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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Kabushiki Kaisha Dan d/b/a DAN Co., Ltd. v. Domaincar

Case No. D2006-0254

 

1. The Parties

The Complainant is Kabushiki Kaisha Dan d/b/a DAN Co., Ltd., Osaka, Japan, represented by ARCO Patent Office, Kobe, Japan.

The Respondent is Domaincar, Panama, Panama.

 

2. The Domain Name and Registrar

The disputed domain name <tabio.com> is registered with DSTR Acquisition VII, LLC d/b/a Dotregistrar.com.

 

3. Procedural History

The Complaint was filed by Arco Patent Office, attorneys for the Complainant, with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2006. On March 1, 2006, the Center transmitted by email to DSTR Acquisition VII, LLC d/b/a Dotregistrar.com a request for registrar verification in connection with the domain name at issue. On March 1, 2006, DSTR Acquisition VII, LLC d/b/a Dotregistrar.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. On March 8, 2006, the Center completed its Formal Compliance Review and verified that the Complaint had satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 8, 2006, by transmitting copies of (1) the Notification of Complaint and Commencement of Administrative Proceeding and (2) the Complaint, to the Respondent by e-mail, fax and courier. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 29, 2006.

The Center appointed C. K. Kwong as the sole panelist in this matter on April 3, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

The Panel has not received any further requests or submissions from the Parties in this case.

 

4. Factual Background

The Complainant, Kabushiki Kaisha Dan d/b/a DAN Co., Ltd. is, and was at the material times, the registered proprietor of the following trade marks:

(a) Japanese trade mark registration no. 4575094 for “TABIO On The Ground” which was filed on April 24, 2001, and registered on June 7, 2002, covering, inter alia, goods including “socks, leggings, tabi (Japanese style socks)” in Class 25;

(b) United Kingdom trademark registration no. 2269523 for the mark “TABIO On The Ground” as of February 22, 2002, in respect of certain goods and services under Classes 25 and 35.

Dansox UK Co., Ltd. (hereinafter referred to as “Dansox”) was incorporated on July 25, 2001, in the United Kingdom under Company Registration no. 4258922, which the Complainant claimed was its fully owned subsidiary.

Dansox registered the domain name <tabio.co.uk> on November 9, 2001. According to the Complainant, it started operating the website as of February 3, 2006.

The filing and registration of the mark “TABIO On The Ground” in Japan and the United Kingdom both occurred before the registration of the domain name <tabio.com>.

Other than the particulars shown on the print-out of the database search conducted by the Complainant on February 8, 2006, of the Internet and Dot Registrar Databases (as provided in Annex 2 and Annex 3 of the Complaint) there is no information concerning the activities of the Respondent and its business.

 

5. Parties’ Contentions

A. Complainant

The Complainant has made the following contentions:

The Complainant has rights in the registered trademark “TABIO On The Ground” and the unregistered mark “Tabio” at common law. Furthermore, the domain name <tabio.com> is identical to the common law mark “Tabio”, or confusingly similar to the registered mark “TABIO On The Ground”.

According to the Complainant, its registered mark consists of two elements, namely (1) “TABIO” and (2) “On The Ground” in two lines with the word “TABIO” being prominently shown in large and bold fonts in upper casing while the words “on the ground” are shown in a small script font in lower casing. Furthermore, the word “Tabio” is not a dictionary word but an invented word which was derived from the Japanese word “Tabi” having the meaning of “travel” and “Japanese style socks, namely split-toe socks”.

The words “on the ground” when used on socks and other hosiery, implied that consumers might step on the ground in their Tabio socks and therefore these two words referred to the use and/or quality of the goods with a suggestive or non-trademark meaning. In the circumstances, the word “Tabio” is the distinctive feature in the registered mark.

The domain name <tabio.com> is identical with the common law mark “TABIO” or the distinctive feature in the registered mark “TABIO On The Ground” so that it is either identical and/or confusingly similar with the Complainant’s unregistered and/or registered mark.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the domain name as it does not correspond to the business name of the Respondent. The Respondent is not directly offering goods or services through the website at “www.tabio.com”. Instead, the Respondent is using the disputed domain name to divert internet users to the website featuring links to various entities providing goods that compete with the Complainant, which is not bona fide offering of goods pursuant to the Policy, paragraph 4(c)(i). The Complainant also confirms that it has not granted any licence or other rights for the Respondent to use the disputed domain name.

The domain name was registered by the Respondent in bad faith because:

The disputed domain name was transferred to the Respondent from Unasi Inc., which was the original registrant of the disputed name (Annex 26 of the Complaint) and which has a pattern of conduct of registering domain names with third parties’ trademarks. There are a number of decisions under the UDRP in which Unasi Inc. was the named respondent, and in which the panels ordered the transfer of the disputed domain names to the complainants. The Complainant notes that the e-mail and postal address, telephone number and fax number of Domaincar and Unasi Inc. are identical (Annexes 3, 24 and 25). Further, the overall layout of the website operated by Unasi Inc. is also practically identical to that of the website of the Respondent.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

The Panel is satisfied that the Center has discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint and that the failure of the Respondent to furnish a reply is not due to any omission or inadequate communications by the Center.

In rendering its decision, the Panel must adjudicate the dispute in accordance with paragraph 15(a) of the Rules which provides that, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 14(b) of the Rules further provides that, “If a Party, in the absence of exceptional circumstances, does not comply with any provisions of, or requirement under these Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”.  Paragraph 5(e) of the Rules further provides that, “If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”.

The failure of the Respondent to respond does not automatically result in a favourable decision to the Complainant, who is specifically required under paragraph 4(a) of the Policy to establish each of the three elements as provided therein. See The Vanguard Group, Inc. v. Lorna King, WIPO Case No. D2002-1064 (<vanguar.com>); and Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465 (<berlitzsucks.com>).

A. Identical or Confusingly Similar

On the evidence available, the Panel has no hesitation in finding that the Complainant has rights in the trademark “TABIO On The Ground”. As the domain name is not identical to the registered mark, the Panel needs to further consider whether the disputed domain name <tabio.com> is confusingly similar to the Complainant’s registered mark “TABIO On The Ground”.

Although the registered trademark consists of the word (1) TABIO in bold upper casing and (2) the other words “on the ground” in less prominent and lower casing, the invented word “TABIO” is clearly the most distinctive feature which is the dominant part of the mark, while the descriptive words, “On The Ground”, are subordinate in nature. The addition of the generic top-level domain (gTLD) “com” is not relevant, since the use of a gTLD is required in the domain name system.

The Panel is satisfied that the disputed domain name <tabio.com> registered by the Respondent is confusingly similar to the trademark of the Complainant in accordance with paragraph 4(a)(i) of the Policy.

The Panel, having found that the first element of the Policy has been met based on the registered trademark, need not assess the Complainant’s rights to the term “Tabio” at common law.

B. Rights or Legitimate Interests

The Complainant needs to establish a prima facie case showing that the Respondent has no rights or legitimate interests in respect of the domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (<croatiaairlines.com>). Once having done that, the burden will shift to the Respondent to prove that it has rights or legitimate interests in the domain name.

In the present case, the Complainant has asserted prior registration and use of the registered trade mark “TABIO On The Ground” prior to the registration of the domain name <tabio.com> on December 3, 2002. Further, the Panel notes that the name of the Respondent does not correspond with the domain name. From the evidence available to the Panel, the Respondent does not appear to be commonly known as “tabio.com”. The prima facie case is further supported by the following facts :

(a) The Respondent has not come forward to prove that it has become known under the disputed domain name;

(b) There is no explanation why it was necessary for the Respondent to adopt the word Tabio in its domain name. According to the Complainant, the word “Tabio” is an invented word. The Panel investigated whether the word “Tabio” would be a generic or dictionary word by using online dictionaries, but was unable to find any match or entry for the word “Tabio”;

(c) The Complainant has not authorized the Respondent to use the domain name; and

(d) The website associated with the disputed domain name “www.tabio.com” includes links related to shoes and socks which are goods competing to the Complainant’s products, which in the Panel’s view is not a bona fide offering of goods or services by the Respondent.

The Panel is satisfied that the Respondent has no right or legitimate interest in the domain name.

C. Registered and Used in Bad Faith

It is alleged that the Respondent has registered and used the domain name in bad faith.

Paragraph 4(b) of the Policy provides for four situations which can demonstrate registration and use in bad faith on the part of the Respondent and specifically provides that the circumstances under which bad faith can be proved without limitation.  Put differently, the situations under paragraph 4(b) of the Policy are not exhaustive evidence of the way in which registration and use of a domain name in bad faith may be proved.

On the facts of this case, there is no sufficient evidence to prove that the Respondent or its predecessor has registered the disputed domain name primarily for the purpose of selling to the Complainant or its competitor for valuable consideration in excess of the Respondent’s out-of-pocket expenses for the purpose of paragraph 4(b)(i) of the Policy.

There is also no sufficient evidence to invoke the presumption under paragraph 4(b)(iii) of the Policy that the Respondent has registered the domain name primarily to disrupt the business of the Complainant.

The Complainant has, however, produced evidence to support its suggestion that the relationship between the Respondent and Unasi Inc., its predecessor in title of the domain name is so close that they are virtually the same entity. In this connection, it was demonstrated that the domain name was originally registered in the name of Unasi Inc. (Annex 26), and that the e-mail and postal address, telephone number and facsimile number of both entities are identical. It was further demonstrated that the general layout of the websites operated by the Respondent and Unasi Inc. are practically identical. Unasi Inc. has been named as the Respondent in a number of cases namely, viz: Gewista-Werbegesellschaft mbH v. Unasi Inc., WIPO Case No. D2005-1051 (<gewista.com>), Napster, Inc. v. Unasi Inc., WIPO Case No. D2005-1090 (<napsterporno.com>) and Abbey Carpet Co., Inc. v. Unasi, Inc.,WIPO Case No. D2005-1100. (<abbeycarpets.com>, <wwwabbeycarpet.com>) under which Unasi Inc. was demonstrated to have engaged in a pattern of conduct or system in registering domain names embodying third parties’ trademarks. The registration of these domain names had the effect of preventing the owner of the trademarks or service marks in question from reflecting their marks in the corresponding domain name, within the meaning of the Policy.

Furthermore, while the Respondent has apparently not used the domain name for promoting the goods or services of the Respondent, it has used the domain name to divert internet users to the website at “www.tabio.com” which contains sponsored links to other sites involved in selling goods similar or identical to those of the Complainant. In the absence of any evidence to the contrary, it appears that the Respondent was not using the domain name for a purpose other than for its own commercial gain. Such use is likely to create confusion with the Complainant’s mark “TABIO On The Ground” as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location of a product on the online locations to which the domain name leads. The Panel finds that the circumstance under paragraph 4(b)(iv) of the Policy is applicable in the present case.

Accordingly, the Panel finds that the domain name has been registered and is being used in bad faith under paragraph 4(a) of the Policy.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <tabio.com> be transferred to the Complainant.

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C. K. Kwong
Sole Panelist

Date: April 17, 2006