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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mikasa Licensing, Inc. v. Zdenek Kubik
Case No. D2007-0321
1. The Parties
The Complainant is Mikasa Licensing, Inc., Secaucus, New Jersey, United States of America, represented by Frommer Lawrence & Haug LLP, New York, New York, United States of America.
The Respondent is Zdenek Kubik, Shanghai, Republic of China.
2. The Domain Name and Registrar
The disputed domain name <mikasaoutlet.com> is registered with GoNames.ca.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2007. On March 6, 2007, the Center transmitted by email to GoNames.ca Inc. a request for registrar verification in connection with the domain name at issue. On March 6, 2007, GoNames.ca Inc. 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 and technical contact. The Center verified that the Complaint, as amended on March 27, 2007, 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 29, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 18, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 19, 2007.
The Center appointed J. Christopher Thomas, Q.C. as the sole panelist in this matter on May 3, 2007. 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 finds that it was properly constituted.
4. Factual Background
The Complainant sells dinner dinnerware, crystal stemware, stainless flatware, crystal gifts and picture frames, ceramic vases, table linens and decorative accessories in the United States, Canada and Puerto Rico. It sells its wares online, at retail shops and though company outlet stores.
The Complainant’s trademark MIKASA is displayed on all such items, and has been since at least 1948, long before the Respondent’s registration of the contested domain name on September 14, 2007.
The Complainant has registered a number of MIKASA trademarks in the United States and in other countries in which it operates. It has also registered the domain name <mikasa.com> and other domain names related to the MIKASA mark.
It is the Complainant’s view that since it sells its products on its website <www.mikasa.com> and in outlet malls throughout the United States, the contested domain name <mikasaoutlet.com> would lead a consumer interested in purchasing Mikasa products to believe that there was a connection between the Complainant and Respondent.
5. Parties’ Contentions
The domain name is confusingly similar or identical to a trademark or service mark in which the Complainant has rights, Policy, paragraph 4(a)(i)
The Complainant refers to its various marks and its retail strategy. In essence, it contends that the addition of the generic word “outlet” to its mark, combined with its retail strategy of selling its goods though outlet stores, makes the contested domain name confusingly similar to its mark MIKASA.
The Respondent has no rights or legitimate interests in respect of the domain name, Policy, paragraph 4(a)(ii)
The Complainant asserts that the Respondent is not its licensee, nor has it been given express or implied authorization to use the MIKASA marks. Upon learning of the domain name, the Complainant sent a cease and desist letter by post and by electronic means. The letter was returned as undeliverable. On information and belief, the Complainant believes that the email communication was received. However, it was not answered. It is also contended that the Respondent has a history or registering domain names that integrate well-known third-party marks in which it he plainly does not have interests.
The domain name was registered and is being used in bad faith, Policy, paragraph 4(a)(iii)
The Complainant contends that bad faith is shown when inter alia, the person registering the domain name has intentionally attempted to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with a trademark owner’s mark as to source sponsorship, affiliation, or endorsement of the Respondent’s website.
The Complainant’s mark is world famous and it has outlet stores throughout the United States. The domain name prevents the Complainant from registering the same name and it creates confusion amongst would-be customers as to any affiliation between the Respondent and the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Panel to decide to grant the remedy requested by the Complainant under the Policy, it is necessary that the Complainant prove, as required by paragraph 4(a) of the Policy, in respect of each of the contested domain names, that:
(i) the contested domain name 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 present case the Panel is of the view that the record contains abundant evidence of each of the three requisite elements.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has made out this requirement. The combination of the distinctive MIKASA mark with the generic “outlet” would of itself be sufficient to offend Policy, paragraph 4 (a)(i). The additional fact that Mikasa is known to employ outlet malls for the sale of its product adds further weight to this point. A would-be consumer could be expected to reasonably believe that the domain name was one belonging to the Complainant.
B. Rights or Legitimate Interests
The evidence is that the Respondent has been given no rights of any kind, expressly or impliedly, in the MIKASA mark. The Complainant has asserted this fact in communications to the Respondent to which it has received no reply. There is no question in this case that the Complainant has satisfied Policy, paragraph 4 (a)(ii).
C. Registered and Used in Bad Faith
The Panel also has no difficulty concluding that the domain name has been registered and is being used in bad faith. A review of the Respondent’s website reveals that the website lists several third-party websites related to goods produced and sold by the Complainant. The site is a “link farm” such that the domain name resolves to other merchants who compete with the Complainant and offer its goods in competition with it. The Respondent is employing the site in bad faith to generate “click-through” fees so as to profit from the Complainant’s mark.
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, <mikasaoutlet.com> be transferred to the Complainant.
J. Christopher Thomas, Q.C.