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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Kabushiki Kaisha ABC Cooking Studio v. Storefront Co., Ltd

Case No. D2006-1451

 

1. The Parties

The Complainant is Kabushiki Kaisha ABC Cooking Studio, Tokyo, Japan, of Japan, represented by Miki & Yoshida Law and Patent Office, Japan.

The Respondent is Storefront Co., Ltd, Bangkok, Thailand.

 

2. The Domain Name and Registrar

The disputed domain name <abccookingstudio.com> is registered with Tucows.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2006. On November 15, 2006, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On November 15, 2006, Tucows 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 together with the amendment to 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 November 23, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 13, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 14, 2006.

The Center appointed Kiyoshi I.Tsuru as the sole panelist in this matter on December 19, 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.

 

4. Factual Background

The Complainant operates under the trade name “ABC Cooking Studio”, and is the holder of a trademark registration for ABC Cooking Studio (& design) registered in Japan on September 30, 1994 (registration number 3,006,121).

The disputed domain name <abccookingstudio.com> was registered on October 10, 2003.

 

5. Parties’ Contentions

A. Complainant

A.1 Identity or Confusing Similarity

The Complainant made the following arguments:

Complainant has been operating cooking studios under the name and trademark “ABC Cooking Studio” since 1987.

Complainant has instructed more than 200,000 students, and managed 84 studios since 1987.

The service mark and the name “ABC Cooking Studio” have become well known and distinctive in and outside Japan.

The disputed domain name is identical to the service mark “ABC Cooking Studio”. The absence of a space between the textual elements of Complainant’s Mark and the addition of the generic top-level domain “.com” are immaterial under the Policy.

A.2 Respondent’s lack of rights or legitimate interests in respect of the domain name

The Complainant made the following arguments:

Respondent cannot demonstrate any legitimate interest in the disputed domain name.

Respondent registered the domain name on October 10, 2003, nine years after registration of Complainant’s service mark in Japan.

Respondent has never operated a cooking studio or otherwise offered any services related to cooking.

Respondent provides services as an Internet homepage designer and consultant.

The website under the contested domain name shows the homepage of a Thailand cooking school “ABC Cooking Studio Co., Ltd.” (referred to in the Complaint as “Thai ABC”), whose trade name is identical to the English name of the Complainant.

Thai ABC only opened its cooking studio in Thailand on May 24, 2005, and had never operated its cooking studio under the “ABC Cooking Studio” name before the registration of the Domain Name was registered by Respondent.

Thai ABC registered a service mark “ABC Cooking Studio Delicious Easy Fun” in Thailand on November 12, 2003, after the registration date of the Domain Name.

Thai ABC had no rights when the disputed domain name was registered by Respondent. Prior WIPO UDRP decisions have held that mere trademark ownership by a respondent does not foreclose the “legitimate interest inquiry” (and cites Madonna Ciccone, p/k/a/ Madonna v. Dan Parisi, WIPO Case No. D2000-0847, Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679 and Maplin Electronics Limited v. Lee Jeongsoon, WIPO Case No. D2006-0011).

The resemblance between the Complainant’s service mark and Respondent’s Thai ABC’s service mark is not incidental but deliberate, and reinforces the presumption that Thai ABC filed the application for its service mark in bad faith.

In addition to the registered “ABC Cooking Studio Delicious Easy Fun” mark, Thai ABC uses the name and trademark “ABC Cooking Studio” on the website under the disputed domain name, and on its letterhead and envelope. Thai ABC’s “ABC Cooking Studio” mark is identical or nearly identical to the Complainant’s service mark and is likely to cause confusion.

Thai ABC’s trade name, its registration of a confusingly similar service mark, and the resemblance of the marks used on its website, letterhead and envelope to those of Complainant illustrate that Thai ABC intentionally misappropriated the fame and goodwill associated with Complainant’s trademark.

Respondent’s and Thai ABC’s sole reason for selecting the disputed domain name was to direct users seeking services and information related to Complainant to Respondent’s infringing commercial website.

A.3 Bad faith registration and use

The Complainant made the following arguments:

Respondent registered the Domain Name in 2003.

Respondent’s registration and Thai ABC’s use of the contested domain name causes confusion with respect to the services and trademark of the Complainant. Complainant and its mark are extremely popular among not only Japanese citizens but also visitors to Japan.

The Respondent, as a homepage designer and consultant, intentionally misappropriated and unfairly capitalized on the goodwill inherent in Complainant’s distinctive trademark by registering the Domain Name and designing Thai ABC’s website using marks which infringe Complainant’s marks.

By registering and using Complainant’s name and service mark in the disputed domain name and permitting it to be used in connection with infringing services, Respondent has created a likelihood of confusion with respect to the sponsorship, affiliation, and endorsement of Respondent’s website and the contested domain name.

B. Respondent

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

 

6. Discussion and Findings

In accordance with the Policy, paragraph 4(a), the Complainant must prove that:

“(i) the domain name in question is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name, and

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

In the administrative proceeding, the Complainant must prove that each three of these elements are present.

As Respondent has failed to submit a Response to the Complaint, the Panel is entitled to accept as true all reasonable allegations of the Complaint (Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487; Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).

A. Identical or Confusingly Similar

The domain name <abccookingstudio.com> is identical to the Complainant’s trademark ABC Cooking Studio (& design). The phonetic elements are the same. Citing EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036, and applying it to the present case: “Only the graphic elements of such trademark [sic] which anyway cannot be reproduced in a domain name, were left out.”

When performing the similarity analysis, a panel must not take into account the generic top-level domain (gTLD) “.com”, because such gTLD has no legal significance. See Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859, (citing in turn Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300, J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing, WIPO Case No. D2000-0035; see also Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 and Sony Kabushiki Kaisha v. Inja, Kil, WIPO Case No. D2000-1409).

Therefore, the first requirement of the Policy has been met.

B. Rights or Legitimate Interests

The following are examples of circumstances where a respondent may have rights or legitimate interests in a contested domain name:

“(i) before any notice to you 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 organization) 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.” (Policy, paragraph 4(c)).

Before beginning the discussion of this requirement of the Policy, we should make a distinction: the Respondent in this procedure, i.e., the holder of the disputed name <abccookingstudio.com> is Storefront Co., Ltd., a Thailand company. There is another entity from Thailand: “ABC Cooking Studio Co., Ltd.” (“Thai ABC”) who is the owner of Thailand trademark registration No. SM28732 for ABC COOKING STUDIO DELICIOUS EASY FUN (& design). Thai ABC has not been named as Respondent in this procedure. No evidence has been presented to this Panel, showing a corporate, business, contractual or license relationship between these entities. Therefore, and in the absence of a Response, the Panel accepts that the Respondent has no rights with regard to the aforementioned Thailand trademark.

The issuance of Thai ABC’s trademark registration is not relevant to this procedure because: a) Thai ABC is not a party to it, b) Respondent has not argued or submitted evidence showing that there is a license or any other type of agreement between Thai ABC and Respondent, and c) the goal of this proceeding is not to decide material issues of national law. It is simply to determine whether or not Respondent’s conduct in this particular case is considered to constitute an abusive practice of cybersquatting, according to the evidence presented to the Panel.

The disputed domain name <abccookingstudio.com> does not appear to be associated with a bona fide offering of goods or services. According to Complainant’s arguments, which have not been rebutted by Respondent, the latter is a homepage designer and consultant. This argument is supported by a report rendered by a research company hired by Complainant, submitted as evidence in this proceeding, in which Respondent is catalogued as a company “with an objective to provide online advertising service”. Respondent enables the resolution of the contested domain name to Thai ABC’s web page. Said web page contains, according to the uncontested arguments and evidence submitted by the Complainant, trademarks that are identical and/or confusingly similar to Complainant’s mark. Even the (square-shaped) design and typography of said trademarks are extremely similar to those of the Complainant. On the website Complainant’s mark is entirely comprised within Thai ABC’s mark. This Panel finds it unlikely for this to be a coincidence. Using a domain name that entirely incorporates Complainant’s trademark and referring the website to a competitor’s services cannot be deemed use of the domain name in good faith.

Respondent has not filed any evidence to show that it has been commonly known as <abccookingstudio.com>. The WHOIS data provided by the Registrar of this domain name, as well as the evidence submitted by the Complainant show that the name of the Respondent is Storefront Co., Ltd.

Complainant’s uncontested arguments and evidence state that Complainant has instructed more than 200,000 students and managed 84 studios since 1987 under the mark ABC COOKING STUDIO, which was registered in 1994. Respondent’s domain name is confusingly similar to a mark which according to Complainant’s evidence has a strong presence and position on the Internet and in the Complainant’s line of business. It cannot be said that Respondent’s conduct constitutes legitimate or fair use without intent for commercial gain, or that consumers or cybernauts will not be mislead or diverted when seeking for Complainant’s mark.

In light of the above, the Panel finds no rights or legitimate interests on the side of Respondent. The second requirement has been met

C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:

“(i) circumstances indicating that you 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 website 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 website or location or of a product or service on your website or location.”

Complainant’s rights to the mark ABC COOKING STUDIO, as well as the number of students and studios managed by Complainant since 1987 (see point 6.B, supra), together with the confusing similarity between the disputed name <abccookingstudio.com> and said trademark, taking into account the nature of the mark per se, lead this Panel to infer that Respondent in all likelihood knew the Complainant’s goodwill and has intentionally attempted to attract, for commercial gain, Internet users to Thai ABC’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Thai ABC’s website. This is aggravated by the fact that the site to which the contested domain name resolves, comprises trademarks that are confusingly similar to that of Complainant, not only in their word elements, which are entirely reproduced, but also in design and typography. The services offered on the website are identical to those of Complainant.

Therefore, the Panel finds that the domain name has been registered and is being used in bad faith in accordance to paragraph 4(b)iv) of the Policy. The third requirement has been met.

 

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 <abccookingstudio.com> be transferred to the Complainant.

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Kiyoshi I. Tsuru
Sole Panelist

Dated: January 2, 2007