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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mobimate Ltd. v. “World Mate” and Sachiwo Inagaki

Case No. D2008-1867

1. The Parties

The Complainant is Mobimate Ltd., of Lod, the State of Israel (“Israel”), represented by Soroker - Agmon, Advocates & Patent Attorneys, Israel.

The Respondent is Sachiwo Inagaki, of Yokohama, Kanagawa Tokyo, Japan. Although the disputed domain name is currently registered under the name “World Mate”, and has been confirmed by the registrar eNom, Inc. as such, the Panel finds Mr. Sachiwo Inagaki to be the real beneficial owner and proper Respondent in the particular circumstances of this case, as discussed hereafter.

2. The Domain Name and Registrar

The disputed domain name <worldmate.com> is registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2008. On December 4, 2008, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain name. On December 4, 2008, eNom, Inc. 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” or “UDRP”), 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 December 19, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response January 8, 2009. A company known as World Mate (International Division) (“World Mate”) was also served with a copy of the Complaint and filed a response with the Center on January 5, 2009. The Respondent, Sachiwo Inagaki, did not file a Response.

The Center appointed John Swinson, Torsten Bettinger and Mohamed-Hossam Loutfi as panelists in this matter on January 28, 2009. The Panel finds that it was properly constituted. Each member of 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 has a registered trademark in the United States of America for WORLDMATE (trademark number 2878308), which was registered in August 2004.

The Complainant uses the WORLDMATE trademark to market and sell products for Palm handheld devices.

The Complainant owns domain names that include or refer to their WORLDMATE trademark, such as <worldmatelive.com> and <wmlive.com>.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

The disputed domain name is identical or confusingly similar to the Complainant’s WORLDMATE trade mark

The disputed domain name is identical to the Complainant’s well known and registered WORLDMATE trademark by name, sound, meaning and pronunciation.

The Respondent has no rights or legitimate interests in respect of the disputed domain name

The Respondent has not made any legitimate use of the disputed domain name even though it has been the registered owner for over 5 years.

The Respondent has previously used the disputed domain name to advertise a martial arts center and to direct customers to a website located at the domain name <funcy.com>.

The disputed domain name was registered and is being used in bad faith

The Complainant has tried several times to contact the Respondent and discuss the matter. The Respondent has not responded to any of the Complainant’s phone calls or letters. A “cease and desist” letter was sent to the Respondent on September 4, 2008, to which no response was received.

The Respondent should be aware of the Complainant, the Complainant’s activities and the Complainant’s WORLDMATE trademark yet still continues to make no use of the disputed domain name.

B. Respondent

The Respondent, Sachiwo Inagaki, did not reply to the Complainant’s contentions, despite the Center forwarding a copy of the Complaint to him at the WhoIs listed contact details.

The Complaint was also served on a Japanese company called World Mate, of Suginami-ku, Tokyo, in accordance with the registrant name and contact information confirmed by the registrar eNom, Inc. to the Center. This company filed a submission in response to the Complaint.

The Panel reviewed World Mate’s submission, but (as discussed below) did not take it into consideration when reaching its decision, because the Panel finds that World Mate is not the real owner of the disputed domain name and does not claim any ownership or rights to the disputed domain name.

World Mate requested the Panel to clarify that it has been mistakenly designated as the Respondent. World Mate also requested that the entire case against World Mate be dismissed and the remedies requested by the Complainant be denied.

Paragraph 1 of the Rules defines the “Respondent” as the “holder of a domain name registration against which a complaint is filed”. The Panel finds that World Mate is not in fact the real holder of the registration for the disputed domain name. World Mate was offered the opportunity to purchase the disputed domain name but refused this offer because the “.com” GTLD did not accurately reflect World Mate’s not-for-profit nature. The Panel finds that World Mate is not in fact the real registrant of the domain name, and that the real beneficial owner is in fact Mr. Sachiwo Inagaki. The Panel’s finding is therefore made against the correct Respondent, Mr. Sachiwo Inagaki and not World Mate.

For the record, the Panel sets out the key submissions made by World Mate, as follows:

World Mate is a not-for-profit charitable organization, established in 1984, with approximately 70,000 members worldwide. It adopted the name “World Mate” in 1994. World Mate is dedicated to practicing and introducing Shinto to the world, preserving and introducing Japanese traditional arts and culture to foreign nations and organizing and fundraising to establish medical hospitals and schools for needy children in developing countries.

World Mate is the owner of the domain name <worldmate.or.jp>. It has no apparent current connection to the disputed domain name or to the Respondent, Sachiwo Inagaki. Sachiwo Inagaki once contacted World Mate to offer to sell the disputed domain name. World Mate refused the offer because it felt that the “.com” GTLD did not accurately reflect World Mate’s not-for-profit nature.

The disputed domain name contained a link to World Mate’s website at the domain name <worldmate.or.jp>. World Mate contacted Sachiwo Inagaki and requested that the link be removed. This request was promptly complied with by Sachiwo Inagaki.

Before receiving the Complaint, World Mate had never received any correspondence from the Complainant.

6. Correct Parties

It is curious that World Mate engaged lawyers and submitted a Response, even though it is not the real owner of the disputed domain name, claims to have no connection with the Respondent, and makes no claim to any rights or interest in the disputed domain name.

The Respondent, who is the real beneficial owner of the disputed domain name, was properly notified of the Complainant, but did not submit a Response.

Based on the above circumstances, the Panel has determined that this is a dispute where no Response has been submitted in accordance with the Rules.

As outlined above, paragraph 1 of the Rules defines the “Respondent” as the “holder of a domain name registration against which a complaint is filed”. The Panel has found that World Mate is in fact not the real holder of the domain name registration. World Mate’s submissions therefore cannot be considered to be the response of the domain name holder.

The Panel is also mindful that the WhoIs register currently reflects “World Mate” as the titular registrant of the disputed domain name, and that any order made in the present case should be duly implemented by the registrar in accordance with paragraph 4(k) of the Policy this fact notwithstanding.

In any event, the Panel concludes that the Respondent has failed to respond to the Complaint and draws from the Respondent’s failure to respond the inference that:

(i) the Respondent does not deny the facts which the Complainant asserts, and

(ii) the Respondent does not deny the conclusions which the Complainant asserts can be drawn from these facts.

However, the Panel wishes to make it clear that it makes no substantive finding against the World Mate which has made the above-referred submissions.

The Complainant filed a Supplemental Filing in response to the filing of World Mate. The Panel does not consider that filing because it related to the filing of World Mate, which has been found by the Panel not to be the proper Respondent here.

7. Discussion and Findings

To succeed, the complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed 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 disputed domain name; and

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

The onus of proving these elements lies with the Complainant.

A. Identical or Confusingly Similar

To prove this element, the Complainant must have rights in a name, trademark or service mark, and the disputed domain name must be identical or confusingly similar to the Complainant’s name, trademark or service mark.

The Complaint has a registered trademark in the United States of America for the phrase WORLDMATE (trademark number 2 878 308). The Panel is therefore satisfied that the Complainant has registered trademark rights in the phrase WORLDMATE.

The disputed domain name completely incorporates the Complainant’s WORLDMATE trademark and merely adds the “.com” suffix. Numerous WIPO decisions have held that where a respondent uses the complainant’s service mark or trademark in its entirety, the disputed domain name is legally identical to the complainant’s service mark or trademark. The addition of, for example, the “.com” suffix does not impact on the analysis of whether a disputed domain name is legally identical or confusingly similar to the disputed domain name (see Priority One Financial Services Inc. v. Michael Cronin, WIPO Case No. D2006-1499 and Laramar Group, L.L.C. v. XC2, WIPO Case No. D2006-0617).

The Panel therefore finds that, in the circumstances of this case, the disputed domain name is identical or confusingly similar to the Complainant’s WORLDMATE trademark. Consequently, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Currently, the disputed domain name takes Internet users to a website that is blank except the words “http//:worldmate.com” written in small, black font. The title bar of this web page states “WorldMate Japan”.

The Complainant provided evidence of the Respondent’s use of the disputed domain name at an earlier period of time. At one time, the disputed domain name had a brief, unsophisticated advertisement for a martial arts center in Yokohama that did not appear to have any association with the name WorldMate. At another time, the disputed domain name advertised a website titled “funcy.com” stating “This site will be created in future”.

The Respondent, Sachiwo Inagaki, does not appear to be known by the name “WorldMate”.

The Complainant has provided evidence to demonstrate that the Respondent has not used the disputed domain name for a bona fide commercial purpose or for a legitimate noncommercial purpose for at least the past five years.

The Panel is therefore satisfied that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent, by failing to provide a Response, has failed to demonstrate such rights or legitimate interests. Accordingly, the Panel finds that Paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

The Complainant contends that because the Respondent did not reply to its pre-filing communications, that this amounts to bad faith. The Panel disagrees with this assertion. As a general rule, failure or refusal to respond to communication from a complainant, prior to the filing of the complaint, does not of itself demonstrate bad faith. The Complainant needs to show more to demonstrate bad faith.

The Complainant states that the Respondent has not actively utilized the disputed domain name for five years, and that Respondent diluted Complainant’s trademark rights when he used the disputed domain name to promote the <funcy.com> domain name, and misleadingly diverted consumers seeking the Complainant’s services.

The Complainant asserts that its WORLDMATE trademark is well known and that the Respondent “is surely aware of complainant and his activities and [of] the well known famous mark of WORLDMATE”.

The disputed domain name appears to have been first registered in November 1999.

The Complainant’s WORLDMATE trademark was filed in March 2002 and registered in 2004. The effective date of the Complainant’s registered rights in their WORLDMATE trademark is therefore March 2002 (see Phoenix Mortgage Corporation v Tom Toggas, WIPO Case No. D2001-0101). When a disputed domain name was registered before the complainant’s trademark was filed, it is typically necessary to consider if, prior to the registration of the disputed domain name, the complainant had common law rights in the disputed domain name (see Phoenix Mortgage Corporation supra). To prove common law rights for the purpose of this element, a complainant must provide evidence to demonstrate when it first used the trademark “in a manner sufficiently public to create some public awareness” (see Phoenix Mortgage Corporation supra).

The Complainant did not explicitly state that it had common law rights in its WORLDMATE trademark but provided evidence that WORLDMATE products were first marketed and sold in 1998. The Complainant has included a copy of web pages from 1998 and 1999 advertising the WORLDMATE products and awards won by the WORLDMATE products in 1998. The Complainant also submitted evidence that thousands of licenses to use the WORLDMATE products were sold in 1999.

After reviewing the evidence contained in the Complaint, the Panel is satisfied that the Complainant used its WORLDMATE trademark in a manner sufficiently public to create public awareness from 1998.

Therefore, the Panel is satisfied that the Respondent could have been aware of the Complainant’s WORLDMATE products and associated trademark when the disputed domain name was registered in November 1999. The Respondent provides no evidence or explanation to the contrary.

The lack of active use of the domain name does not as such prevent a finding of bad faith, and may indeed in certain circumstances support such finding. See e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Panel must examine all the circumstances of the case to determine whether Respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include Complainant having a well-known trademark, no Response to the Complaint, and the impossibility of conceiving a good faith use of the domain name.

Based on the evidence presented on the use of the WORLDMATE trademark since 1998, and the failure of the Respondent to use the disputed domain name in any meaningful way over that period, the Panel can draw the inference that the disputed domain name was registered and used in bad faith. (The Panel also notes that the Respondent appears to have tried to sell the disputed domain name.)

The Panel cites the following similar case with approval:

“After it registered the disputed domain name in bad faith, the Respondent, who does not have any apparent legitimate interest in the disputed domain name, failed to use it for more than four years. The Panel believes that such a complete inactivity was due to the fact that, sooner or later, the Complainant would be compelled to enquire about the disputed domain name. This is actually what happened at the end of 2002, leading the Complainant to write to the Respondent to inform about its rights in the trademark and to invite the Respondent to explain the reasons for the registration of the disputed domain name. When receiving such notice, good faith requires a response. Instead, the Respondent did nothing. Although it had actual knowledge of the Complainant’s rights in the corresponding trademark, it did not reply and did not bother transferring or canceling the disputed domain name. In the Panel’s eye, these circumstances are indications of bad faith inactive use. Instead of investing time and money on the disputed domain name, that is “actively using” a domain name which would unmistakably go noticed sooner or later by its legitimate rights holder, the Respondent was satisfied to hold the disputed domain name, thereby preventing the Complainant from legitimately reflecting its trademark and its corresponding commercial activities on the Internet”.

Gaggia S.p.A. v. Yokngshen Kliang, WIPO Case No. D2003-0982

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

8. 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, <worldmate.com> be transferred to the Complainant.

Dated: February 12, 2009