, although they may sell the products of Complainant. It cannot be by mere chance that Respondent has registered and uses the Domain Name, related to the Marks of the Complainant, a manufacturer of sporting goods, to link to the sites of certain vendors. However, the strongest inference of knowledge arises from the fact that Respondent has been involved in at least seventeen other UDRP proceedings, as Complainant has noted. The previous proceedings, in which the Panels ruled for the transfer of the domain names under dispute, have become, for this Panel, a definitive and undisputable conclusion that Respondent was totally aware of Complainant’s rights.

Turning to the provisions and standards applicable in connection with the current administrative proceeding, there are perhaps three that deserve special attention: paragraph 4(a)(iii), addresses bad faith as a factor in the dispute resolution proceedings regarding the registration of domain names. The general requirement is that, in order for a registered domain name to be transferred to someone showing trademark rights, the domain name would have to be “registered” and “used” in bad faith. Paragraph 4(b) of the Policy refers to certain factors which, if found to be present, shall be conclusive that the Domain Name has been registered and used in bad faith.

Paragraph 4(b)(i) concerns acquisition of the domain name for sale. Paragraph 4(b)(ii) concerns acquisition for the purpose of blocking the Complainant, provided that the Respondent has engaged in a pattern of such conduct. Paragraph 4(b)(iii) involves disruption of the business of a competitor. Paragraph 4(b)(iv) involves use of the domain name for the purpose of attracting visitors to the online location of Respondent or a third party, in the mistaken belief that they are visiting a location associated with the Complainant. In the present case, paragraph 4(b)(i) would not be applicable. However, provisions 4(b)(iii), 4(b)(iv) and perhaps 4(b)(ii), would deserve a more in-depth review, not only as Complainant has invoked them in the Complaint, but also by discretion of this Panel.

Notwithstanding the above, paragraph (b) serves the purpose to indicate, on a non-exhaustive basis, when there is “registration” and “use” in bad faith of domain names. Paragraph 4(b) would thus allow other possible forms of demonstrating “registration” and “use” – by employing an inclusive, copulative solution- or “registration” or “use” –as an alternate, disjunctive solution - of domain names in bad faith. The Panel also notes that bad faith can be found outside the examples set out in paragraph 4(b) of the Policy.

6.5.2 Bad Faith Factors in Paragraph 4(b) of the Policy

Complainant has stated in the Complaint that Respondent violates paragraph 4(b)(iii) of the Policy. By having registered the Domain Name, “Respondent is diverting consumers away from Complainant’s website and making it difficult for Complainant’s customers and the general public to locate future websites established by Complainant, thereby disrupting Complainant’s business.” For the Panel such assertions are partially true, given that from the evidence that Complainant has submitted, enriched by the inquiries the Panel has made, it is only possible to conclude that Respondent has misdirected consumers or potential consumers. However, paragraph 4(b)(iii) is aimed at preventing registrants of domain names from disrupting the business of competitors. The Panel agrees that Respondent has intended the disruption of Complainant’s business by having registered the Domain Name. But, the Panel also considers that Respondent is not a competitor of Complainant, the foregoing making it hard to conclude that Complainant meets the provision under analysis.

Complainant has further argued that Respondent’s actions fall squarely under paragraph 4(b)(iv) of the Policy. In keeping with this, it has stated that Respondent registered the Domain Name having knowledge of the source, and used the same to redirect traffic to unrelated websites. It is Complainant’s view that Respondent “has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with Complainant’s MIZUNO Marks and Complainant’s “www.mizuno.com” website as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site appearing at “www.mizunosports.com,” and of products advertised on those web sites.”

For this Panel, it can be shown from records that the Respondent has registered and used the Domain Name with the sole purpose of attracting Internet users and diverting them to other locations, in particular, sites of third parties selling the products of Complainant. From the standpoint of the Panel, it is clear that Respondent knows what he is doing and that he is not precisely acting in good faith. Actual and potential customers of Complainant could be attracted to a different location, driven by the confusion created from the use of pop-up or pop-under advertisement, as well as the employment of hyperlinks and information about the sale of Complainant’s products, and when in that erroneous location, believe that Respondent has been granted a sponsorship, or that he has become affiliated with Complainant, or that his activities have been endorsed by the latter. In Harrods Limited v. Pete Lormer, WIPO Case No. D2003-0504, the Panel found that it would constitute, “not only a legitimate use of the disputed domain name, but also bad faith use.” Holding otherwise “would be to undermine Complainant’s brand by misleadingly identifying its brand with the respondent.” The bad faith of Respondent “arises, too from a deliberate intention to create a false sense of origin or sponsorship for the Respondent’s products, goods and services.” That would necessarily result in what that Panel called “initial interest confusion” and was sustained in a number of decisions including WIPO Case Nos. D2000-1319 (Sociйtй des Bains de Mer et du Cercle des Etrangers а Monaco v. Javier Llorens); D2001-0380 (Xerox Corp. v. Stonybrook Investments, Ltd); D2001-1163 (Harrods Ltd. v. Dijitaldjs); D2001-0544 (Harrods Limited v. AB Kohler & Co.); D2001-1162 (Harrods Limited v. Vineet Singh); D2000-1698 (Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic); D2002-0775 (Wachovia Corporation v. Peter Carrington); D2000-1369 (e-Duction, Inc. v. John Zuccarini, d/b/a The Cupcake Party & Cupcake Movies); D2002-1125 (The Nasdaq Stock Market, Inc. v. Shawn Cain d/b/a Star Inc.); and D2000-1594 (Pig Improvement Company, Inc. v. Platinum Net, Inc.).

The question is whether the conduct that Respondent carried out has been performed for commercial profit or financial gain. The Panel in Harrods Limited, supra, did not discuss that issue, nor did the Panel in Dow Jones & Company, Inc. v. Down Jones Update, WIPO Case No. D2000-0495. On the other hand, other Panels have addressed those points. In Microsoft Corporation v. Superkay Worldwide, Inc., WIPO Case No. D2004-0071, it was found that when a domain name has been routed to the site of a third party, it is only theoretically possible that the Respondent may obtain a commercial benefit. Something similar was said in Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021. The Panel in Club de Regatas Vasco da Gama v. Building Centre International, WIPO Case No. D2000-0739, found that the respondent was profiting “by offering an e-mail service for addresses to be formed with the domain name of the user’s favorite team, against the annual fee of U$ (sic) 14,95.” The respondent in the Vasco da Gama case was apparently routing the domain name to a site managed by itself. For similar grounds, see VeriSign, Inc. v. Onlinemalls, WIPO Case No. D2000-1446.

In the current proceeding, the Complainant has raised important arguments and has filed significant evidence, in order to show that Respondent is using the Domain Name for the purpose of making a profit. In principle, the fact that Respondent has used the website for a number of links cannot be necessarily conclusive of the foregoing. However, the fact that Respondent might be doing business with “DomainSponsor.com” should definitively shift that first approach by at least inferring that Respondent is pursuing a commercial gain. Under that rationale, it would, in the end, be possible to determine the transgression to paragraph 4(b)(iv) of the Policy.

Lastly, concerning the rule in paragraph 4(b)(i) of the Policy, the Panel finds fair grounds to sustain that Respondent has engaged in a pattern of bad faith conduct. That can be deduced from the precedents available at the WIPO Index of Decisions, relating to proceedings in which Respondent has been involved. However, article 4(b)(ii) would not be violated in its entirety, if it were taken into account that there is no strong evidence to support the idea that Respondent has prevented Complainant from reflecting its marks in a domain name. As a matter of fact, Complainant actually holds one domain name registration for the mark MIZUNO.

6.5.3. Bad Faith Considerations Outside Paragraph 4(b) of the Policy

As mentioned earlier, the Panel is not limited to the application of the four circumstances of paragraph 4(b) of the Policy, to determine whether the Domain Name was registered and used in bad faith. Paragraph 4(b) of the Policy sets out a non-exclusive list of factors evidencing bad faith, but allows for the development of further factors. The majority of Panels have sustained that principle. One landmark case for the foregoing is Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Other Panels have found the Policy to be so broad in scope as to authorize the analysis of bad faith use and registration wherever a respondent “incurs in relevant portions of the Policy description of bad faith circumstances, such as the disruption of business, the willful creation of a likelihood of confusion, and the intentional attempt to attract Internet users to the website of…Complainant’s main competitor.” Tarjeta Naranja S.A. v. MrDominio.com and Alejandro San Jorge, WIPO Case No. D2001-0295; Banco Bilbao Vizcaya Argentaria, S.A. v. N/A, WIPO Case No. D2003-0996, or UPIB, Inc. v. Domains Asia Ventures, WIPO Case No. D2004-0020. This Panel understands the Policy’s authorization as a possibility of analyzing the paragraphs of 4(b) of the Policy, by concentrating on “relevant portions” or parts of the provisions.

The following lines are intended to examine possible causes, outside that scope, that could be invoked in addition to what was discussed in the preceding section of this decision. The foregoing, in the understanding that paragraph 3(a)(iii) of the Policy requires the showing of both registration and use of the Domain Name in bad faith.

6.5.3.1 Registration in Bad Faith

Following the seventeen precedents that Complainant has cited, indicating Respondent as defendant, Respondent could not possibly claim innocence to the existence of Complainant and its intellectual property. As in FleetBoston Financial Corporation v. Albert Jackson, WIPO Case No. D2003-0915, Respondent in this case has been involved in a considerable number of UDRP proceedings. Accordingly, the present decision “absent evidence to the contrary by Respondent, tends to indicate a pattern by which the Respondent initially registers domain names comprising trademarks or variations of trademarks for which he has no rights, and then links those domain names to websites that directly compete with the owners of the trademarks or that tarnish the goodwill associated with the trademarks.” It is evident to this Panel that the foregoing applies in this case.

Following the rationale of the Panels in Sony Kabushiki Kaisha v. sony.net, WIPO Case No. D2000-1074, and Telstra Corporation Limited v. Peter Yellowlees, WIPO Case No. D2002-0638, there is no obvious possible justification for the selection that Respondent made of the Domain Name. The foregoing derives from the fact that Respondent could not have been unaware of the existence of the Marks and domain name of Complainant, as well as the activity of the latter. Likewise, said marks and domain name represent distinctive terms that Respondent would have hardly obtained or adopted, should he not have known about the existence of Complainant. Respondent may have had actual knowledge of the rights of Complainant.

Following the rationale of the Panels in Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199; UPIB, Inc. v. Domains Asia Ventures, WIPO Case No. D2004-0020, or FleetBoston Financial Corporation v. Albert Jackson, WIPO Case No. D2003-0915, there is no connection between the Marks, the Domain Name, the site of Respondent and the linked sites.

Following the rationale of the Panel in Harrods Limited v. Pete Lormer, WIPO Case No. D2003-0504, domain names that are chosen for the purpose of misleadingly identifying the brands of a trademark owner shall be regarded as a registration made in bad faith. Under the facts and evidence submitted in connection with the present case, it can be drawn that, by having registered the Domain Name for the purpose of inexplicably inviting users to attend other locations, Respondent did not act otherwise than in contradiction to the text and spirit of the Policy and in bad faith.

Following the rationale of the Panel in Telstra Corporation Limited v. Peter Yellowlees, supra, a domain name shall be registered in bad faith when the corresponding holder has no legitimate rights in the same and is likely to be aware of the trademark or other rights. As discussed earlier in connection with this matter, Respondent did not prove rights or interests of any sort. On the contrary, this Panel has found a number of convincing factors to support that. From the foregoing, the criterion of lack of interest can be applied mutates mutandis to the present issue, in order to determine that the Domain Name was registered in bad faith.

The circumstances above-described satisfy the Panel to conclude that, for the purposes of paragraph 4(a)(iii) of the Policy, the Domain Name was registered in bad faith.

6.5.3.2 Use in Bad Faith

Following the rationale of the Panel in Microsoft Corporation v. Superkay Worldwide, Inc., WIPO Case No. D2004-0071, and other references cited above, at the same time inspired by the Telstra Corporation Limited v. Nuclear Marshmallows decision, the registrant of a domain name could only use it for legitimate and good faith purposes if it was unaware of the existence of marks of third parties that eventually could enter into conflict. On the contrary, the legitimate factor would obviously be absent in such cases where the registrant knew or should have known about the rights of the third party. In the instant matter, Respondent did not act in good faith as it clearly knew, or at least should have known, about the rights of Complainant over the MIZUNO marks, but also of the domain name registrations. It cannot be regarded as a casual circumstance that Respondent registered the Domain Name, long after Complainant had registered a domain name and more than five trademarks for virtually the same thing. In addition, it cannot be regarded a coincidence that Respondent used the Domain Name intending to use the website to project users to places that would offer similar services to those of the Complainant.

Following the rationale of the Panels in Harrods Limited v. Pete Lormer, supra; and Jorge Antonio Labanda Blanco v. Xavier Maсй, WIPO Case No. D2002-1111, bad faith use of a domain name “is an unavoidable inference, indeed consequence, of the act of registration itself.” In this regard, the Harrods decision has stated “the Respondent has exercised bad faith by the very act of not being reasonably able to use that name without having the effect of violating the Complainant’s name and trademarks.” That is clearly authority applicable in the present case, where the Domain Name was registered and further used in bad faith.

Following the rationale of the Panels in Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199; UPIB, Inc. v. Domains Asia Ventures, WIPO Case No. D2004-0020, or FleetBoston Financial Corporation v. Albert Jackson, WIPO Case No. D2003-0915, there is no connection between the Marks, the Domain Name, the site of Respondent and the linked sites. Under Parfums Christian Dior v. Javier Garcнa Quintas and Christiandior.net, WIPO Case No. D2000-0226, or Veuve Clicquot Ponsardin, Maison Fondйe en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163, “the domain name is so obviously connected with Complainant’s trademarks that its very use by someone with connection suggests ‘opportunistic bad faith’.” Respondent has used the Domain Name as a link to the sites of third parties that render similar, if not competitive services to those of Complainant, and that could only be viewed as an intention to attract visitors to unrelated websites. For this Panel, it is irrelevant if that practice is made for commercial gain or not. Bad faith is present regardless of the commercial aspect. In Sears, Roebuck and Co. v. Hanna Law Office, WIPO Case No. D2000-0669, the Panel analyzed that same issue, arriving at the conclusion that in a situation such as the foregoing, the titleholder of the trademarks can still suffer a commercial detriment for having lost business opportunities. This Panel subscribes to the Sears Roebuck rationale.

Following again the rationale of the Panel in Telstra Corporation Limited v. Peter Yellowlees, supra, a domain name shall be used in bad faith when the corresponding holder has no legitimate rights in the same, and is likely to be aware of the trademark or other rights. As discussed earlier in connection with this matter, Respondent did not prove rights or interests of any sort. From the foregoing, the criterion of lack of interest can be applied mutates mutandis to the present issue, in order to determine that the Domain Name was registered in bad faith.

The circumstances above-described satisfy the Panel to conclude that, for the purposes of paragraph 4(a)(iii) of the Policy, the Domain Name was used in bad faith.

 

7. Decision

The Panel has found that the domain name <mizunosports.com> is identical or confusingly similar to the trademarks and domain name of the Complainant, and that the Respondent has no rights or legitimate interests in said domain name. The Panel has further found that the Domain Name has been registered in bad faith, and that it has been and is being used in bad faith.

Therefore, pursuant to paragraphs 4(a)(i), (ii) and (iii) of the Policy and 15 of the Rules, the Administrative Panel decides to request that the domain name <mizunosports.com> be transferred to the Complainant.

 


 

Luis C. Schmidt
Sole Panelist

Dated: June 9, 2004

 

Источник информации: https://internet-law.ru/intlaw/udrp/2004/d2004-0255.html

 

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