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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Ishida Co., Ltd. v. Tsuji, Masataka

Case No. D2008-1080

 

1. The Parties

The Complainant is Ishida Co., Ltd., Kyoto, Japan, represented by its internal counsel.

The Respondent is Tsuji, Masataka, Tokyo, Japan.

 

2. The Domain Name and Registrar

The Domain Name at issue <ishida.com> is registered with Network Solutions, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2008. On July 16, 2008, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the Domain Name at issue. On July 17, 2008, Network Solutions, LLC 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 24, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2008. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on August 27, 2008.

The Center appointed Teruo Doi as the sole panelist in this matter on August 28, 2008. 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 facts stated in the Complaint are as follows:

(1) The Complainant’s business of manufacturing scales started in 1893 under the trade name “Ishida Scales Manufacturing”, and in 1943, Ishida Scales Mfg. Co. Ltd. was founded. In the 1970’s, the Complainant developed a new weigher embodying the method of combination weighing. During a period of more than thirty years, this new weighing equipment became very popular in Japan and the overseas market. It is now well-known as “Multi-head weigher” or sometimes it is called “Ishida”. The Complainant’s company history and weighing equipments developed and manufactured by the Complainant are described in its web page (Annex 21).

The Complainant has become a company of world-wide recognition with 1,240 employees and is broadening the range of products it manufactures. The Complainant is now manufacturing and selling scales, multi-head weighers, bag-makers, check-weighers, X-ray inspection systems, counter top scale printers, retail systems, and so on. The Complainant has subsidiaries in the United Kingdom of Great Britain and Northern Ireland, the Republic of Korea, Brazil, the United States of America, Malaysia, the People’s Republic of China, the Philippines and India, and has distributors all over the world (Annex 21).

(2) In 1993, the Complainant celebrated its 100th anniversary and changed its company name to “Ishida Co., Ltd.” Currently, the Complainant owns 150 trademark registrations for the mark ISHIDA in Japan and various other countries. The Complaint lists the following registered trademarks as examples:

- Japan

No. 2608531 ISHIDA in Class 9, registration date December 24, 1993 (Annexes 3 and 4);

No. 3286103 ISHIDA in Class 7, registration date April 25, 1997 (Annexes 5 and 6);

No. 3343643 ISHIDA in Class 9, registration date September 5, 1997 Annexes 7 and 8);

- The People’s Republic of China

No. 580885 ISHIDA in Class 7, registration date January 30, 1992 (Annex 9);

No. 582105 ISHIDA in Class 9, registration date February 10, 1992 (Annex 10);

- Australia

No. 522832 ISHIDA in Class 7, registration date November 8, 1989 (Annex 11);

No. 522830 ISHIDA in Class 9, registration date November 8, 1989 (Annex 12);

- The United Kingdom of Great Britain and Northern Ireland

No. 1436604 ISHIDA in Class 9, registration date July 27, 1990 (Annex 13);

- Germany

No. 1091611 ISHIDA in Class 7, 9 and 37, registration date May 21, 1986 (Annex 14);

- France

No. 1245438 ISHIDA in Class 7, 9 and 37, registration date July 18, 1983

(Annex 15);

- The United States of America

No. 1686136 ISHIDA in Class 9, registration date May 12, 1992

(Annex 16);

- Brazil

No. 814987869 ISHIDA in Class 7, 9 and 37, registration date

June 4, 1991 (Annex 17);

- India

No. 544417 ISHIDA in Class 9, registration date January 31, 1991

(Annex 18).

 

5. Parties’ Contentions

A. Complainant

On the basis of the facts stated above, the Complainant requests the Panel to issue a decision that the Domain Name <ishida.com> be transferred to the Complainant, in accordance with paragraph 4 of the Policy, on the following grounds:

(1) The Domain Name at issue is identical or confusingly similar to a trademark or service mark in which the Complainant has rights: The Domain Name <ishida.com> is exactly identical to the Complainant’s registered trademark ISHIDA besides the extension “.com”.

(2) The Respondent has no rights or legitimate interests in respect of the Domain Name: the Respondent does not show any evidence of using the Domain Name in

connection with a bona fide offering of goods or services. In addition, the

Respondent did not show any demonstrable preparations before the start of using

the Domain Name (Annexes 19 and 20). Furthermore, there is no evidence that the

Respondent is commonly known by the Domain Name. The Respondent, as an individual, is not identified by the name “ishida.com”. And the Complainant has never had any commercial relations with the Respondent. Accordingly, the Respondent has no rights or legitimate interests in respect of the Domain Name.

(3) The Domain Name at issue was registered and is being used in bad faith: the

Complainant’s trademark ISHIDA is so famous all over the world, especially in Japan, that the Respondent was undoubtedly aware of the Complainant’s fame at the time of its registration of the Domain Name. Therefore, it is obvious that the Domain Name <ishida.com> was registered in bad faith.

The Respondent registered the Domain Name for the purpose of selling it for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name registration and has been forwarded to have engaged in such conduct previously.

Moreover, the Respondent registered the domain name <hama.com> in 1999 for the purpose of selling that domain name. Hama GmbH & Co. KG contacted the Respondent and expressed its interest in acquiring the domain name, offering USD 2,500. During the negotiation, Hama GmbH offered USD10,000, but the Respondent refused the offer. Finally, the Respondent threatened Hama GmbH to sell the domain name <hama.com> to unnamed third parties, and demanded payment of USD 20,000. Upon refusal of this last offer, Hama GmbH filed a UDRP complaint with WIPO against the Respondent. The panel rendered a decision ordering the domain name <hama.com> be transferred to that complainant. See, HAMA GmbH & Co. KG v. Tsuji, Masataka, WIPO Case No. D2004-0938 (Annex 24).

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 that each of the following elements is present:

(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; 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.

The Panel notes that the Respondent has failed to file a Response within the stipulated time and, as such, does not appear to contest the facts asserted by the Complainant in the Complaint. Accordingly, the Panel finds the following:

A. Identical or Confusingly Similar

The Panel finds that the Domain Name at issue, <ishida.com>, is identical or confusingly similar to the Complainant’s trademark ISHIDA for which the Complainant holds trademark registrations in Japan and various other countries where the Complainant has established markets for its products. Copies of the certificates of trademark registrations and their renewals are attached to the Complaint (Annexes 3 to 18).

The Complainant’s trademark ISHIDA derives from the family name of Otokichi II Ishida who started the business of manufacturing scales in l893 under license by the Japanese government’s weight and measurement regulation (Annex 21). The family name “Ishida” has been consistently used for the Complainant’s company name as well as for trademarks to identify the source of its products widely distributed in the world market. With its inherently distinctive quality, the Complainant’s trademark ISHIDA has now become famous being entitled to broader protection against any unauthorized uses.

B. Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in respect of the Domain Name at issue on the following grounds.

There is no allegation or proof that the Respondent has ever used the Domain Name or a name corresponding to it in connection with a bona fide offering of goods or services.

The Respondent is not commonly known by the Domain Name, and the Respondent is not making a legitimate non commercial or fair use of the Domain Name.

C. Registered and Used in Bad Faith

The Domain Name at issue has been registered and is being used in bad faith by the Respondent on the following grounds:

Because of the distinctive quality of the Complainant’s trademark ISHIDA, and its established fame and wide recognition as representing the Complainant’s products and related services, it is only possible to find the Respondent’s bad faith in securing Domain Name registration of an identical word “ishida” followed by “.com”.

Moreover, the Respondent has made an offer to the Complainant for an amount exceeding its out-of-pocket costs related to the Domain Name, Policy paragraph 4 (b)(i). In addition, the Respondent was ordered to transfer the domain name, <hama.com>, to the complainant by the panel decision in Hama GmbH & Co. KG v. Tsuji, Masataka, WIPO Case No. D2004-0938 (Annex 24), Policy paragraph 4(b)(ii).

 

7. Decision

For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name <ishida.com> be transferred to the Complainant.


Teruo Doi
Sole Panelist

Dated: September 11, 2008

 

Источник информации: https://internet-law.ru/intlaw/udrp/2008/d2008-1080.html

 

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