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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Omron Corporation v. Mr. Sing Sang Sung

Case No. D2007-0970

 

1. The Parties

The Complainant is Omron Corporation of Kyoto, Japan, represented internally by Makoto Okahashi, Japan.

The Respondent is Mr. Sing Sang Sung, of 727 Stonehaven Chase, McDonough, Georgia of United States of America.

2. The Domain Name and Registrar

The disputed domain name <omroncorporation.org> is registered with Melbourne IT trading as Internet Names Worldwide.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2007. On July 3, 2007, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain name at issue. On July 6, 2007, Melbourne IT trading as Internet Names Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 July 16, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 5, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 8, 2007.

The Center appointed Harini Narayanswamy as the sole panelist in this matter on August 23, 2007. 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 is Omron Corporation, a company established under Japanese laws with its principal place of business at Kyoto, Japan. The Complainant owns the trademark OMRON and maintains numerous trademark registrations throughout the world for its mark. The significant trademark registrations include the Japanese Patent Office Certificate, bearing Registration No. 0583675, registered in March 19, 1962, and the United States Patent and Trademark Office, Registration Number 863,793, dated 1969, on the Principal Register.

The Respondent is Mr. Sing Sang Sung whose contact address, as per the Whois database is located in the state of Georgia, United States of America. The domain name <omoroncorporation.org> was registered on October 9, 2006.

5. Parties’ Contentions

A. Complainant

The Complainant is a well known Japanese corporation in the field of industrial automation, electronic components and automotive electronics and states it has more than 140 subsidiaries in 36 countries. The Complainant has filed several documents to establish its ownership of the OMRON mark and to demonstrate its extensive use for a considerable period of time. Among the several documents filed by the Complainant are its Corporate Profile, its Annual Report for the year 2006, advertisements placed by the Complainant in numerous global magazines, its published catalogues, and a sample business card which is used by its employees, all of which display the OMRON trademark prominently.

The Complainant states that the mark has been “authorized” in Japan as a “Famous Trademark” by International Association for the Protection of Industrial Property (AIPPI) since 1996. The Complainant has filed copies of the AIPPI Journals from the year 1996 to 2007, which shows the OMRON mark listed as one of famous Japanese trademarks.

The Complainant’s main contentions regarding the domain name are as follows:

(i) The domain name is identical or confusingly similar to the Complainant’s registered trademarks.

The Complainant states that the disputed domain name <omroncorporation.org> consists of the words “Omron” and “corporation”. The word “corporation”, according to the Complainant does not preclude a finding of similarity, as “Omron” is identical to the Complainant’s mark. The Complainant cites several cases including the Stanley Works and Stanley Logistics, Inc v. Camp Creek. Co. Inc., WIPO Case No. D2000-0113, which has held that virtual identity is sufficient for the purpose of the paragraph 4(a)(i) of the Policy.

The Complainant further asserts that it also owns registered trademarks for the term “Omron Corporation” which is identical to the domain name.

(ii) The Complainant states that the Respondent has no rights or legitimate interests in the domain name.

The Respondent is not a licensee of the Complainant, nor authorized to use the trademark in any manner. The domain name is not used in connection with a bona fide offering of goods or services in commerce.

The Respondent is not commonly known by the domain name nor making any legitimate non-commercial or fair use of the domain name. The Complainant believes that the Respondent’s name ‘Sing Sang Sung” appears to be a false identity as the name consists the verb ‘sing’, its past form and its past participle.

The Complainant further asserts that due to the fame associated with its mark it is inconceivable that the Respondent could have independently adopted the domain name on its own. Furthermore the Respondents’ website has copied information and data from the Complainant’s website. The Complainant has furnished a notarized copy of the Respondent’s website as evidence of the Respondent’s infringing activities.

The Complainant contends that it had sent repeated email communications to the Respondent requesting him to shut down the website and transfer the domain name. The Respondent did not reply to these communications. A notice was also sent by post through the Japanese postal service on May 23, 2007 by the Complainant. This letter was also returned, stating that the address is unknown. The returned letter is filed as evidence by the Complainant.

(iii) The Complainant asserts that the domain name was registered and used in bad faith.

The Complainant provides four reasons to ascribe bad faith registration and use of the domain name:

First, Internet users attempting to reach the Complainant are likely to believe that the website hosted by the Respondent is affiliated with the Complainant due to the wide spread fame of the Complainant’s mark.

Second, the Respondent has used the website for fraudulent activities. The Complainant has filed a sample inquiry received by the Complainant from a person who had received fraudulent email from “omorcorportion.org” or Mr. Sing Sang Sung. The Complainant states that there are other similar inquiries coming to the Complainant. A copy of the “Yahoo!` ANSWERS” is filed by the Complainant which clearly shows that the domain name has been used by the Respondent for perpetration of fraudulent activities.

The Complainant contends it had requested Microsoft, the hosting service company, to delete, suspend or shut down the offending website. Communications to this effect were sent by email, fax and through the Japan Post Office, along with a similar notice sent to the Registrar by the Complainant.

The Complainant argues that these activities of the Respondent can been considered as a kind of international fraud crime and the Complainant has filed a criminal complaint with the suitable “government office”, the Internet Crime Complaint Center (IC3) of FBI, and provides the website address “www.ic3.gov” of this center. The Complainant cites the Rolls-Royce Motor Cars Limited v. Maria Stephen, WIPO Case No. D2006-0152, to emphasize that previous decisions have held that Respondents’ involvement in fraudulent and criminal activities have been a ground for finding bad faith registration and use.

Third, the Complainant asserts that it is other intellectual property rights such as its copyright has also been infringed due to its website content having been imitated by the Respondent. The Respondent has therefore intentionally attempted to attract for illegitimate commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source of the Respondent’s website.

Lastly the Respondent has given false information and inaccurate contact details to the Registrar. Complainant refers to the Microsoft v. Momm Amed La, WIPO Case D2001-1454, where the respondent’s omission to provide the registrar with accurate contact details was held to be evidence of bad faith on the part of the respondent.

The Complainant requests for the transfer of the domain name <omroncorporation.org>.

B. Respondent

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

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove the following three elements to obtain an order for the transfer of the domain name:

(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

(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.

A. Identical or Confusingly Similar

The Complainant, has to establish under paragraph 4(a)(i) of the Policy that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant undoubtedly is the owner of the trademark OMRON, which is also its corporate name. It has provided ample evidence to demonstrate its use of the OMRON mark worldwide and has provided documents of its trademark registrations in Japan and in the United States, the jurisdiction of the Respondent on record.

The Complainant’s trademark is widely known due to its long term and widespread use.

The domain name replicates the name and identity of the Complainant as it combines the trademark OMRON with the word “corporation”. The adding of a generic term that describes the trademark owner’s mark or name Wipro Limited and Wipro Trademarks Holding Limited v. Global Link.Com, Ltd d/b/a global Online, WIPO Case No.D2000-0656, as in the present case, the domain name <wiprocorporation.com>, which had used the word “corporation” with “Wipro”, the corporate name and trade name of a well known Indian company, was found to be confusingly similar.

Similarly, numerous previous decisions have supported the proposition that a domain name using a trademark with a generic word that describes the business of the complainant is confusingly similar to the mark. See for instance see Harrods Limited v. Peter Pierre, WIPO Case No. D2001-0456, which did not preclude a finding that the domain names <harrodstore.com> and <harrodsdepartmentstore.com> were similar to the “Harrods” mark despite the addition of the words “store” or “department store”.

The generic top level domain extension (gTLD) “.org” is not relevant in determining the confusing similarity. The gTLD is non distinctive in this determination as it is a mere technical requirement of a domain name; See RX America v. Mathew Smith, WIPO Case No D2005-0540. It is necessary for the Complainant to establish confusing similarity of its mark with only the second level domain name, see Europay International S.A.v. Eurocard.com,Inc,Eurocard.org and Chad Folkening, WIPO Case No. D2000-0173 regarding the domain names <eurocard.com>, and <eurocard.org>.

The Panel accordingly finds that the Complainant has established that the domain name is confusingly similar to its trademark and the requirements under paragraph 4(a)(i) of the Policy have been met.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has to make out a prima facie case that the Respondent has no rights or legitimate interest in the domain name. It is then the Respondent’s option to put forward any justification for registration and use of the domain name under paragraph 4(c) of the policy.

The Complainant has asserted that it has not licensed or authorized the Respondent to use its mark in any domain name. There is no evidence on record to indicate the Respondent having any rights or legitimate interest in the disputed domain name. Further the Respondent has failed to respond to the Complaint and put forward any submissions under paragraph 4(c).

The Panel finds the Complainant has well established rights in the OMRON name and mark for several decades, which predates the recent registration of the domain name by the Respondent. The Panel also finds it unlikely that the Respondent was unaware of the Complainant’s mark, given the fact that the website put up by the Respondent has published matter taken from the Complainant’s website. This is evidence of the Respondent being aware of the Complainant’s rights in the mark. The Respondent is clearly using the reputation attached to the Complainant’s mark. Use of the mark in this manner by a person unconnected with the complainant is not a bona-fide use. See Sanofi Aventi v. Benjimin Milton, WIPO Case No.D2005-0544.

The Panel accepts the Complainant’s submissions and finds that it has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, to use its trademark, which has not been rebutted by the Respondent.

The Complainant has established the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant has to establish that the domain name has been registered and used in bad faith. The Complainant has provided four reasons along with sufficient evidence that the domain name has been registered and used in bad faith. All these factors enumerated by the Complainant establish that the Respondent was aware of the mark and has tried to use the Complainant’s trademarks improperly and this is evidence of bad faith under paragraph 4(b). The Panel accepts the arguments put forward by the Complainant.

The Respondent has failed to reply or file a response and provide any evidence of actual or contemplated good faith use of the mark. The Panel may draw inference from the Respondent’s failure to reply the cease and desist notices sent by the Complainant, and the omission to file a response in these proceedings. See Accord, Banque Accord v. Michael Glawe, WIPO Case No. D2006-0855.

It appears that the Respondent has taken steps to conceal its true identity by providing what appears to be a pseudo name. Trying to hide identity has been found to be an identification of bad faith in prior cases, see Christian Dior Couture Company v. Domains by Proxy and Sheriff Hassinin, WIPO Case No. D2007-0850. Further as the Respondent has provided false contact information, incorrect contact details, an inference of bad faith may be made, The Knot Inc., v. In Knot We Trust LTD, WIPO Case No. D2006-0340, <knot.com>.

The Complainant has drawn attention to the fraudulent and nefarious activities that the Respondent has undertaken using the website and the likelihood of it tainting the Complainant’s reputation and the Complainant’s intellectual property rights, see Delloite Touche Tohmatsu v. Robert Thorpe, WIPO Case No. D2001-1431, for the domain name <deloittetouche.net>. The Respondent here has clearly breached the trademark rights and the copyright of the Complainant.

The Panel finds that the Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark, as per paragraph 4(b)(iv) of the Policy.

Based on the record, the Panel has no hesitation is accepting the Complainant’s submissions that the Respondent has registered and used the domain name in bad faith.

The Complainant has established the requirements under paragraph 4(a)(iii) and 4 (b) 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 <omroncorporation.org> be transferred to the Complainant.


Harini Narayanswamy
Sole Panelist

Dated: September 6, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-0970.html

 

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