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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Benesse Corporation v. Netline Systems

Case No. D2006-0269

 

1. The Parties

The Complainant is Benesse Corporation, Tama-City, Japan, represented by Yuasa and Hara, Japan.

The Respondent is Netline Systems, Manila, Philippines.

 

2. The Domain Name and Registrar

The disputed domain name <benesse.com> is registered with BulkRegister.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2006. On March 3, 2006, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On March 7, 2006, BulkRegister.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. The Center verified that the Complaint 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. 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 31, 2006.

The Center appointed Samuel K.B. Asante as the sole panelist in this matter on April 7, 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.

Due to unforeseen circumstances, the Panel on April 20, 2006, sought an extension to submit the decision in this case on April 26, 2006.

 

4. Factual Background

The Complainant which was established in Japan in 1953, is well known in Japanese educational and cultural fields in particular for providing education by correspondence and sham examinations, languages, lifestyle and welfare, demonstrating its involvement in virtually all aspects of people’s lives from child birth to child-rearing, school and family life through to old age.

In 1995, the Complainant changed its corporate name from “Fakutake Publishing Company Limited” to “Benesse Corporation” to express its philosophy of helping people to live well.

The Complainant has registered 21 trademarks in Japan which contain the word “benesse”. The following are the registration numbers of the trademarks; No. 3038807, No. 3096723, No. 3096726, No. 3101674, No. 3101674(01), No. 3132975, No. 3140649, No. 3140651, No. 3155058, No. 3167825. No. 3168029, No. 3264386, No. 3346847, No. 4021100, No. 4122436, No. 4144108, No. 4286753, No. 4458586, No. 4458587, No. 4458588, No. 4473181, No. 4578464.

Registration number 3101674 of “benesse” was registered as a defensive mark at the Japan Patent Office (JPO) on the basis of the marks fame, which is allowed by Article 64 of the Japanese Trademark Law if the particular mark is famous in the Japanese market.

The Japan Patent Office has published those trademarks which it recognizes as well- known marks on its website and this includes Registration number 3101674 of “benesse”. The Complainant registered the domain name <benesse.co.jp> on May 26, 1995, in Japan following a change in its corporate name. The Complainant established a website using the domain name and the website attracted high patronage among Japanese.

The Complainant has registered BENESSE as a trademark in 65 countries outside Japan out of a total of 83 applications.

The Respondent has registered the disputed domain name <benesse.com> with the Registrar on November 17, 1998. The Respondent ignored two written notices by the Complainant to transfer the disputed domain name to the Complainant. Consequently, the Complainant filed the present complaint with the Center.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical with and confusingly similar to the Complainant’s mark.

The Complainant contends that in determining the similarity of a trademark and a domain name, the letters of the domain name and the trademark must be compared. The Complainant argues that the trademark BENESSE and the domain name <benesse.com> are confusingly similar, the only difference being “.com”.

The Complainant further contends that the Respondent does not have rights or legitimate interests in the disputed domain name. In support of this contention, the Complainant claims that the Respondent is not a licensee of the Complainant and the Complainant has not allowed the Respondent to use its trademark.

The Complainant further contends that the Respondent is not a legal entity registered with the Securities and Exchange Commission or the Department of Trade and Industry of the Philippines. It is the claim of the Complainant that there are no pending, canceled or refused trademark applications or registration under the name of “Netline Systems” and that the Respondent is not registered with the Licensing Division of Manila City Hall. The Complainant submits that there is no entity or a person doing business under the Respondent’s name since the Respondent is not a tenant at the address it registered with the Registrar.

The Complainant further contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant alleges that the Respondent has not been using the domain name until the Respondent received notice from the Complainant to transfer the domain name.

Following the said notice, the Complainant alleges that the Respondent has set up a website in which the language used is Japanese. The layout of the Complainant’s website is shown under the Respondent’s website with a copyright expression at the bottom which is as follows: “2006 benesse.com All Rights Reserved”.

This, according to the Complainant, gives the erroneous impression that the website is owned by the Complainant and it confuses the consumers who are trying to access the Complainant’s website.

The Complainant alleges that the Respondent has been engaged in a pattern of registering domain names to deprive the owners of trademarks from reflecting the marks in corresponding domain names. The Complainant cited a case brought against the Respondent to buttress the point and concludes that the Respondent registered and used the domain name in bad faith.

B. Respondent

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

 

6. Discussion and Findings

Under paragraph 4 of the Policy, the onus is on the Complainant to prove each of the following:

(A) 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;

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

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

A. Identity or Confusing Similarity

The Complainant has produced uncontested documentary evidence to establish that it registered the domain name <benesse.co.jp> on May 26, 1995, in Japan and that it is the holder of 21 trademarks which contain the word “benesse” in Japan. Further evidence has been furnished to prove that the said trademark is registered in numerous other countries. The Panel is therefore satisfied that the Complainant has rights in the said trademark.

A comparison of the disputed domain name <benesse.com> and the Complainant’s trademark makes clear that the only difference is the term “.com” which is not a distinguishing element in accordance with prior UDRP decisions. The Panel therefore holds that the disputed domain name is identical to the Complainant’s trademark.

B. Rights or Legitimate Interests

Based on the evidence before it, the Panel finds no indication of any rights or legitimate interests the Respondent might have to the domain name. Indeed, the result of official searches carried out by the Complainant establishes that the Respondent is neither registered with the Securities and Exchange Commission nor with the Department of Trade and Industry of the Philippines as a legal entity. Lack of such registration is an indication that no recognized entity is doing business under the name of the Respondent. A registration with the Securities and Exchange Commission of the Philippines is one of the basic requirements for a corporation or a partnership to do business.

The foregoing conclusion is reinforced by the uncontested documentary evidence that the Respondent never resided at the address it gave to the Registrar. Furthermore, the Respondent has neither filed a response to nor challenged the contentions of the Complainant, a posture which is incompatible with a claim to legitimate rights and interests in the domain name.

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent has engaged in a pattern of registering domain names in order to prevent the owners of trademarks from reflecting the marks in corresponding domain names, relying on a case filed in 2002, against the Respondent by Kabushiki Kaisha Bic Camera, a Japanese Company (Kabushiki Kaisha Bic Camera v. Netline Systems, WIPO Case No. D2002-0817). In that case, the disputed domain name was transferred to the complainant as the panel found that the disputed domain name was registered and used in bad faith.

After unsuccessful attempts to elicit any response from the Respondent, the complainant in that case commissioned investigation to be conducted by counsel on the Respondent based on the registration information available to Whois registration data. Counsel found, as in this case, no trace of official registration of the Respondent with any of the relevant authorities of the Philippines or evidence of the Respondent having resided at the address given.

The Panel finds the above circumstances indicate that the Respondent has engaged in a pattern of registering domain names to prevent the owners of trademarks from reflecting the mark in a corresponding domain name.

In any case the nature of the Respondent’s operation, the Respondent’s failure to respond to any enquiry or invitation addressed to it or to disclose its address, the use of the disputed domain name to display commercial links and the absence of any evidence of the Respondent’s official status all cumulatively point to registration and use in bad faith of the disputed domain name.

 

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 <benesse.com> be transferred to the Complainant.


Samuel K.B. Asante
Sole Panelist

Dated: April 26, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2006/d2006-0269.html

 

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